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ORIGINAL 
FILED 

JUL o 3 2003 

RICHARD W.WIEKING 
...CLEW, U.S. OiSTfllCT COURT 
NORTHERN DISTRICT OF CALIFORNIA 
OAKLANO 


IN THE UNITED STATES DISTRICT COURT 
FOR THE NORTHERN DISTRICT OF CALIFORNIA 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 

Plaintiff, 

v. 

MICROSOFT CORPORATION, a Washington 
corporation, 

Defendant. 

/ 

AND COUNTER-ACTION. 


No. C 01-1640 SBA 

Consolidated with No. C 02-0647 SBA 

ORDER DENYING MOTION FOR 
PARTIAL SUMMARY JUDGMENT AND 
CONSTRUING "MINI-MARKMAN" 
CLAIMS 

Pocket No. 229] 

Plaintiff's Counsel ws directed io sarve this 
order upon aii G&ai- pardas in this action. 


This matter comes before the Court for two related proceedings. The first is a "rnini- 
Markman " (limited claim' construction) proceeding in which the Court shall construe thirty terms 
and phrases appearing in twelve claims selected by the parties from the numerous claims at issue in 
this action. The second is Microsoft's Motion for Summary Judgment that Certain "Mini-Markman" 
Claims Are Invalid for Indefiniteness (the "Indefiniteness Motion"). The Court held a claim 
construction hearing on June 1 1 and 12, 2003, and heard oral argument on the Indefiniteness Motion 
on June 12, 2003. Having read and considered the papers submitted, having considered the parties' 
arguments at the hearings, and being fully informed, the Court DENIES the Indefiniteness Motion 
and CONSTRUES the disputed terms and phrases as set forth below. 


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# 


L BACKGROUND 

A. Procedural History 

Plaintiff and counterdefendant InterTrust Technologies Corp. ("InterTrust") filed its 
Complaint in case number C 01-1640 SBA on April 26, 2001 , its First Amended Complaint on June 
26, 2001, its Second Amended Complaint on July 30, 2001, and its Third Amended Complaint on 
October 25, 2001 . In its Third Amended Complaint InterTrust claimed infringement of seven 
patents. Defendant and counterclaimant Microsoft Corp. ("Microsoft'*) filed an answer and 
counterclaims to the Third Amended Complaint on November 15, 2001, alleging infringement of 
two of its own patents. The Court subsequently held one of the patents asserted in the Third 
Amended Complaint not infringed, leaving six patents-in-suit from the Third Amended Complaint 

On February 6, 2002, InterTrust filed a second, separate patent infringement action against 
Microsoft, No. C 02-0647 SBA, claiming infringement of an additional patent. That second patent 
infringement action was consolidated with the earlier-commenced action on May 3, 2002. 

In an Order filed on October 23, 2002, the Court, inter alia, granted InterTrust leave to 
amend its complaint. Accordingly, on October 24, 2002, InterTrust filed its Fourth Amended 
Complaint, claiming infringement of eleven patents (i.e.. it added infringement claims regarding four 
new patents), one of which was the patent-in-suit in Case No. C 02-0647 SBA. Per the Court's 
October 23, 2002 Order, Case No. C 02-0647 SBA was automatically dismissed as moot upon the 
filing of the Fourth Amended Complaint. In an Order filed on November 1, 2002, the Court stayed 
this action in part, staying all proceedings (including discovery) unrelated to twelve claims selected 
by the parties and listed in the Order; these claims would be subject to limited Markman and 
indefiniteness proceedings. On November 7, 2002, Microsoft filed an Answer and Counterclaims to 
InterTrust's Fourth Amended Complaint, in which it claimed infringement of the same two of its 
own patents that it had asserted in its previous answer and counterclaims. 

Thus, at present, InterTrust has asserted eleven patents that are currently in suit, and 

Microsoft has asserted two, for a total of thirteen patents-in-suit. These patents are; 

InterTrust: 5,892,900 (the "'900 patent") 
5,915,019 (the "'019 patent") 
5,917,912 (the "'912 patent") 

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5,920,861 (the "'861 patent") 

5,949,876 (the to 876 patent") 

5,982,891 (the u '891 patent") 

6,112,181 (the "'181 patent") 

6,157,721 (the "'721 patent") 

6,185,683 Bl (the "'683 patent") 

6,253,193 Bl (the to 193 patent") 

6,389,402 Bl (the ,o 402 patent") 

Microsoft: 6,049,671 (the "'671 patent") 
6,256,668 (the «"66S patenf *) 

Both parties have asserted various affirmative defenses to the opposing party ■ s infringement claims, 

and Microsoft additionally seeks declaratory judgments of non-infringement of InterTrust's asserted 

patents. 

B. The Instant Proceedings 

1. Mini-M arkman Proceeding 

Per the Court's Order of February 24, 2003, and the Court's relevant prior and subsequent 
Orders, the parties are before the Court for a "mini- Markman " proceeding. The Court is construing 
thirty terms and phrases from twelve claims jointly selected by the parties from the eleven patents 
asserted by InterTrust The parties have asked for one additional item of construction: whether a 
particular term, "virtual distribution environment," should be read into all of the claims at issue as a 
limitation. 1 The terms and phrases to be construed have been selected from the following twelve 
claims (from seven of InterTrust's asserted patents): 


1. 

193.1 2 

2. 

193.11 

3. 

193.15 

4. 

193.19 

5. 

683.2 

6. 

721.1 

7. 

721.34 

8. 

861.58 

9. 

891.1 

10. 

900.155 

11. 

912.8 


1 As discussed infra, there is some disagreement about whether Microsoft is asserting that this 
term should be read into every claim at issue in this proceeding. 

2 The format "XXX. YYY" indicates the following: XXX is the patent number; YYY is the 
number of die relevant claim in that patent. This format will be used to identify claims throughout this 
Order. 


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12. 912.35 

The parties have filed a Patent Local Rule 4-3 Joint Claim Construction and Prehearing 
Statement Revised in Accordance with the Scope of "Mini- Markman " Hearing Set Forth in the 
Court's Order Entered 2/24/03 (the "JCCS"), which provides most of the essential information for 
the Court's construction of the terms and phrases at issue. The parties' competing proposed 
constructions of the terms and phrases are set out in Exhibits A and B to the JCCS (both exhibits 
provide the parties' proposed constructions but organize them differently). InterTrust's and 
Microsoft's identifications of intrinsic and extrinsic evidence are set out in Exhibits C and D, 
respectively, to the JCCS. 

In connection with the mini- Markman hearing the parties have submitted the following 
briefs: InterTrust has submitted InterTrust's Opening Claim Construction Brief ("InterTrust's 
Opening Markman Brief*) (40 pages in length); Microsoft has submitted Microsoft's Markman 
Brief (40 pages); and InterTrust has submitted Plaintiff InterTrust Technologies Corporation's Reply 
Memorandum on Claim Construction ("InterTrust's Reply Markman Brief) (25 pages). The parties 
have also submitted various declarations with attachments in support of their briefs. On InterTrust's 
motion, the Court struck the testimony of witnesses David Maier, Sanford Bingham, and Martin 
Plaehn, offered by Microsoft in support of its claim construction positions, in two Orders filed on 
June 5 and 10, 2003. 

The parties have filed a Joint Appendix to Joint Claim Construction Statement (the "J A"), 
which consists of a brief cover document and 18 volumes containing the full seven patents-in-suit 
from which the 12 claims that are the subject of the mini- Markman proceeding are taken (Exhibits A 
through G), the prosecution histories of these seven patents (Exhibits H through Q), selected cited 
references (Exhibits R through DD), and a related patent application (Exhibit EE). 
2. Indefiniteness Motion 

Also per the Court's Order of February 24, 2003, and the Court's relevant prior and 
subsequent Orders, the parties are before the Court for resolution of Microsoft's Indefiniteness 
Motion. The Indefiniteness Motion seeks summary judgment on the issue that those of the claims at 
issue that contain any of the terms "secure," "protected processing environment," or "host 

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processing environment" are invalid as indefinite. These terms are three of the 30 terms to be 
construed in the mini- Markman proceeding. 

The parties' briefing on the Indefiniteness Motion consists of the following: Microsoft's 
Brief in Support of Motion for Summary Judgment that Certain "Mini-Markman" Claims Are 
Invalid for Indefiniteness ("Microsoft's Opening Indefiniteness Brief); the Memorandum of Points 
and Authorities of Plaintiff InterTrust Technologies in Opposition to Microsoft (sic) Motion for 
Summary Judgment on Indefiniteness and in Support of Cross-Motion for Summary Judgment 
("InterTrust* s Indefiniteness Opposition Brief*); 3 and Reply to InterTrust's Opposition to 
Microsoft's Brief in Support of Motion for Summary Judgment that Certain "Mini- Markman " 
Claims Are Invalid for Indefiniteness" ("Microsoft's Reply Indefiniteness Brief). Both parties* 
briefs overwhelmingly focus on the term "secure." The parties have also submitted various 
declarations with attachments in support of their briefs. Of Microsoft's evidentiary submissions, on 
InterTrust* motion the Court struck the testimony of witnesses Jim McLaughlin, Julien Signes, 
Damian Saccocio, and Karl Ginter, 4 in an Order filed on June 5, 2003. 

