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F I N N ECAN 
HENDERSON 
F A R A B O W 
GAR R ETT & 
DUNNER llp 

1300 I Street, NW 
Washington, DC 20005 
202.408.4000 
Fax 202.408.4400 
www.fi n negan . com 


PATENT 
Customer Number 22,852 
Attorney Docket No. 07451 .0001 .18 
InterTrust Ref. No.: IT-5.2.1 .1 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 

In re Application of: 

Karl L. GINTERetal. 

Serial No.: 09/870,801 

Filed: June 1,2001 


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


RECEIVED 

APR 0 4 2003 
-fechnolo! Center 2100 


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

Commissioner for Patents 
Washington, DC 20231 

Sir: 

UPDATED NOTICE REGARDING RELATED LITIGATION 

Further to the submission of the Notice Regarding Related Litigation on October 
31 , 2002, Applicants submit this Updated Notice. to injprm-'the Examiner of the status of 
the litigation case between InterTrust and Microsoft, entitled InterTrust Tech. Corp. v. 
Microsoft Corp. (C 01-1640 SBA, N. D. Ca.). Applicants also submit copies of papers 
exchanged by the parties in the course of this litigation. Many of these papers relate to 
claim construction. 


A 


FINNECAN 
HENDERSON 
F A R A B O W 
GARRETT& 
DUNNER Li£ 

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


STATUS OF RELATED LITIGATION 

On October 24, 2002, InterTrust filed a Fourth Amended Complaint, 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 B1. See Exhibit 1. 

On November 1, 2002, Judge Saundra Armstrong signed an Order granting, in 
part, Microsoft's Motion for a Partial Stay. See Exhibit 2. On November 5, 2002, Judge 
Armstrong signed a Further Case Management Order. See Exhibit 3. Both orders 
listed the claims which were selected to be the subject of a "mini-Markman" and 
"indefiniteness" hearing. The case management order set out a timeline for the 
exchange and submission of Patent Local Rule (PLR) materials. The following chart 
lists the claims selected to be the subject of the PLR materials and the mini-Markman 
hearing. 


U. S. Patent Number 

Claim(s) 

6,253,193 

1, 11, 15, 19 

6,157,721 

1, 34 

5,917,912 

8, 35 

5,920,861 

58 

5,982,891 

1 

6,185,683 

2 

5,892,900 

155 


On November 7, 2002, Microsoft filed its Answer and Counterclaims to 
InterTrust's Fourth Amended Complaint. See Exhibit 4. 


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

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


On November 8, 2002, under PLR 4-1 , the parties exchanged proposed terms 
and claim elements for construction. See Exhibits 5 & 6. 

On December 20, 2002, under PLR 4-2, the parties exchanged preliminary claim 
constructions and extrinsic evidence supporting the claim constructions. See Exhibits 7 
& 8. Microsoft's PLR 4-2 Disclosure (Exhibit 8) includes Exhibits A-G 1 . Exhibit 8D 
contains copies of excerpts from dictionaries and other publications. Due to the volume 
of the appended pages, Applicants have provided a list of the source dictionaries and 
publications in place of the excerpted pages. Exhibit 8F as submitted by Microsoft 
contains a list of selected, uncited prior art publications, identified by bates numbers 
used by the parties in the litigation. For clarification, Applications have added a list 
identifying each document in Exhibit 8F by name. Exhibit 8G as submitted by Microsoft 
contains a list of selected, uncited prior art patents, also identified by bates numbers. 
Applications have added a list identifying each of the listed documents by patent 
number. On January 10, 2003, Microsoft submitted revised Exhibits 8F and 8G, in 
which the number of references was reduced. Applications have identified the 
documents in the revised lists in bold. 

On February 3, 2003, under PLR 4-3, the parties filed a Joint Claim Construction 
and Prehearing Statement. See Exhibit 9. 

On March 17, 2003, 1 nterT rust filed InterT rust's Opening Claim Construction 
Brief. See Exhibit 10. On March 17, 2003, Microsoft filed Microsoft's Brief in Support of 


1 To distinguish Exhibits A-G of Exhibit 8 from Exhibits A-G of Exhibit 9, Applicants will 
hereinafter refer to Exhibits A-G of Exhibit 8 as Exhibits 8A-8G. 


r 


• 



Motion for Summary Judgment that certain "Mini-Markman" Claims are Invalid for 
Indefiniteness. See Exhibit 1 1 . 


Due to the voluminous number of references indicated by these papers, they 
have not been provided. If the Examiner would like to review any of the references from 
Microsoft's PLR 4-2 Disclosure or any of the exhibits from InterTrust's Opening Claim 
Construction Brief or Microsoft's Brief in Support of Motion for Summary Judgment, 
Applicants invite the Examiner to contact the undersigned at (650) 849-6643 and 
Applicants will provide them. 

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. 


FINNECAN 
HENDERSON 
F A R A B O W 
GARRETT & 
DUNNER kt£ 

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


REMARKS 


Respectfully submitted, 


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


Dated: April 2, 2003