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F I N N EG AN 
HENDERSON 
F A R A B O W 
GA R R E TT & 
DUNNER llp 

1 300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


5 13 > 


PATENT 
Customer Number 22,852 
Attorney Docket No. 0745 1 .000 1 . 1 8 
InterTrust Ref. No.: IT-5.2.1.1 


IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 
In re Application of: 
Karl L. GINTER et al. 
Serial No.: 09/870,801 
Filed: June 1,2001 


For: SYSTEMS AND METHODS FOR 
SECURE TRANSACTION 
MANAGEMENT AND 
ELECTRONIC RIGHTS 
PROTECTION 

Commissioner for Patents 
Washington, DC 20231 


Sir: 


Group Art Unit: 2132 
Examiner: G. Barron, Jr. 


Technok 


we 


°9y Center 21Q0 


NOTICE REGARDING RELATED LITIGATION 

Applicants hereby notify the U.S. Patent and Trademark Office that several patents 
assigned to InterTrust Technologies Corporation ("InterTrust") are involved in litigation. The 
present application, Serial No. 09/870,801, is a continuation of U.S. Application Serial No. 
09/342,899, issued as U.S. Patent No. 5,917,912, which is one of the patents at issue in the 
litigation. Those applications claim the benefit of priory of a common parent with U.S. Patent 
Nos. 6,389,402 Bl; 6,253,193 Bl; 6,185,683 Bl; 5,982,891; 5,949,876; 5,915,019; and 
5,892,900, which are also at issue in the litigation. 


F I N N EC AN 
HENDERSON 
FARABOW 
GARRETT& 
DUNNER LLf 

1300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


STATUS OF RELATED LITIGATION 

The status of the litigation is as follows. On April 26, 2001, InterTrast filed a Complaint 
alleging that Microsoft Corporation ("Microsoft") was infringing U.S. Patent No. 6,185,683 Bl, 
assigned to InterTrust. See InterTrust Tech. Corp. v. Microsoft Corp. (C 01-1640 SBA, N. D. 
Ca.). A copy of the Complaint is attached as Exhibit A. On June 26, 2001 and July 26, 2001, 
InterTrust amended its complaint to add U.S. Patent Nos. 6,253,193 Bl; 5,920,861; and 
5,940,504.* See Exhibit B. 

On August 29, 2001, Microsoft filed its Answer to InterTrust's Second Amended 
Complaint. See Exhibit C. On September 17, 2001, Microsoft filed a First Amended Answer 
and Counterclaims, asserting twelve affirmative defenses, including, inter alia, non- 
infringement, invalidity, dedication to the public, prosecution history estoppel, and inequitable 
conduct, and counterclaiming for declaratory judgments of non-infringement and invalidity of 
the InterTrust patents, and for infringement of U.S. Patent Nos. 6,049,671 and 6,256,668 Bl, 
allegedly assigned to Microsoft. See Exhibit D. 

On October 26, 2001, InterTrust filed a Third Amended Complaint to add U.S. Patent 
Nos. 5,917,912; 5,892,900; and 5,982,891. See Exhibit E. Microsoft filed its Answer and 
Counterclaims to InterTrust's Third Amended Complaint on November 8, 2001, see Exhibit F, 
and filed an Amended Answer and a "Corrected" Amended Answer on November 14 and 15, 
respectively, see Exhibits G and H, asserting several additional affirmative defenses and 
counterclaims. See, e.g., id. at pages 9 and 13-19. 


The '504 patent was subsequently dismissed from this suit. 


-2- 


F I N N E G AN 
HENDERSON 
FARABOW 
CARRETT& 
DUNNER ll£ 

1300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


On February 6, 2002, InterTrust filed a second lawsuit against Microsoft, alleging 
infringement of U.S. Patent No. 6,157,721 ("the '721 patent"). See Exhibit I. 2 Microsoft filed 
its Answer and Counterclaims on March 25, 2002, and filed a First Amended Answer and 
Counterclaims on April 12, 2002, asserting thirteen affirmative defenses, including, inter alia, 
non-infringement, invalidity, dedication to the public, prosecution history estoppel, inequitable 
conduct, and unenforceability, and counterclaiming for declaratory judgment of non- 
infringement and invalidity. See Exhibit J. On June 5, 2002, Microsoft served its Initial 
Disclosures Pursuant to Fed. R. Civ. P. 26(a)(1), identifying various technologies believed by 
Microsoft to bear on the validity of the '721 patent. See Exhibit K. 

On July 30, 2002, InterTrust filed a motion for leave to file a Fourth Amended 
Complaint, adding claims of infringement of additional InterTrust patents. This motion was 
granted on October 22, 2002. The Fourth Amended Complaint was filed on October 24, 2002, 
adding to the case claims of infringement of U.S. Patent Nos. 6,1 12,181; 5,915,019; 5,949,876; 
and 6,389,402 Bl. See Exhibit L. 