II. LEGAL STANDARDS 

A. Claim Construction Generally 

A patent confers the right to exclude others from making, using, or selling the invention 
defined by the patent's claims. See Standard Oil Co. v. Am. Cvanamid Co.. 774 F.2d 448, 452 (Fed. 
Cir. 1985). A patent must describe the exact scope of an invention and its manufacture to secure to a 
patentee all to which he is entitled, and to apprise the public of what is still open to them. See 
Markman v. Westview Instruments. Inc.. 517 U.S. 370, 373, 116 S. Ct. 1384 (1996). These 
objectives are served by two distinct elements of a patent document. First, it contains a specification 


3 In filing its opposition brief to the Indefiniteness Motion, InterTrust asserted a Cross-motion 
for Partial Summary Judgment in which InterTrust sought summary judgment on the issue that eleven 
of the patent claims asserted by InterTrust are definite. In its Order Staying Cross-Motion and Briefing 
Thereon, filed on April 23, 2003, the Court stayed this cross-motion and all briefing related to the cross- 
motion until further order of the Court. 

4 Transcripts of these witnesses' testimony are appended to the Declaration ofEric L. Wesenberg 
in Support of Microsoft Corporation's Motion for Summary Judgment that Certain Mini- Markman 
Claims Are Indefinite as Exhibits C, D, H, and I, respectively. 


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describing the invention in such full, clear, concise, and exact terms as to enable any person skilled 
in the art to make and use the same. See 35 U.S.C. § 1 12. Second, a patent includes one or more 
claims, which particularly point out and distinctly claim the subject matter which the applicant 
regards as his or her invention. See id. 

The first step in any invalidity or infringement analysis is claim construction. See Union Oil 
Co. v. Atl. Richfield Co.. 208 F.3d 989, 995 (Fed. Cir. 2000). The construction of claims is simply a 
way of elaborating the normally terse claim language in order to understand and explain, but not to 
change, the scope of the claims. See ]d. Claim construction is a matter of law to be determined by 
the court. See Markman v. Westview Instruments Inc.. 52 F.3d 967, 979 (Fed. Cir. 1995), affM, 
517 U.S. 370, 116 S.Ct. 1384 (1996). 

B. Consideration of Evidence in Connection with Claim Construction 
1. Intrinsic Evidence 

"It is well-settled that, in interpreting an asserted claim, the court should look first to the 
intrinsic evidence of record, i.e., the patent itself, including the claims, the specification, and, if in 
evidence, the prosecution history." Vitronics Corp. v. Conceptronic. Inc.. 90 F.3d 1576, 1582 (Fed. 
Cir. 1996) (citing Markman. 52 F.3d at 979). In the context of the intrinsic evidence, the court 
should first look to the language of the claims themselves. See id Words in a claim are generally 
given their ordinary and customary meaning as understood by one of ordinary skill in the art See 
id.: see also Dow Chem. Co. v. Sumitoro Chem. Co. . 257 F.3d 1364, 1373 (Fed. Cir. 2001) ("[A] 
technical term used in a patent claim is interpreted as having the meaning a person of ordinary skill 
in the field of invention would understand it to mean."). It is well-established that "dictionaries, 
encyclopedias and treatises are particularly useful resources to assist the court in determining the 
ordinary and customary meanings of claim terms." Tex. Digital Svs.. Inc. v. Telegenix. Inc.. 305 
F.3d 1 193, 1202 (Fed. Cir. 2002^): see also Dow Chem. . 257 F.3d at 1373 ("Dictionaries and 
technical treatises . . . hold a special place and may sometimes be considered along with the intrinsic 


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evidence when determining the ordinary meaning of claim terms.")- 5 A dictionary definition may 
not be relied on, however, if it contradicts any definition found in or ascertained by a reading of the 
patent documents. See Kopvkake Enters.. Inc. v. Lucks Co. . 264 F.3d 1377, 1382 (Fed. Cir. 2001) 
(citing Vitronics. 90 F.3d at 1584 n.6). The Court should rely on specialized, technical dictionaries 
that reflect the understanding of one skilled in the art, rather than lay dictionaries. AFG Indus, v. 
Cardinal. 239 F.3d 1239, 1247-48 (Fed. Cir. 2001) ("Dictionary definitions of ordinary words are 
rarely dispositive of their meanings in a technological context.") (citing Anderson v. Int'l Eng'g & 
Mfg.. Inc.. 160 F.3d 1345, 1348-49 (Fed. Cir. 1998^: see also Hoescht Celanese Corp. v. BP Chems, 
Ltd.. 78 F.3d 1575, 1580 (Fed. Cir. 1996)). 

"Although words in a claim are generally given their ordinary and customary meaning, a 
patentee may choose to be his own lexicographer and use tenns in a manner other than their ordinary 
meaning, provided the special definition of the term is clearly stated in the specification." Vitronics. 
90 F.3d at 1582. Therefore, it is necessary to review the specification to determine whether the 
patentee has used terms inconsistent with their ordinary and customary meaning. See idj see also 
Dow Chem.. 257 F.3d at 1373 ("[TJhe court must examine the intrinsic evidence to determine 
whether the patentee has given a term an unconventional meaning.")- Thus, the specification acts as 
a dictionary when it expressly defines a term used in the claim or defines it by implication. See 
Vitronics. 90 F.3d at 1582 (citing Markman, 52 F.3d at 979). However, in examining the 
specification, the court must not read limitations from the specification into the claims. See Burke. 
Inc. v. Bruno Indep. Living Aids. Inc.. 183 F.3d 1334, 1340 (Fed Cir. 1999); Comark 
Communications. Inc. v. Harris Corp.. 145 F.3d 1 182, 1 186-87 (Fed. Cir. 1998) (limitations from 
specification are not to be read into the claims, but there is a fine line between reading a claim in 
light of the specification and reading a limitation into the claim from the specification); but see 
Scimed Life Svs.. Inc. v. Advanced Cardiovascular Svs.. 242 F.3d 1337, 1341 (Fed. Cir. 2001) 


5 Although such materials have regularly been characterized as extrinsic evidence, albeit special 
extrinsic evidence that may be considered along with intrinsic evidence, e.g.. Dow Chem.. 257 F.3d at 
1373, the Federal Circuit has cautioned that "categorizing them as 'extrinsic evidence' or even a 'special 
form of extrinsic evidence' is misplaced and does not inform the analysis." Tex. Digital. 305 F.3d at 
1203. 

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'Where the specification makes clear that the invention does not include a particular feature, that 
feature is deemed to.be outside the reach of the claims of the patent, even though the language of the 
Jaims, read without reference to the specification, might be considered broad enough to encompass 
he feature in question."). 

Finally, if it is entered into evidence, the court must examine the prosecution history of the 
>atent. See Dow Chem.. 257 F.3d at 1373; Vitronics. 90 FJd at 1582. The prosecution history 
:ontains the complete record of the proceedings before the Patent and Trademark Office, and may 
nclude express representations made by the applicant regarding the scope of the claims. See 
Vitronics, 90 FJd at 1582. The court examines the prosecution history to determine "whether the 
patentee has 'relinquished a potential claim construction in an amendment to the claim or in an 
irgument to overcome or distinguish a reference.'" Dow Chenu 257 F.3d at 1373 (citing Interactive 
3ift Exp.. Inc. v. Compuserve Inc.. 256 F.3d 1323, 1331 (Fed Cir. 2001)); see also Pall Corp. v.PTI 
Technologies Inc.. 259 F.3d 1383, 1392 (Fed. Cir. 2001) ("[I]t is well established that '[t]he 
prosecution history limits the interpretation of claim terms so as to exclude any interpretation that 
was disclaimed during prosecution. '") (citing Southwall Technologies. Inc. v. Cardinal IG Co.. 54 
F.3d 1570, 1576 (Fed. Cir. 1995)). A narrower claim interpretation will be adopted if the "accused 
infringer can demonstrate that the patentee 'defined' the claim as 'excluding* a broader 
interpretation 'with reasonable clarity and deliberateness.'" Pall Corp.. 259 F.3d at 1393 (citing £L 
Telecom Ltd. v. Samsung Elecs. Co.. 215 F.3d 1281, 1294-95 (Fed. Cir. 2000)). 
2. Extrinsic Evidence 

In most cases, an examination of the intrinsic evidence will be sufficient to resolve any 
ambiguity in the disputed claim and it would be improper to rely on extrinsic evidence. See 
Vitronics. 90 F.3d at 1583 (citing Pall Com, v. Micron Separations. Inc. . 66 FJd 1211, 1216 (Fed. 
Cir. 1 995)). Extrinsic evidence may be used to define the claim only if the claim language remains 
"genuinely ambiguous" after consideration of the intrinsic evidence. See kL However, "it is 
entirely appropriate, perhaps even preferable, for a court to consult trustworthy extrinsic evidence to 
ensure that the claim constructions it is tending to from the patent file is not inconsistent with clearly 
expressed, plainly apposite, and widely held understandings in the pertinent technical field."* AFG 

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Indus.. 239 F.3d at 1249 (quoting Pitnev Bowes. Inc. v. Hewlett-Packard Co.. 182 F.3d 1298, 1309 

(Fed. Cir. 1999V): see also Bell v. Howell Document Memt. Prods. Co.. 132 F.3d 701, 706 (Fed. Cir. 

