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WILLIAM L. ANTHONY (State Bar No. 106908) 
ERIC L. WESENBERG (State Bar No. 1 39696) 
HEIDI L. KEEP? (State Bar No. 178960) 
ORRICK, HERRINGTON & SUTCLIFFE, LLP . 
1000 Marsh Road 
Menlo Park, CA 94025 
Teleph9ne: 650-614-7400 
Facsimile: 650-614-7401 

STEVEN ALEXANDER (admitted Pro Hac nc/e) 

KRISTIN L. CLEVELAND (admitted Pro Hac Vice) 

JAMES E. GERINGER (admitted Pro Hac Ktce) 

JOHN D. VANDENBERG 

KLARQUIST SPARKMAN, LLP 

One World Trade Center, Suite 1600 

121 S.W. Salmon Street 

Portland, OR 97204 

Telephone: 503-226-7391 

Facsimile: 503-228-9446 

Attorneys for Defendant and Counterclaimant, 
MICROSOFT CORPORATION 

UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF CALIFORNL\ 
OAKLAND DIVISION 

CASENO,C01-1640SBA 


MICROSOFT CORPORATION'S 
PATENT LOCAL RULE 4-2 
DISCLOSURE OF PRELIMINARY 
CLAIM CONSTRUCTION AND 
EXTRINSIC EVIDENCE (LIMITED 
TO «MINI-MARKMAN» CLAIMS) 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation. 

Plaintiff, 

V. 

MICROSOFT CORPORATION, a 
Washington corporation, 

Defendant. 

MICROSOFT CORPORATION, a 
Washington corporation, 

Counterclaimant, 

V. 

INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation. 

Counter Claim-Defendant 


MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMITED TO "MINI- 
MARKMAN" CLAIMS). CASE NO. C 01-1640 SBA 


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Pursuant to Patent Local Rule 4-2 and this Court's Order, entered November 5, 2002, 
Defendant Microsoft Corporation ("Microsoft") hereby serves its "Disclosure Of Preliminaiy 
Claim Construction And Extrinsic Evidence," limited to the twelve selected "Mini-Markman" 
patent claims. Microsoft's preliminary claim construction is based upon the proposed terms, 
phrases and clauses, and claims as a whole, identified by the parties in tiieir submissions in 
accordance with Patent Local Rule 4- 1(a) and conference in accordance with Patent Local Rule 4- 

1(b)- 

Microsoft provides its preliminary claim construction of each of the 12 "Mini-Markman" 
claims subject to the limitations and reservations of rights set forth herein. Mifcrosoft does not 
waive any defenses that the asserted claims fail to satisfy the provisions of 35 U.S,C. § 1 12 
including, for example, the written description requirement, the definiteness requirement, or any 
other requirement for patentability. Microsoft does not concede that the asserted claims are 
supported by PlamtifFs original application or any application from which they purportedly claim 
priority Specifically, by offering a construction of a term, Microsoft does not waive any defense 
that the claim is in fact indefinite and there can be no proper construction. 

Microsoft provides its preliminary claim construction in the following format. Exhibit A 
sets forth Microsoft's preliminary construction of (1) the claim term "virtual distribution 
environment" ("VDE"), (2) the "VDE mvention" disclosed in the February, 1995, InterTrust 
patent application, and (3) certain other claim terms. Exhibit B sets forth Microsoft's preliminary 
construction of the disputed claims as a whole, and particular claim phrases in dispute, in the 
order of appearance in a claim. Where an individual claim term (within a phrase) is also in 
dispute, it will be bold-faced in Exhibits A and B. Exhibit C sets forth Microsoft's preluninary 
construction of the individual terms in dispute, in alphabetical order. 

Microsoft reserves the right to modify its preliminary claim constructions in the event that 
the parties are imable to agree upon a particular claim construction. Furthermore, because 
InterTrust has not yet fully complied with the disclosure requirements of Patent Local Rules 3-1 
and 3-2, Microsoft expressly reserves the right to amend its preliminary claim construction if 

MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMFTED TO "MINl- 
-1- MARKMAN" CLAIMS). CaseNo. C 01-1640 SBA 


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evidence becomes available through those disclosures (or that should have been provided therein) 
that would support amended constructions. Microsoft further reserves the right to amend its 
preliminary claim constructions once it has an opportunity to review InterTrust's preliminary 

claim constructions and once the parties have further met and conferred as required. 