On August 16, 2002, Microsoft served its Preliminary Invalidity Contentions Regarding 
U.S. Patent Nos. 6,253,193 Bl and 6,185,683 Bl ("Preliminary Invalidity Contentions"). See 
Exhibit M. In its Preliminary Invalidity Contentions, Microsoft asserts that certain claims in 
those patents are indefinite, lack enablement, and lack an adequate written description. 
Microsoft also asserts that certain claims are anticipated or rendered obvious by various 
references. See id. at pages 3-7. 


This case has since been consolidated with the case filed April 26, 2001. 


-3- 


REMARKS 


In support of its claim that InterTrust's U.S. Patent Nos. 5,892,900; 5,920,861; and 
6,157,721 are unenforceable, Microsoft cites three references: (1) an article entitled DigiBox: A 
Self-Protecting Container for Information Commerce, by Olin Sibert et al. ("the Sibert article"); 
(2) PCT Publication No. WO 96/27155 ("the PCT Publication"); and (3) U.S. Patent No. 
5,910,987 ("the '987 patent"). Applicants note that the Sibert article was cited in connection 
with the present application in an IDS filed November 13, 2001. Applicants also note that the 
PCT Publication is the international counterpart of U.S. Application No. 08/388,107 ("the '107 
application"), a parent of the present application, and that the '987 patent is a continuation of the 
'107 application. 

If there are any fees due with the filing of this Notice not already accounted for, please 
charge the fees to our Deposit Account No. 06-0916 


F I N N E C AN 
HENDERSON 
F A R A B O W 
GARRETT& 
DUNNER tif 

1300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


Respectfully submitted, 


FINNEGAN, HENDERSON, FARABOW, 
GARRETT & DUNNER, L.L.P. 


Dated: October 30, 2002 




FINNEGAN 
HENDERSON 
F A R A B O W 
GARRETT& 
DUNNER ll£ 

1300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


PATENT 
Customer No. 22,852 
Attorney Docket No. 7451 .0001 -1 8 
InterTrust No.: IT-5.2.1.1 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re Application of: 

Karl L. GINTER, etal. 

Application No.: 09/870,801 

Filed: June 1,2001 


For: SYSTEMS AND METHODS FOR 
SECURE TRANSACTION 
MANAGEMENT AND ELECTRONIC 
RIGHTS PROTECTION 

Commissioner for Patents 
Washington, DC 20231 


Group Art Unit: 2132 
Examiner: G. Barron, Jr. 


RECI 

NOV 0 1 2002 

Technology Center 21 00 


Sir: 


INFORMATION DISCLOSURE STATEMENT UNDER 37 C.F.R. § 1.97(b) 


Pursuant to 37 C.F.R. §§ 1.56 and 1.97(b), Applicants bring to the attention of 
the Examiner the documents listed on the attached Form PTO 1449. This Information 
Disclosure Statement is being filed, to the best of the undersigned's knowledge, before 
the mailing date of a first Office Action on the merits for the above-referenced 
application. Applicants also submit herewith copies of the listed documents. 

The documents cited herein were cited by Microsoft in the InterTrust Tech. Corp. 
v. Microsoft Corp. litigation (C 01-1640 SBA, N. D. Ca.), which involves patents related 
to this patent application. See Notice Regarding Related Litigation, filed concurrently 
herewith. Some or all of these documents may have been previously cited in other 
Information Disclosure Statements filed in this application to which those applications 


F I N N EC AN 
HENDERSON 
F A R A B O W 
GARRETT& 
DUNNER Lif 

1300 1 Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.finnegan.com 


claim priority under 35 U.S.C. §120. However, out of an abundance of caution, 
Applicants are bringing these documents to the Examiner's attention along with the 
additional information that these documents have been mentioned in the litigation. 
Applicants respectfully request that the Examiner consider the listed references and 
indicate that they were considered by making appropriate notations on the attached 
form. 

This submission does not represent that a search has been made or that no 
better art exists and does not constitute an admission that each or all of the listed 
documents are material or constitute "prior art." If the Examiner applies any of the 
documents as prior art against any claim in the application and Applicants determine 
that the cited documents do not constitute "prior art" under United States law, 
Applicants reserve the right to present to the office the relevant facts and law regarding 
the appropriate status of such documents. 

Applicants further reserve the right to take appropriate action to establish the 
patentability of the claimed invention over the listed documents, should one or more of 
the documents be applied against the claims of the present application. 

If there is any fee due in connection with the filing of this Statement, please 

charge the fee to our Deposit Account No. 06-0916. 

Respectfully submitted, 

FINNEGAN, HENDERSON, FARABOW, 
GARRETT & DUNNER, L.L.P. 