1998); Mantech Envtl Corp. v. Hudson Envtl. Servs.. Inc.. 152 F.3d 1368, 1373 (Fed. Cir. 1998). 

When "the specification explains and defines a term used in the claims, without 
ambiguity or incompleteness, there is no need to search further for the meaning of the 
term." However, when such definition is challenged it is often appropriate, despite facial 
clarity and sufficiency of the specification and the prosecution history, to receive 
evidence of the meaning and usage of terms of art from persons experienced in the field 
of the invention. 

ATP Corp. v. Lvdall. Inc.. 159 F.3d 534, 540 (Fed. Cir. 1998) (citations omitted). A court may hear 
all relevant testimony — including expert testimony — so long as it does not accord weight to expert 
testimony that contradicts the clear language of the claim. See Vitronics. 90 F.3d at 1584. 
C. Invalidity Based on Indefiniteness 

A patent is presumed to be valid. 35 U.S.C. § 282. A party challenging the validity of a 
patent must prove the invalidity by clear and convincing evidence. See Apotex USA. Inc. v. Merck 
&Ca, 254 F.3d 1031, 1036 (Fed. Cir. 2001); Loral Fairchild Corp. v. Matsushita Elec. Indus. Co.. 
266 F.3d 1358, 1361 (Fed. Cir. 2001). 

A patent claim satisfies the definiteness requirement of paragraph 2 of 35 U.S.C. § 1 12 only 
if "one skilled in the art would understand the bounds of the claim when read in light of the 
specification." Exxon Research & Ene'g Co. v. United States. 265 F.3d 1371, 1375 (Fed. Cir. 2001) 
(citing Miles Labs.. Inc. v. Shandon. Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)). This means that the 
claims at issue must be "sufficiently precise to permit a potential competitor to determine whether or 
not he is infringing." Morton Int'l. Inc. v. Cardinal Chem. Co. . 5 F.3d 1464, 1470 (Fed. Cir. 1993). 
But a claim is not indefinite "merely because it poses a difficult issue of claim construction"; the 
claim need only "be amenable to construction, however difficult that task may be." Exxon 
Research. 265 F.3d at 1375. Whether a claim is indefinite is a question of law. Id, at 1376. 6 


6 In Microsoft's Opening Indefiniteness Brief, Microsoft claims that the determination of 
definiteness involves application of a two-part test. (Microsoft's Opening Indefiniteness Br. at 21.) 
InterTrust disputes the validity of this test, arguing that the Federal Circuit has clearly rejected the 
requirement, asserted by Microsoft, that claims be drafted as precisely or specifically as possible. 
(InterTrust's Indefiniteness Opp. Br. at 15 (quoting PPG Indus.. Inc. v. Guardian Indus. Corp.. 156 F.3d 


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m. DISCUSSION 

As an initial matter, the Court notes that the relevant "art" of the claims at issue in the 
mini-Markman proceeding and the Indefiniteness Motion is computer security. The Court 
previously reached this conclusion in its Order re: Unresolved Portion of InterTrust* s Motion to 
Strike Markman Matter after considering supplemental briefing on this issue, and the Court now 
incorporates by reference its reasoning therein. 7 

The Court addresses the Indefiniteness Motion first for a practical reason: if any of the terms 
at issue are found indefinite, there would be no need to construe any claim that contains such term or 
terms. 

A, Indefiniteness Motion 

Microsoft's Indefiniteness Motion seeks summary judgment on the issue of whether the 
claims at issue are indefinite with regard to three terms: "secure"; "protected processing 
environment"; and "host processing environment." The overwhelming majority of the briefing, 
however, is addressed solely to the term secure. These terms are discussed in turn. 
1, Secure 

Although Microsoft's discussion of why the term secure is indefinite is lengthy both in its 
opening brief and its reply brief, the essence of its theory of indefiniteness is a ten-variable test 
created by Microsoft's expert, Professor John C. Mitchell ("Prof. Mitchell"), which, he contends, is 


1351, 1355 (Fed. Cir. 1998), and Exxon Research. 265 R3d at 1376, 1383-84).) 

The Court agrees with InterTrust that Microsoft's asserted two-part test has no basis in law. The 
principles set forth above in this section of the Order are what govern consideration of Microsoft's 
Indefiniteness Motion. Microsoft's counsel was prudent to retreat from this alleged two-part test at oral 
argument, (§ee Transcript of Proceedings, Claims Construction Hearing ("Tr.") 305:24-306:13), 
although Microsoft should not have advanced it in the first place. 

7 The Court needs not and does not define what experience or qualifications one must have to 
be a "person of ordinary skill in the art" of computer security. The Court already struck the testimony 
of certain of Microsoft's witnesses in its Order re: InterTrust' s Motions to Strike on the ground that 
there was insufficient evidence that they had sufficient skill even under Microsoft's lenient standard of 
"ordinary skill." None of the remaining testimony tendered by the parties would be subject to exclusion 
on the ground that the declarant lacked sufficient skill to be competent to testify. Thus, the Court 
concludes that all remaining witnesses providing testimony regarding the proper construction of the 
terms and phrases in dispute, particularly Dr. Michael Reiter and Professor John C. Mitchell, have at 
least the ordinary skill in the art, and the Court evaluates the evidence accordingly. 


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not satisfied with respect to secure. Specifically, Prof. Mitchell asserts that in order for persons of 
ordinary skill in the art to understand what is meant by the term secure, they must be able to reach a 
common understanding with regard to each of the following variables: 

1 . Protecting what types of things or actions? 

2. Protecting what specific things or actions? 

3. Protecting what properties of these things or actions (e.g. . secrecy/confidentiality, 
integrity, availability, authenticity, and non-repudiation)? 

4. Protecting against whom? 

5 . Protecting against what points of attack? 

6. Protecting against what kind of attacks? 

7. Secure for how long? 

8. How to test or infer the existence of the protection? 

9. What degree of protection? 

10. Secure to whom? 

(Decl. of Professor John C. Mitchell at 9-1 1 .) Prof. Mitchell's Declaration presents numerous 
excerpts from the relevant specifications that, he evidently believes, do not allow persons of 
ordinary skill in the art to reach common understandings regarding any or all of these variables. 
(See, e.g. , id. at 12-18.) Given that the Court has stricken the testimony of witnesses Signes, 
McLaughlin, Saccocio, and Ginter, Prof. Mitchell's testimony constitutes virtually the entirety of the 
evidentiary support, other than the text of the claims and specifications themselves, for Microsoft's 
positions in the Indefiniteness Motion. 

InterTrust advances a number of arguments in response to Microsoft's contentions. First, it 
points out that Prof. Mitchell testified that secure has a general meaning in the field of computer 
science, and he himself was able to explain his use of the word secure. (InterTrust's Indefiniteness 
Opp. Br. at 4.) Prof. Mitchell also testified that there is a recognized set of criteria for determining 
whether a system is secure. (Id. at 5.) Second, InterTrust asserts that the claims of the patents-in- 
suit use secure in context, placing qualifiers around it that make clear to what they are referring. 
(Id, at 5-7.) Third, InterTrust notes that Prof. Mitchell's ten-variable test was created for the 
purposes of litigation and that Prof. Mitchell does not apply this test to any other document; indeed, 
as InterTrust's expert, Dr. Michael Reiter ("Dr. Reiter"), testifies, Microsoft's own patents and Prof. 
Mitchell's own computer security papers fail the test. (Id. at 8.) Relatedly, InterTrust provides 
various examples in which Prof. Mitchell appears to understand what secure means in context, yet 
he nevertheless finds the term indefinite because it fails to meet his ten- variable test. (Id. at 8-9.) 