I 

Preliminary Identification of Evidence in Support of Claim Construction 
Microsoft' s preliminary claim construction is supported by the intrinsic record of the 
seven U.S. patents from which the 12 "Mini-Markman" claims are selected. For the purposes of 
submission of this preliminary claim construction only, Microsoft treats the "intrinsic" evidence 
as including: 1 ) the specifications of each of the seven U.S. patents at issue in the "Mini- 
Markman" proceeding, including any material purportedly incorporated by reference therein; 
2) the prosecution history of each of the seven patents at issue, including the applications and 
prosecution history of the seven patents and any related patent applications, including without 
limitation, applications purportedly incorporated by reference or to v^ch an application claimed 
priority; and 3) all references cited in the prosecution of any such applications. In accordance 
with the local rules, this evidence is not specifically identified, except to the extent that Microsoft 
asserts particular sections of a patents' specifications provide "structure" for claims properly 
construed under 35 U.S.C. § 1 12(6). 

In certain circumstances, Microsoft's preliminary construction may be supported by 
extrinsic evidehce presentiy available to Microsoft. Microsoft reserves the right to modify or 
supplement with evidence that it has not yet been able to fully review, due to InterTrust's 
production, including without limitation, InterTrust re-production of over 1,000,000 pages on 
November 4, 2002. Microsoft reserves the right to supplement with additional evidence gathered 
in the course of the discovery collected between now and the close of "claim construction" 
discovery or later submitted by InterTrust in full compliance with its disclosure obligations under 
Patent Local Rules 3-1 and 3-2. Extrinsic evidence is identified or produced in accordance with 
the local rule and set forth in the following exhibits: 


-2- 


MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LlMrTED TO "MINI- 
MARKMAN" CLAIMSX Case No. C 01-1640 SBA 


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Exhibit D: Contains copies of excerpts from dictionaries and other publications. Due to 
he volume of the appended pages, Exhibit D will be served via Federal Express. 

Exhibit E: Contains a list of selected production documents, identified by initial bates 
lumber. 

Exhibit F: Contains a list of selected, uncited prior art publications, identified by bates 
iimiber(s). 

Exhbit G: Contains a list of selected, uncited prior art patents, identified by bates 
iumber(s). 

In addition to the extrinsic evidence cited in Exhibits D-G, Microsoft incorporates by 
reference herein and reserves the right to rely upon: 1) all documents identified by InterTrust in 
response to discovery or pursuant to the Patent Local Rules; 2) all InterTrust patents, 
publications and other things that are prior art to any Mini-Markman claim; and 3) the testimony 
rf InterTrust and the witnesses identified below. 

Preliminary Identification of Witnesses ^ 
Professor John Mitchell: Dr. Mitchell will testify of the following matters: 

1 ) that certain of the presently disputed terms and phrases used in the twelve clauns are 
amorphous terms lacking a well-defined, precise meaning that can accurately be gleaned from 
technical or other dictionaries. Rather, these terms are used in the art and/or in the patents in a 
manner that requires close consideration of the entire patent specification to put them in proper 
context and determine their precise, correct meaning as used in the patents. These terms include 
!!securexontainer/L'!conM*'— "secure,** 
'securely," "security," "virtual distribution environment"; 

2) that the concepts stated in the InterTrust patents were known to the art, including the 
cited prior art, which cited art he will describe; 


In accordance with the local rules, Microsoft identifies witness testimony that it contends will 
support its construction. It has not identified herein testimony relevant to the "tutorial" to be held 
prior to the claim construction hearing. 


MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMITED TO "MINI- 
-3- MARKMAN" CLAIMS), Case No. C 01-1640 SBA 


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3) the level of skill, background, and understanding (including extent thereof) of the 
elevant patent application disclosures by a person of skill in the art; and 

4) the meaning and scope certain disputed claim language, including "secure container," 
'control," "govern," "protect," "protected processing environment," "secure," "securely," 
'security," and "virtual distribution environment" 

Professor David Maier: Dr. Maier vidll testify on the follovving matters: 

1) what the February 13, 1995, patent application (SN 08/388,107) and the seven 
nterTrust patents, described as the "invention;" more particularly, what are the required, 
lecessary, non-optional features of the "VDE" "invention" as stated in the patents. This 
lescription will include an explanation of the features set forth in Microsoft's "Global 
Constructions" (Exhibit A). 

2) what the February 13,1 995, patent application (SN 08/388,1 07) arid the seven 
nterTrust patents, required as necessary, non-optional building blocks to implement the "VDE" 
'mvention" as stated in the patents. 

Dated: December 20, 2002 , 


By:( 



WILLIAM L. ANTHONY 
ERIC L. WESENBERG 
HEIDI L.KEEFE 

ORRICK HERRINGTON & SUTCLIFFE, LLP 
1000 Marsh Road 
Menlo Park, CA 94025 
TaepBone: 65a«T4-7400 - 


STEVEN ALEXANDER 
KRISTIN L. CLEVELAND 
JAMES E. GERINGER 
JOHN D. VANDENBERG 

KLAR QUIST SPARKMAN, LLP 

One World Trade Center, Suite 1 600 
121 S.W. Salmon Street 
Portland, OR 97204 
Telephone: 503-226-7391 

MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMITED TO "MINI- 
-4- MARKMAN" CLAIMS). CaseNcC 01-1640 SBA " 


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Attorneys for Defendant 
MICROSOFT CORPORATION 

Of Counsel: 

T. Andrew Culbert, Esq. 
Microsoft Corporation 
One Microsoft Way 
Building 8 

Redmond, WA 98052-6399 
Telephone: 425-882-8080 ' 


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MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMrrED TO "MINI- 
MARKMAN" CLAIMS), CASE No. C 01-1640 SBA 


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DECLARATION 6¥ SERVICE BY E-MAIL 
I am more than eighteen years old and not a party to this action. My place of employment 
and business address is 121 S.W. Salmon St., Suite 1600, Portland, OR 97204. 

On December 20, 2002, at 3:00 p.m., I served on counsel for InterTrust Technologies 

r ■ . 

Corporation: 

MICROSOFT CORPORATION'S PATENT LOCAL RULE 4-2 
DISCLOSURE OF PRELIMINARY CLAIM CONSTRUCTION AND 
EXTRINSIC EVIDENCE (LIMITED TO "MINI-MARKMAN" CLAIMS) 

by email delivery to: 


Michael H. Page, Esq. 
John W. Keker, Esq. 
Jon B. Streeter, Esq. 
Keker & Van Nest, LLP 
710 Sansome Street 
San Francisco, C A 94111 
Telephone: 415-391-5400 
FacsimUe: 415-397-7188 
Email: mhp@Jcvn.com 


Douglas Derwin 

InterTrust Technologies Corporation 
4800 Patrick Henry Drive 
Santa Clara. CA 95054 
Telephone; 408-855-0100 
FacsimUe: 408-855-0144 
Email: dderwin@.intertrust.com 


Steven H. Morrissett, Esq. 
Finnegan Henderson Farabow 

Garrett & Dunner 
Stanford Research Park 
700 Hansen Way 
Palo Alto CA 94304-1016 
Telephone: 202-408-4000 
Facsimile: 202-408-4400 
Email: steven.monissett@iinnegan.com 


I declare imder penalty of perjury that the foregoing is true and correct. 
Executed on December 20, 2002, at Portland, Oregon. ^ . 



(SIGNATURE) 
(PRINT NAME) 


-6- 


MICROSOFT CORPORATION'S PATENT LOCAL 
RULE 4-2 DISCLOSURE (LIMITED TO "MINl- 
MARKMAN" CLAIMS), Case No. C 01-1640 SBA