Dated: October 30, 2002 



Kama J. Nisewaner 
Reg. No. 50,665 



INFORMATION DISCLOSURE CITATION 


1 ii^IATftp^ 

Atty. Docket No. 07451 .0001-18000 

Appln. No. 09/870,801 


Applicant Karl L. Ginter, et al. 



Filing Date June 1, 2001 

Group: 2132 

Technoloav 




Chaum, D., et al. "Wallet databases with observers," Ernest F. Brickell, editor, Advances in 
Cryptology - CRYPTO '92, 12 th Annual International Cryptology Conference, Santa Barbara, CA, 
August 16-20, 1992, Proceedings, pp. 89-105. 


Chaum, D., "Security Without Identification Card Computers to Make Big Brother Obsolete," 
Communications of the ACM, Vol. 28., No. 10, Oct. 1985, pp. 1-24. 


"List of Articles," <www.chaum.com/articies/list-of-articles.htm>, as on August 23, 2002, 4 pages. 


Choudhury, A.K., et al., "Copyright Protection for Electronic Publishing Over Computer Networks," 
AT&T Bell Laboratories, Murray Hill, NJ., submitted to IEEE Network Magazine, June 1994, pp. 1- 
17. 


Cox, B., "What if there is a Silver Bullet and the competition gets it first?" Journal of Object- 
Oriented Programming, June 1992, available at 
<http://www.virtualschool.edu/cox/CoxWhatlfSilverBullet.html>, pp. 1 -5. 


CUPID Protocols and Services (Version 1): "An Architectural Overview," November 1992, available 
at <http//www.cni.org/projects/CUPID>, 25 pages. 


Custer, H. "Inside Windows NT," Microsoft Press, Redmond WA, 1993. 


Denning, D. E., etal., "Data Security," 11 Computing Surveys, No. 3, Sept. 1979, pp. 227-249. 


Denning, D. E., "Secure Personal Computing in an Insecure Network," Communications of the 
ACM, August, 1979, Vol. 22, No. 8, pp. 476-482. 


loannidis, J., et al., "The Architecture and Implementation of Network-Layer Security Under Unix," 
Fourth USENIX Security Symposium Proceedings (Oct.), USENIX, Berkeley, Calif. 1993, 
pp. 1-11. 


Kohl, J., et al., "The Kerberos Network Authentication Service (V 5), "Network Working Group 
Request for Comments RFC-1510, September 1993, pp. 1-104. 


Kohl, U, et al., "Safeguarding Digital Library Contents and Protecting Documents Rather Than 
Channels," in D~lib Magazine, September 1997, available at 
<http://www.dlib.org/dlib/september97/ibm/09iotspiech.html>, pp. 1-9. 


Lampson, B., et al., "Authentication in Distributed Systems: Theory and Practice," ACM Trans. 
Computer Systems, Vol. 10, No. 4 (Nov. 1992), pp. 265-310. 


Mori, R, et al., "Superdistribution The Concept and the Architecture," The Transactions of the 
IEICE, Vol. E73, No. 7, Tokyo Japan, July 1990, pp. 1133-1146. 


Olivier, MS, et al., "A Taxonomy for Secure Object-oriented Databases," ACM Transactions on 
Database Systems, Vol. 19, No. 1, March 1994, pp. 3-46. 


Olivier, MS, et al., "Building a Secure Database using Self-protecting Objects," Computers & 
Security, Vol. 11, No. 3, 259-271, 1992. 


Olivier, MS, et al., "Secure Object-oriented Databases," Ph.D. Thesis, Rand Afrikaans University, 
Johannesburg, December 1991, pages I to xivand 1-183. 


Olivier, MS, et al., "DISCO: A Discretionary Security Model for Object-oriented Databases," in GG 
Gable and WJ Caelli, Eds., IT Security: The Need for International Cooperation, pp. 345-357, 
Elsevier Science Publishers B.V. (North Holland), 1992. 

Page 2 of 3 



INFORMATION DISCLOSURE CITATION 


Atty. Docket No. 07451 .0001-18000 


Appln. No. 09/870,801 


Applicant 


Karl L. Ginter, et al. 


NOV 0 1 2002 


Filing Date 


June 1, 2001 


Group: 


2132 


Technology Center 91 nn 



Coalition for Networked Information, Interactive Multimedia Association, John F. Kennedy School 
of Government, "Proceedings: Technological Strategies for Protecting Intellectual Property in the 
Networked Multimedia Environment," 1994, Journal of the Interactive Multimedia Association, 
available at <http://www.cni.org/docs/ima.ip-workshop>, 308 pages. 


Siebert, O., et al. "Digibox: A Self-Protecting Container for Information Commerce," Proceedings 
of the First USENIX Workshop on Electronic Commerce, New York, NY, July 1995, pp. 1-13. 