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* 


Fourth, InterTrust, emphasizing that Microsoft must produce clear and convincing evidence, 
describes the relevant standard for determining indefmiteness, noting that the use of general terms to 
describe a range of circumstances does not render claims indefinite and that the fact that reasonable 
persons might disagree regarding the scope of claims does not render them indefinite. (Id. at 

10- 14.) InterTrust adds that Microsoft's assertion that 35 U.S.C. § 1 12 requires claims to be drafted 
"as precisely or specifically as possible" to be definite has been expressly rejected by the Federal 
Circuit in PPG Industries, Inc. v. Guardian Industries Corp., 156 F.3d 1351 (Fed. Cir. 1998). (Id, at 
15.) Fifth, InterTrust notes that the terms secure and securely are used in other patents, including 
Microsoft's patents . (Id. at 17.) Sixth, InterTrust explains that the Patent and Trademark Office 
("PTO") examiners assigned to the InterTrust applications had no difficulty applying the disputed 
terms to the prior art. (Id. at 18.) Seventh, InterTrust contends that Prof. Mitchell's analysis should 
be discarded because he made no attempt to construe the claims as a whole, but rather focused on 
secure in isolation. (Id. at 18-19.) Eighth, InterTrust seeks to distinguish the cases offered by 
Microsoft in which certain claim terms were held indefinite on the basis that those cases concerned 
patent applications, not issued patents; in the former there is no presumption of validity, whereas 
there is such a presumption for the latter. (Id. at 20-22.) 

In its reply brief, Microsoft addresses several of InterTrust 5 s arguments. Of particular note is 
Microsoft's argument that certain patent language defines secure with reference to a particular 
purpose, but that purpose is not explicitly defined (e.g.. commercial requirements), thereby leaving 
the reader in the dark about the scope of the claim. (Microspft's Indefmiteness Reply Br. at 7-9, 

1 1- 12.) In particular, Microsoft argues that to the extent that secure is defined with reference to the 
context of the invention's commercial embodiments, it is indefinite. (Id. at 12-13.) 8 In addition, 


8 Related to but independent of the foregoing, Microsoft contends that the effort to incorporate 
by reference the "Big Book" patent application filed in or about 1 995 with respect to the '683, '72 1 , and 
'861 patents failed because these patents reference the number of the Big Book application, which did 
not result in an issued patent and therefore was not published. ( See Microsoft's Indefmiteness Opening 
Br. at 12; Microsoft's Indefmiteness Reply Br. at 14-15.) Microsoft contends that "essential" material 
such as this may be incorporated in a patent only by reference to an issued U.S. Patent or a published 
U.S. Patent Application. (Microsoft's Indefmiteness Opening Br. at 12.) Microsoft appears to be 
relying exclusively on § 608.0 l(p) of the Manual of Patent Examining Procedure (the "MPEP"). (IdL) 


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Microsoft, quoting . deposition testimony of Prof, Mitchell, disputes InterTrust's contention that Prof 
Mitchell did not attempt to understand claim terms in the context of the claims. (Id. at 3-4.) 

At first blush, Microsoft's arguments and examples are appealing: when read in isolation, 
many of the claims' uses of the term secure superficially appear ambiguous. But InterTrust has 
made a convincing case that Microsoft's arguments must be rejected. Perhaps most crucially, the 
Court agrees with InterTrust that Prof. Mitchell's test is not credible. Prof. Mitchell's test is so 
unusual and unsupported — probably because, as he admitted, it was created for this litigation — that 
the Court finds it not credible. There is no evidence whatever, other than Prof. Mitchell's self- 
serving assertion, that a person of ordinary skill in the art would require definition of all ten 
variables in the test to understand what is meant by secure. Still further, Prof. Mitchell's opinions 
are suspect because his declaration does not reflect that he has made any effort to understand the 
meaning of secure in the context of the claims in their entirety, his deposition testimony on this point 


InterTrust disagrees with Microsoft's argument about incorporation by reference. InterTrust 
contends that there was merely a clerical error. (InterTrust's Indefiniteness Opp. Br. at 23-24.) 
InterTrust continues that incorporation by reference is effective if the referenced material is reasonably 
available to the public, and because, according to the MPEP, pending or abandoned applications are 
readily available to the public from the Patent Office, the Big Book patent application was effectively 
incorporated. (Id. at 24-25.) InterTrust further argues that MPEP § 608.0 l(p) requires only that the 
examiner is supposed to replace an application number with the issued patent number; it does not hold 
that a patent does not successfully incorporate by reference the material in question if the examiner fails 
to do so. (I& at 25.) 

The Court finds Microsoft's argument unpersuasive. Microsoft has made no effort to explain 
how the MPEP constitutes binding authority. To the contrary, the Foreward of the MPEP, of which the 
Court takes judicial notice, describes the purpose of the MPEP in part as follows: 

This Manual is published to provide U.S. Patent and Trademark Office patent examiners, 
applicants, attorneys, agents, and representatives of applicants with a reference work on 
the practices and procedures relative to the prosecution of patent applications before the 
U.S. Patent and Trademark Office. It contains instructions to examiners, as well as other 
material in the nature of information and interpretation, and outlines the current 
procedures which the examiners are required or authorized to follow in appropriate cases 
in the normal examination of a patent application. The Manual does not have the force 
of law or the force of the rules in Title 37 of the Code of Federal Regulations. 

United States Patent & Trademark Office, Manual of Patent Examining Procedure (Rev. 1, Feb. 2003), 
available at http://www.uspto.gov/web/offices/pac/mpep/mpep_e8rl_front.pdf (emphasis added). 
Moreover, the Court has reviewed MPEP § 608.01(p), and the Court agrees with InterTrust that that 
provision appears only to indicate that the patent examiner should replace an application number with 
the issued patent number. Accordingly, the Court cannot conclude that the error at issue has resulted 
in the nonincorporation of the Big Book application by reference. 


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notwithstanding. Such an approach is not consistent with proper claim construction, which requires 
interpretation of each claim as a whole . Prof. Mitchell's conspicuous failure to apply his test to the 
use of the word in other documents suggests that the test has been generated for selective application 
to InterTrust' s patents. And even more damaging to the test's credibility is Dr. Reiter's testimony 
that application of this test to Microsoft's own patents renders them indefinite. 9 The need to satisfy 
this test thus seems more hypothetical than real. 

Further, as InterTrust correctly points out, the mere fact that persons skilled in the art might 
disagree about the scope of the claims at issue does not render them indefinite. As the Federal 
Circuit has observed, "It may of course occur that persons experienced in a technologic field will 
have divergent opinions as to the meaning of a term, particularly as narrow distinctions are drawn by 

the parties or warranted by the technology But the fact that the parties disagree about claim 

scope does not of itself render the claim invalid." Verve, LLC v. Crane Cams. Inc.. 31 1 F.2d 1116, 
1120 (Fed. Cir. 2002). 

Nor are the claims at issue indefinite because they use a term that requires an evaluation of 
the context in which it is used or describes a range of circumstances. On this score the Federal 
Circuit's reasoning and holding in Orthokinetics. Inc. v. Safety Travel Chairs. Inc.. 806 F.2d 1565 
(Fed. Cir. 1986), discussed by InterTrust in its opposition brief and at the hearing, demonstrate that 
Microsoft's concerns are overstated. In Orthokinetics . the Federal Circuit considered whether the 
term "so dimensioned" from the following claim language was indefinite: "In a wheel chair having 
a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front 
leg portion is so dimensioned as to be insertable through the space between the doorframe of an 

9 Microsoft does not respond in its reply brief to Dr. Reiter's testimony about how application 
of Prof. Mitchell's ten-variable test to several of Microsoft's own patents renders them indefinite. 
(Microsoft's counsel s assertion at oral argument that Microsoft did address this point in its reply brief, 
(Tr, 307:15-23), is inaccurate.) At oral argument, however, Microsoft's counsel sought to refute this 
testimony by arguing that the '671 patent (one of the two patents asserted by Microsoft) expressly 
defines something to be "secure" as when it is digitally signed. (Tr. 287:22-288:3.) Whatever the 
merits of this argument, it does not contradict Dr. Reiter's testimony that five other patents held by 
Microsoft would be indefinite if Prof. Mitchell's test were applied to them. (Decl. of Dr. Michael Reiter 
in Opp. to Indefiniteness Mot. and in Supp. of InterTrust' s Cross-Motion for Summ. J. Ex. D, cited in 
InterTrust's Indefiniteness Opp. Br. at 8.) The significance of this testimony is that it undermines the 
credibility of Prof. Mitchell's ten-variable test as representing the perspective of a person of ordinary 
skill in the art of computer security. 


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automobile and one of the seats thereof "Id. at 1568 (emphasis added). The district court had 

concluded that "so dimensioned" was indefinite because a potential competitor would have to 
construct a model of a travel chair and test the model on a variety of automobiles before the 
competitor could determine whether it infringed the patent. See id. at 1575. The Federal Circuit 
reversed, reasoning: 

It is undisputed that the claims require that one desiring to build and use a travel chair 
must measure the space between the selected automobile's doorframe and its seat and 
then dimension the front legs of the travel chair so they will fit in that particular space 
in that particular automobile. Orthokinetics' witnesses, who were skilled in the art, 
testified that such a task is evident from the specification and that one of ordinary skill 

in the art would easily have been able to determine the appropriate dimensions 

That a particular chair on which the claims read may fit within some automobiles and 
not others is of no moment The phrase "so dimensioned" is as accurate as the subject 
matter permits, automobiles being of various sizes. As long as those of ordinary skill in 
the art realized that the dimensions could be easily obtained, [35 U.S.C.] § 112, 2d % 
requires nothing more. The patent law does not require that all possible lengths 
corresponding to the spaces in hundreds of different automobiles be listed in the patent, 
let alone that they be listed in the claims. 

Id. at 1 576 (citations omitted). 

Similarly, Microsoft has failed to demonstrate that a person of ordinary skill in the art would 
be unable to determine from the language of the claims and the specifications whether a device 
might be secure in a sense contemplated by the claims at issue. For example, Microsoft, citing STX. 
Inc. v. Brine. Inc. . 37 F. Supp. 2d 740 (D. Md. 1999), affdon other grounds. 211 F.3d 588 (Fed. 
Cir. 2000), contends that secure is indefinite to the extent that it is defined with reference to the 
commercial purpose for which it is intended to be used. (Microsoft's Indefiniteness Reply Br. at 
12.) Microsoft argues that if one of ordinary skill in the art would have to infringe the patent claim 
to discern the boundaries of the claim, the claim must be indefinite. (Id. at 12-13.) 

The Court agrees with the general proposition that Microsoft advances. But Microsoft, 
which bears a heavy burden to demonstrate indefiniteness, has failed to offer sufficient evidence that 
a person of ordinary skill in the art could not discern what would be considered "secure" for a given 
commercial purpose. Its unsupported assertion in its reply brief that "a person of skill in the art 
cannot possibly know what a particular customer, market or market niche will deem sufficiently 
'secure' until after it has sold the product," (id. at 12), is no substitute for evidence to this effect. 
Nor is its effort to distinguish Orthokinetics availing: That Orthokinetics involved measurement of a 

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one-dimensional variable," namely length, (see kL), does not demonstrate that persons of ordinary 
kill in the art of computer security cannot effectively "measure" several variables. In addition, the 
ict that "secure" is subjective, in contrast to the clearly objective variable of length, (see kL), does 
ot mean that a person of ordinary skill in the art cannot determine whether or not something is 
ecure within the context that the term is used. The Court is also unaware of any principle in patent 
iw that all operative claim terms must be measurable by some objective standard, and Microsoft 
ioes not advance any authority in support of such principle. In sum, it is not self-evident that 
►otential designers of computer security systems are incapable of accurately assessing the 
ommercial purposes for which their systems would be utilized to determine whether these systems 
ire secure within the meaning of the claims at issue and, therefore, whether they infringe them. In 
he absence of clear and convincing evidence that a person of ordinary skill in the art would be 
inable to perform this task successfully, the Court cannot conclude that the claims at issue are 
ndefinite. 

Were Microsoft not to bear the burden of proving indefiniteness by a clear-and-convincing 
;videntiary standard, resolution of the Indefiniteness Motion might present a closer call. But such is 
lot the case here. There is no clear and convincing evidence that InterTrust's claims are invalid as 
ndefinite to the extent they contain the term secure. The Court thus DENIES the Indefiniteness 
VIotion with regard to the term secure. 

2. Protected Processing Environment (?TE) and Host Processing 
Environment (HPE) 

Microsoft contends that the terms protected processing environment ("PPE") and host 
processing environment ("HPE") do not have an ordinary or customary meaning inside or outside of 
the computing world. (Microsoft's Indefiniteness Opening Br. at 15.) Microsoft notes that 
InterTrust's expert Dr. Reiter testified that a person of ordinary skill in the art would not know what 
these terms meant in 1995. (IdL at 16.) Citing J.T. Eaton & Co. v. Atlantic Paste & Glue Co. , 106 
F.3d 1563, 1570 (Fed. Cir. 1997), Microsoft contends that because a person of ordinary skill in the 
art would not understand these terms, it was InterTrust's duty to supply a precise meaning for these 
terms. (1<L at 15; see also Microsoft's Indefiniteness Reply Br. at 10.) Microsoft asserts that neither 

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the claims nor the specification provides sufficient description of PPE or HPE to inform a person of 
ordinary skill in the art what these terms mean. (Microsoft's Indefiniteness Opening Br. at 16-19.) 

InterTrust responds that, with regard to PPE, the specification provides detailed descriptions 
of the key terms on which PPE is based (i.e.. secure processing environment ("SPE") and HPE), and 
therefore PPE is sufficiently defined. (See InterTrust' s Indefiniteness Opp. Br. at 22.) InterTrust 
also points to the various figures in the specification, spread out over dozens of pages, that relate to 
PPE. (Id.) InterTrust further cites to the Declaration of Dr. Michael Reiter in Opposition to 
Microsoft's Motion for Summary Judgment and in Support of InterTrust' s Cross-Motion for 
Summary Judgment (the "Reiter Indefiniteness Declaration"), which provides excerpts from the 
relevant specifications. Q± (citing Reiter Indefiniteness DecL ffl 39-40, Ex. G).) Finally, 
InterTrust rejects Prof. Mitchell's finding PPE indefinite based on application of his ten-variable 
test. (Id.) As for HPE, InterTrust contends that Microsoft has disingenuously claimed an absence of 
description in the specification: InterTrust asserts that the terms host processing environment and 
HPE are used interchangeably; even though the term host processing environment does not 
frequently appear in the specification, HPE does, along with extensive descriptions. (Id. at 23.) 

The potential indefiniteness of these two terms was not addressed at the mini -Markman 
hearing, but the Court is comfortable resolving the issue on the papers. At the outset, Microsoft's 
citation to J.T. Eaton & Co, v. Atlantic Paste & Glue Co.. 106 F.3d 1563, 1570 (Fed. Cir. 1997), is 
inapposite. J.T. Eaton has nothing to do with invalidity for indefiniteness, and the cited portion 
describes merely the patent applicant's obligation to define a coined term precisely in prosecuting its 
application. See id. at 1 568, 1 570. Perhaps under J.T. Eaton InterTrust was required to define PPE 
and HPE when it was prosecuting its applications for the patents-in-suit, but the Federal Circuit's 
holding therein does not alter Microsoft's burden to provide clear and convincing evidence of 
indefiniteness. 

Microsoft has failed to carry that burden with regard to PPE and HPE. Microsoft itself 
recognizes that PPE is described to be an SPE and/or an HPE. (Microsoft's Indefiniteness Opening 


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Br. at 19 (quoting '193 patent at 105: 18— 21).) 10 Contrary to Microsoft's assertion, this definition by 
reference is not inherently an unhelpful exercise; it is fruitless only if the incorporated terms are 
themselves indefinite. Since Microsoft does not contest the clarity or definiteness of SPE, the Court 
examines only the definiteness of HPE. The Court discusses the proper construction of HPE infra. 
but in the meantime, it is sufficient for the Court to conclude that Microsoft has failed to provide 
clear and convincing evidence of indefiniteness. Microsoft's evidence pertaining to HPE, aside 
from evidence that HPE did not have a meaning known by a person of ordinary skill in the art, 
consists essentially of a few references to the '900 patent specification. (Id) 11 But the Court agrees 
with InterTrust that the description of HPEs in the portion of the '193 patent specification that it 
cites, ('193 patent at 79:23-83:9), as well as the various figures referenced therein, (e.g.. '193 patent ' 
Fig. 10), provide sufficient meaning to the term HPE to survive an indefiniteness challenge. 

Were InterTrust now applying for the relevant patents-in-suit, and were the Court the PTO ? 
the Court might require InterTrust to provide greater precision in defining PPE and HPE. But the 
parties are now before the Court on Microsoft's challenge to the relevant claims' validity, and thus 
Microsoft bears a heavy burden if its motion is to succeed. In presenting its arguments regarding 
PPE and HPE, Microsoft appears inclined to shift the burden to InterTrust to defend the validity of 
its claims. But the burden remains with Microsoft, and Microsoft has failed to put forward sufficient 
evidence to carry its burden. Accordingly, the Court DENIES the Indefiniteness Motion with regard 
to the terms PPE and HPE. 
/// 
/// 
/// 

10 Microsoft evidently considers this definition problematic: "This [definition] invariably leaves 
the relevant public guessing at what might infringe" Q4) The Court disagrees. Obviously, if PPE is 
defined to include both SPEs and HPEs, for any embodiment that includes an SPE and/or an HPE and 
that has other features on which the relevant claim limitations read, the relevant claim is infringed. 
Thus, for example, the element in 683.2 that provides in part, "a protected processing environment at 
least in part protecting information . . " encompasses SPEs and/or HPEs; the public need not guess 
between SPEs and HPEs, because PPE is defined to include both. 