Stefik, M., "Letting Loose the Light: Igniting Commerce in Electronic Publication," Xerox PARC, 
Palo Alto, CA, 1994-1995, 35 pages. 


Stefik, M., "Letting Loose the Light: Igniting Commerce in Electronic Publication, in Internet 
Dreams: Archetypes, Myths, and Metaphors," Massachusetts Institute of Technology, 1996, pp. 
219-53. 


Stefik, M., Chapter 7, Classification in "Introduction to Knowledge Systems," Morgan Kaufmann 
Publishers, Inc., 1995, pp. 543-607. 


Tygar, J.D., et al., "Cryptography: It's Not Just for Electronic Mail Anymore," CMU-CS-93-107, 
School of Computer Science Carnegie Mellon University, Pittsburgh, PA, March 1, 1993, pp. 1-21. 


Tygar, J.D., et al., "Dyad: A System for Using Physically Secure Coprocessors," School of 
Computer Science, Carnegie Mellon University, Pittsburgh, PA, pp. 1-41 


Tygar, J.D., et al., "Strongbox: A System for Self Securing Programs," CMU Computer Science: 
25 Anniversary Commemorative, R. Rashid (ed.) Addison-Wesley, 1991 . 


White, J.E., "Telescript Technology: The Foundation for the Electronic Marketplace," General 
Magic, 1994. 


Wobber, E., et al., "Authentication in the Taos Operating System," an extended version of a paper 
presented at the 14 th ACM Symposium on Operating System Principles, December 1993, pp. 1-38. 

Examiner 

Date Considered 

*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609; draw line 
through citation if not in conformance and not considered. Include copy of this form with next 
communication to applicant. 

Form PTO 1449 

Patent and Trademark Office - U.S. Department of Commerce 


Page 3 of 3 



INFORMATION DISCLOSURE CITATION 


Atty. DoSk&WcT 07451.0001-18000 

Appln. No. 09/870,801 

Applicant Karl L. Ginter, et al. 

Filing Date June 1, 2001 

Group: 2132 


Examiner 
Initial 

Document 
Number 

Issue Date 

Name 

Class 

Sub 
Class 

Filing Date 

it Appropriate 


4,658,093 

f\ A A A 0~7 

04-14-87 

Hellman 

380 

25 

07-1 1-83 


c con OOK 

nc oc Qft 

oteriK, et ai. 



no a c nc 


5,534,975 

07-09-96 

Stefik, et al. 

355 

202 

05-26-95 


5,603,031 

02-11-97 

White et al. 

395 

683 

07-08-93 


5,629,980 

05-13-97 

Stefik, et al. 

380 

4 

11-23-94 


5,634,012 

05-27-97 

Stefik, et al. 

395 

239 

11-23-94 


5,638,443 

06-10-97 

Stefik, et al. 

380 

4 

11-23-94 


5,715,403 

02-03-98 

Stefik 

395 

244 

11-23-94 


6,016,393 

01-18-00 

White, et al. 

395 

683 

02-10-97 


Examiner 
Initial* 


Document 
Number 


Publication 
Date 


Country 


Class 


Sub 
Class 


Translation 
Yes or No 


WO 93/01550 


01-21-93 


PCT 


G06F 


11/34 


PIVPD 


EP 0715243 A1 


06-05-96 


EPO 


G06F 


1/00 


EP 0715244 A1 


06-05-96 


EPO 


G06F 


1/00 


NOV 0 1 2002 


EP 0715245 A1 


06-05-96 


EPO 


G06F 


1/00 


Te chnology Center 21 0 3 


EP 0715246 A1 


06-05-96 


EPO 


G06F 


1/00 


EP 0715247 A1 


06-05-96 


EPO 


G06F 


1/00 


Examiner 
Initial* 

OTHER DOCUMENTS (Including Author, Title, Date, Pertinent Pages, etc.) 


Abadi, M., et al., "Authentication and Delegation with Smart-cards," Technical Report 67, DEC 
Systems Research Center, October 1990, available at 
<http://citeseer.nj.nec.com/article/abadi92authentication.html>, pp. 1-19. 


Blaze, M., "A Cryptographic File System for Unix," pre-print of paper for First ACM Conference on 
Computer and Communications Security, Fairfax, Virginia, Nov. 3-5,1993, pp. 1-8. 


Blaze, M., "Key Management in an Encrypting File System," Proc. Summer '94 USENIX Tech. 
Conference, Boston, MA. June 1994, available at 

<http://www.usenix.org/publicaitons/libratry/proceedings/bos94/full_papers/blaze.asp>, pp. 1-12. 


Castano, S., et al., "Database Security," Addison-Wesley & Acm Press, 1995 - 


Chaum, D., "Achieving Electronic Privacy," Scientific American, August 1992, pp. 96-101. 


Page 1 of 3