11 The Court previously struck the testimony of Enviyio's and America Online's corporate 
designees, cited by Microsoft in its Indefiniteness Opening Brief. 


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B. Construction of Claims at Issue 

1. Terms and Phrases for Which Microsoft Did Not Brief Its Position 

Out of the thirty terms and phrases selected by the parties for construction, Microsoft elected 
not to present any argument in its 40-page Markman brief in support of its positions or in opposition 
to InterTrust's positions on thirteen terms and phrases. These terms and phrases, along with the 
claims in which they appear, are: 

1. aspect (683.2, 861.58, 900.155, 912.8) 

2. authentication (193.15) 

3. budget (193.1) 

4. clearinghouse ( 1 93 . 1 9) 

5. compares (900.155) 

6. derive (900.155) 

7. designating (721.1) 

8. device class (721.1) 

9. digital signature/digitally signing (72 1 . 1 ) 

10. digitally signing a second load module with a second digital signature different from 
the first digital signature, the second digital signature designating the second load 
module for use by a second device class having at least one of tamper resistance and 
security level different from the at least one of tamper resistance and security level of 
the first device class (721.1) 

1 1. executable programming/executable (721.34, 912.8, 912.35) 

12. identifying at least one aspect of an execution space required for use and/or execution 
of the load module (912.8) 

13. securely applying, at said first appliance through use of said at least one resource said 
first entity's control and said second entity's control to govern use of said data item 
(891.1) 

At the mini- Markman hearing the Court stated its disinclination to hear oral argument regarding any 
of these thirteen terms and phrases. The Court reasonably concluded that Microsoft made a decision 

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not to dispute or oppose InterTrust* s proposed constructions of these terms and phrases given (1) the 
number of terms Microsoft declined to address; (2) the importance of written argumentation for the * 
mini- Markman proceeding; and (3) the fact that InterTrust did address every term and phrase at 
issue. 12 

The Court has reviewed all of InterTrust's briefing on these terms and phrases and finds 
InterTrust's arguments in support of its relevant positions sound and persuasive. In light of this 
finding, and given the absence of argument for Microsoft's positions, the Court now adopts 
InterTrust' s proposed constructions for all thirteen of these terms and phrases, other than "budget" 
and "securely applying . . . said data item." 13 

Aside from the Court's adoption of InterTrust's proposed constructions, the Court wishes to 

make clear that Microsoft's failure to brief these terms and phrases has serious implications. 

Microsoft has chosen to dispute these terms and phrases, and it has supplied the Court with proposed 

constructions. In so doing, Microsoft's attorneys are bound to comply with Rule 1 1 (b), which 

provides in pertinent part: 

By presenting to the court (whether by signing, filing, submitting, or later advocating) 
a pleading, written motion, or other paper, an attorney or unrepresented party is 
certifying that to the best of the person's knowledge, information, and belief, formed 
after an inquiry reasonable under the circumstances, . . . the allegations and other 
factual contentions have evidentiary support or, if specifically so identified, are likely 
to have evidentiary support after a reasonable opportunity for further investigation or 
discovery 

Fed. R. Civ. P. 1 1(b). Thus, by asserting that the terms and phrases at issue should be defined as 
proposed by Microsoft, Microsoft's attorneys are representing to the Court that these terms and 
phrases have evidentiary support. Microsoft's failure now to provide any discussion whatever on 
these terms and phrases in its Markman brief arguably suggests that Microsoft's attorneys never had 


12 Microsoft has no excuse for failing to provide briefing on these terms and phrases. That 
InterTrust was able to present in its Markman brief cogent arguments on all thirty terms and phrases, 
as well as the global construction of "virtual distribution environment," see infra, demonstrates that the 
40 pages that the Court granted Microsoft to brief its positions were sufficient to address all terms and 
. phrases in dispute. 

13 The Court excepts these two terms and phrases because Microsoft did brief terms and phrases 
closely related to these two terms, namely the phrase "a budget specifying the number of copies which 
can be made of said digital file" and the term "secure." 


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• 


sufficient factual basis on which to dispute InterTrust's proposed constructions and to offer their 
own constructions. 

The Court takes this implication very seriously. The Court has expended substantial time 
and effort on this case. While the Court fully expects that a case of this complexity will require 
substantial resources and therefore is ready and willing to commit those resources to achieve a 
proper resolution of this matter, the Court is not willing to waste its time attempting to resolve issues 
that are not disputed in good faith. Thus, if Microsoft's counsel did not deem Microsoft's positions 
on the thirteen terms and phrases sufficiently important or well-founded to brief, they should not 
have presented them to the Court for consideration in the first place. Microsoft and its counsel are 
hereby admonished not to waste the Court's time in this or any similar way in the future. 

Accordingly, the Court CONSTRUES the following terms and phrases as set out below. 

a. Aspect 

"Aspect" means: "Feature, element, property, or state." 

b. Authentication 

"Authentication" means: "Identifying (e.g.. a person, device, organization, document, file, 
etc.). Authentication includes uniquely identifying or identifying as a member of a group." 

c. Clearinghouse 

"Clearinghouse" means: "A provider of financial and/or administrative services for a 
number of entities; or an entity responsible for the collection, maintenance, and/or distribution of 
materials, information, licenses, etc." 

d. Compares 

"Compares" means: "Examines for the purpose of noting similarities and differences." 

e. Derive 

"Derive" means: "Obtain, receive, or arrive at through a process of reasoning or deduction. 
In the context of computer operations, the 'process of reasoning or deduction' constitutes operations 
carried out by the computer." 

f. Designating 

"Designating" means: "Indicating, specifying, pointing out, or characterizing." 

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g. Device Class 

"Device class" means: "A group of devices which share at least one attribute." 

h. Digital Signature/Digital Signing 

"Digital signature" means: "A digital value, verifiable with a key, that can be used to 
determine the source and/or integrity of a signed item (e.g., a file, program, etc.)-" "Digitally 
signing" is the process of creating a digital signature. 

i. Digitally signing a second load module with a second digital 
signature different from the first digital signature, the second 
digital signature designating the second load module for use bv a 
second device class having at least one of tamper resistance and 
security level different from the at least one of tamper resistance 
and security level of the first device class 


"Digitally signing a second load module with a second digital signature different from the 

first digital signature, the second digital signature designating the second load module for use by a 

second device class having at least one of tamper resistance and security level different from the at 

least one of tamper resistance and security level of the first device class" means: 

Generating a digital signature (i.e., a digital value, verifiable with a key, that can be 
used to determine the source and/or integrity of a signed item (e.g., a file, program, 
etc.)), for the second load module, the digital signature designating ( i.e.. indicating, 
specifying, pointing out, or characterizing) that the second load module is for use by 
a second device class (i.e., a group of devices which share at least one attribute). The 
second device class must have a different tamper resistance (defined infra ) or security 
level than the first device class. 

j. Executable Programming/Executable 

"Executable programming" and "executable" mean: "A computer program that can be run, 

directly or through interpretation." 

k. Identifying at least one aspect of an execution space required for 
use and/or execution of the load module 


"Identifying at least one aspect of an execution space required for use and/or execution of the 
load module" means: "Identifying an aspect (i.e.. a feature, element, property, or state) of an 
execution space that is needed in order for the load module to execute or otherwise be used." 
2. Remaining Terms and Phrases for Construction 

Microsoft provided briefing on 17 of the 30 terms and phrases, as well as the issue of 

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whether the term virtual distribution environment should be read into every claim at issue. 
Nevertheless, as the Court informed the parties at the mini- Markman hearing, the Court's 
consideration of most of Microsoft's arguments has been substantially hampered by Microsoft's 
persistent failure to provide evidentiary and legal citations in support of these arguments. Page after 
page of Microsoft's Markman Brief contains bold assertions about the meaning of certain claim 
terms that have few supporting authorities, and the authorities that do appear generally do not 
provide support for the dispositive arguments that Microsoft is asserting. (E.g.. Microsoft's 
Markman Br. at 37, 39-40.) Without such evidentiary or legal citations, the Court has little basis to 
credit Microsoft's assertions. 

Microsoft cannot reasonably contend that the 40 pages it was allocated for its Markman brief 
was insufficient for it to provide such citations, as InterTrust was able to present all of its pertinent 
arguments with adequate supporting citations in the 40 pages it was allocated for its opening 
Markman brief. Nor can Microsoft reasonably expect the Court to comb through Microsoft's 
voluminous submissions to locate authority that might support its specific assertions where 
Microsoft has failed to refer the Court to specific pages and passages in those submissions. Nor 
could Microsoft reasonably expect to be able to raise new arguments or cite to new authorities for 
the first time at the mini- Markman hearing, other than to respond to arguments or authorities 
appearing for the first time in InterTrust's reply brief. As far as the Court is concerned, the 
persuasiveness of an argument in support of a proposed construction is in direct proportion to the 
authorities on which it is premised. Necessarily this means that an argument that lacks appropriate 
supporting citations is no argument at all Thus, Microsoft cannot be heard to complain that the 
Court has not adequately considered its arguments where these arguments are insufficiently 
supported by citations to evidentiary and/or legal authorities. 

With the foregoing in mind, the Court turns to its consideration of the 17 terms and phrases 
briefed by Microsoft, the two terms and phrases not construed above, and the "global construction" 
of virtual distribution environment asserted by Microsoft. 

a. Global Construction of Virtual Distribution Environment (VDE) 

At the outset, there is some uncertainty over Microsoft's position about the global 

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construction of virtual distribution environment ("VDE"). In Exhibit A to the JCCS, Microsoft 

indicates that its position is that each of the seven claims at issue in this mini- Markman proceeding 

should be construed to incorporate a VDE. More specifically, Microsoft states with respect to nine 

of the twelve claims: " Claim as a whole : The recited method is performed within a VDE." (JCCS 

Ex. A at 1 C| 1), 9 <H 14), 1 1 fl 25), 13 (1 38), 20 (f 65), 26 (If 74), 28 fl 81), 36 (H 98), 39 flf 1 10) 

(underscoring in original) (boldface omitted).) Microsoft offers similar pronouncements with 

respect to the remaining three claims. (See ii at 15 51), 24 ft 70), 30 (If 86).) Further, Microsoft 

asserts the following in its Markman brief: 

The claims must be read in light of the entire 900+ page "Big Book" patent application 
and, in particular, its 115 page "Summary of the Invention." This Summary of the 
Invention makes literally hundreds of statements touting the "important," "fundamental," 
"critical," and required features, capabilities and purposes of the "present invention." 
The Summary further defines this "invention" (which it expressly names "VDE") by 
distinguishing it from the allegedly "limited" and rigid solutions of others. All of these 
are required aspects of the "present invention," not merely optional features of a 
"preferred embodiment." As such, the claims must be read to include these "invention" 
features. 

(Microsoft's Markman Br. at 1 (emphasis added).) Microsoft states elsewhere in its Markman brief 
that it "asks the Court to construe each claim as requiring the disclosed 'invention/ as it has been 
distilled in Microsoft's global 'claim as a whole' construction." QcL at 5 (emphasis added).) It 
emphasizes additionally: "[Tjhe claim construction point being made by Microsoft is that all of 
these claims necessarily invoke the required 'features' of the VDE invention.' not that all claims 
require only those features. InterTrust's patent claims are free to recite additional features, which 
additional limitations may (or may not) make them separate 'inventions' under Patent Office 
restriction practice." (Id at 15 (emphasis added).) 

In its Markman briefing InterTrust purports to interpret Microsoft's position, probably as a 
result of these statements, to be that every claim impliedly includes a limitation of VDE— that is, 
there should be a global construction of VDE. ( See, e.g., InterTrust's Opening Markman Br, at 7.) 
Microsoft does not indicate in its Markman brief that InterTrust has mischaracterized its position. 

Based on Microsoft's statements in its Markman brief and JCCS and the fact that Microsoft 
did not take exception to InterTrust's characterization of Microsoft's position, the Court reached the 
same understanding of Microsoft's position that InterTrust purported to reach. At the mini- 

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Markman hearing, however, counsel for Microsoft claimed for the first time that InterTrust had 
mischaracterized its position. According to counsel,. Microsoft was not contending that VDE should 
be read into each claim as a limitation; rather, each disputed claim term should be accorded the 
meaning that it has in the VDE context. (Transcript of Proceedings, Claims Construction Hearing 
("Tr.") 59:2-8.) 

The Court finds Microsoft's position at the mini- Markman hearing to be fundamentally 
different from, and not reasonably supported by, its statements in its written submissions. Microsoft 
repeatedly states in the JCCS that for each claim as a whole, the recited method is performed within 
a VDE. In addition, Microsoft states in its Markman brief that every claim must contain all 
features of a VDE. These pronouncements cannot be interpreted to mean anything other than that 
the scope of each claim is limited by all the features of a VDE. In other words, Microsoft's written 
statements evince the view that even if every express element of one of the claims at issue reads on 
an accused device, that device would still not infringe the claim if the device did not have all the 
features that Microsoft claims to be the hallmark of VDE. If Microsoft wished to advance the 
position that it presented at the hearing, it could have easily done so in its papers by stating that 
"each disputed claim term must be construed in accordance with its meaning in the context of 
VDE." At the very least, it should have alerted the Court in its Markman brief that InterTrust in its 
opening brief had mischaracterized Microsoft's position. Microsoft will not be heard to complain 
that the Court misapprehends its position where it has made affirmative representations to the Court 
about its position and remains silent when InterTrust purports to interpret its position consistent with 
those representations. The Court thus proceeds to consider the parties' arguments with the 
understanding that Microsoft's position is that each claim is limited by all the features of a VDE. 

Microsoft contends that each claim at issue impliedly contains a limitation of VDE, even 
though the term VDE appears in only one of the twelve claims, 900.155, and, then, only in its 
preamble. The proper construction of VDE is addressed infra in Part III.B.2.t. Microsoft's 
argument rests on the apparent fact, which is not contested by InterTrust, that all seven of the 
paten ts-in-suit that are the subject of the mini- Markman proceeding derive from the 900-page "Big 


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Book" patent application submitted to the Patent Office in or about 1995. 14 Microsoft focuses on the 
repeated references to the "invention" and VDE in the specifications of these patents, arguing that 
the claims necessarily contemplate that VDE will be an additional limitation read into all the claims. 

InterTrust disagrees with Microsoft's assertions, making a few key arguments. First, 
InterTrust points out that the eleven claims other than 900.155 contain no limitations relating to 
VDE. Citing a pair of Federal Circuit cases, Amgen Inc. v. Hoechst Marion Roussel Inc.. 3 14 F.3d 
1313 (Fed. Cir. 2003), and Renishaw PLC v. Marposs Societa' Per Azioni. 158 F.3d 1243 (Fed. Cir. 
1998), InterTrust argues that statements in an application regarding the invention cannot be read into 
the claims absent a relevant limitation in the claims themselves. (InterTrust's Opening Markman Br, 
at 9.) Second, citing, inter alia. Amgen. InterTrust argues that it is improper to read into claims a 
limitation from the specification that does not clearly and unambiguously exclude or disclaim certain 
embodiments. (Id at 9-10.) 

Third, InterTrust contends that specification statements about the "invention" do not limit the 
claims if the rest of the specification and file history do not indicate that such a limitation was 
intended; and InterTrust urges that several aspects of the specification and file history contradict an 
importation of VDE into all the claims. (Id at 10-1 L) Specifically, InterTrust points out that the 
PTO held that the Big Book application claimed five separate categories of invention, forcing it to 
restrict its application to one class of inventions to be pursued in the application. (Id at 1 1-13.) 
InterTrust followed the PTO's command, and also filed separate "divisional" applications relating to 
the other categories of inventions pursuant to 35 U.S.C. § 121. 15 (Id at 12.) In addition, InterTrust 
calls the Court's attention to the '876 patent, which is not one of the seven patents-in-suit that are 

14 According to Microsoft, the specification of the '193 patent publishes the Big Book 
specification without any substantive additions, and therefore Microsoft frequently cites to the '193 
specification as a proxy for the Big Book. (Microsoft Markman Br. at 16.) InterTrust states that the 
'193, '891, and '912 have specifications identical to that of the Big Book, and the '900 patent is a 
continuation-in-part and also includes all of the text from the original application. (InterTrust's Opening 
Markman Br. at 12.) 

15 35 U.S.C. § 121 provides in part: "If two or more independent and distinct inventions are 
claimed in one application, the Director [of the Patent and Trademark Office] may require the 
application to be restricted to one of the inventions. If the other invention is made the subject of a 
divisional application which complies with the requirements of section 120 of this title it shall be 
entitled to the benefit of the filing date of the original application." 


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the subject of the mini- Markman hearing but is one of the eleven patents-in-suit asserted by 
InterTrust. InterTrust explains that the '876 patent issued as a direct continuation of the Big Book 
application and, therefore, includes the same specification as the '193 patent, including the same 
statements regarding the "invention" and VDE that Microsoft has cited. (Id at 13-14.) The '876 
patent includes numerous dependent claims adding an express requirement that a process or method 
include a VDE . ( Id. at 14.) These claims, Microsoft maintains, demonstrate that the claims do not 
recite a VDE, since otherwise the inclusion of the term VDE would be redundant. 

Having thoroughly considered the parties' arguments in their papers and the arguments of 
counsel at the hearing, the Court concludes that Microsoft's position must be rejected. The PTO's 
determination that the Big Book application described five inventions is alone dispositive. 16 The 
PTO's decision makes clear that these five inventions are separate, independent, and discrete from 
one another, each capable of existing in the absence of the rest: 

The inventions are distinct, each from the other because of the following reasons: 

2. Inventions of Groups I-V are related as subcombinations disclosed as usable 
together in a single combination. The subcombinations are distinct from each other if 
they shown to be separately usable. In the instant case, invention of Group I has separate 
utility such as protecting executable code from computer viruses. Invention of Group 

II has separate utility such as a computer network administration. Invention of Group 

III has separate utility such as protection of software. Invention of Group IV has 
separate utility such as a contract bidding procedure. Invention of Group V has separate 
utility such as auditing of pay television. 

3. Because these inventions are distinct for the reasons given above and have 
acquired a separate status in the art as shown by their different classification, restriction 
for examination purposes as indicated is proper. 

4. Because these inventions are distinct for the reasons given above and have 
acquired a separate status in the art because of their recognized divergent subject matter, 
restriction for examination purposes as indicated is proper. 


'* The Court clarifies that, in reaching this conclusion, it needs not and does not rely on the 
reasoning of Rambus Inc. v. Infineon Technologies AG, 318 F.3d 1081 (Fed. Cir. 2003), a case of 
superficial apposition cited by InterTrust. In Rambus, the Federal Circuit found that a specific claim 
term should not have been read into the claims of a patent resulting from a divisional application that 
was filed after the PTO found that the original application claimed more than one invention. Rambus, 
however, is readily distinguishable because in that case the PTO specifically identified the claim term 
at issue and expressly defined a divisional category of inventions that excluded that claim term, see id. 
at 1086; the analogy here would be if the PTO had separated the five categories of inventions claimed 
through the Big Book based on whether or not they were limited to a VDE. Such is not the case here, 
and thus the Court does not rely on Rambus in considering the significance of the PTO's ruling on the 
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(JCCS Ex. C at 103 (24(BB) ('193 file history, Sept. 25, 1996 Office Action at 2-3)).) The 
foregoing makes unequivocal that the PTO determined that the Big Book described multiple 
independent inventions, each with separate utility, each with separate subject matter. Given this 
determination, it is impossible to conclude that, as Microsoft maintains, every claim must be read to 
contain all the features of a single "invention," namely the "invention" allegedly described in the 
Big Book application. 

At the hearing counsel for Microsoft invoked Netword. LLC v. Centraal Corp.. 242 F.3d 
1347, 1352 (Fed. Cir. 2001), for the proposition that "claims cannot enlarge what's patented beyond 
what the inventor described as the invention." (Tr. 62:7-10.) Counsel appropriately cited to 
Netword for this principle, 242 F.3d at 1347, and the Court does not disagree with its validity. But 
this general principle is not inconsistent with the conclusion that the Big Book application described 
five independent and discrete inventions and, accordingly, the Court's instant determination that 
each of the claims at issue should not be read to include VDE. As Netword makes clear, the focus is 
on what the inventor described to the PTO as the invention, not what the inventor may have 
subjectively believed to be the invention. Here, the inventors submitting the Big Book evidently 
described five separate inventions. Reading this description and reaching this conclusion, the PTO 
ordered the inventors to restrict their application to one of the five inventions and to pursue 
divisional applications if they so chose. The inventors submitting the Big Book may very well have 
subjectively believed that there was but a single invention, but their subjective beliefs and intent are 
of no moment. 

The Court also finds compelling InterTrust's invocation of the '876 patent. As InterTrust 
notes, the '876 patent issued as a direct continuation of the Big Book application; it includes the 
same specification as the '193 patent. Accordingly, one would expect that Microsoft's "global 
construction of VDE" argument would be equally applicable to construction of the '876 patent. 
Indeed, as Microsoft argues in its Markman brief, "related patents should be construed consistently." 
(Microsoft's Markman Br. at 16.) Yet several of the claims in the '876 patent, including claims 10 
through 14, expressly contain a VDE limitation. If, as Microsoft asserts, VDE should be implicitiy 
read into all claims within all patents directly derived from the Big Book application, these claims' 

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sxpress VDE limitation appears redundant and nonsensical. 17 

Still further, much of Microsoft's theory for construing all the claims at issue to incorporate 
Microsoft's conception of VDE rests on conclusory reasoning. For example, Microsoft contends in 
its Markman brief: 

Contrary to IriterTrust's position (InterTrust Br. at 8:9-10), all four '193 Patent 
mini- Markman claims concern the distribution and protection of digital content, and 
contemplate multiple nodes and participants. Information is received (possibly from 
multiple upstream content providers), then stored on a device having unspecified 
authorized and unauthorized users, and then conditionally transferred to another device 
having unspecified users. The claims promise to control three forms of unauthorized use 
of this distributed content: copying, distributing (to the second device), and storing (on 
the first and/or second device): 

"if said copy control allows at least a portion of said digital file to be copied and 
stored on a second device...." (*193 321:10-1 1) 

"determining" or "determine" "whether said digital file may be copied and stored 
on a second device ...." ('193 321:7-9) 

This claim language (e.g., "if... allows," "determining whether'') is not qualified. 
It implies that if the copying and storing, are not allowed, then they are prevented (see 
Reiter Depo. at 174:1-178:11), no matter what effort may be made to take the 
unauthorized action. In other words, these claims imply that their "controls" are 
effective in the face of the attacks identified in the Big Book. 

(Microsoft's Markman Br. at 16-17.) As InterTrust correctly notes in its reply, nothing that 
Microsoft has cited to the Court indicates that the claims require multiple upstream content 
providers, multiple users of the first device, or multiple users of the second device. (InterTrust' s 
Reply Markman Br. at 8.) Moreover, nothing in the language from the '193 patent specification 


17 At the hearing Microsoft objected to the introduction of the text of the '876 patent in 
connection with the construction of the claims at issue. Microsoft contended that the '876 patent 
constitutes extrinsic evidence that should not be considered unless the Court finds the claim terms 
ambiguous. (Tr. 68:6-22.) 

This objection is untimely. Microsoft had fair notice from InterTrust's Markman briefs that 
InterTrust was relying on the '876 patent, and it had ample opportunity to file objections to evidence 
prior to the hearing (as InterTrust did), yet Microsoft declined to do so. At any rate, to the extent that 
consideration of the '876 patent is appropriate only if the Court finds the claim terms ambiguous, this 
condition has been met: notwithstanding Microsoft's last-minute attempted about-face in its "global 
construction of VDE" position, the Court has construed that position to be that each claim must be read 
as containing a limitation of VDE, and this position presents an ambiguity — that each claim must 
implicitly contain a limitation not explicitly stated. Finally, Microsoft has effectively waived this 
objection by affirmatively arguing that related patents must be construed consistently. Accordingly, the 
Court OVERRULES this objection. 


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cited above implies that "if the copying and storing are not allowed, then they are prevented . . . , no 
matter what effort may be made to take the unauthorized action." The Court has also read the cited 
portion of Dr. Reiter's deposition testimony, and if fails to understand how this testimony supports 
this proposition. Nor does the language quoted from the ' 193 patent specification imply that the 
claims' '"controls' are effective in the face of the attacks identified in the Big Book." 

Finally, as an intuitive and legal matter, the Court is wary of reading into claims a limitation 
that is not expressly there. As InterTrust correctly notes, "[specifications teach. Claims claim." 
SFI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1 107, 1 121 n.14 (Fed. Cir. 1985). With its 
global construction argument, Microsoft is not asking for construction of a term; it is asking for 
wholesale importation of a term that is present in only one of the claims at issue. In the absence of 
substantial justification for Microsoft's position, the Court is disinclined to take such a drastic step. 
See Comark Communications. Inc. v. Harris Corp., 156F.3d 1182, 1186-87 (Fed. Cir. 1998) 
(holding improper reading into claims a limitation appearing only in the specification). 

For all of these reasons, the Court CONSTRUES the claims at issue as not impliedly 
incorporating the features of a VDE as a limitation, 
b. Budget 

InterTrust asserts that its proposed construction of the term "budget" (appearing in 193.1), 
"information specifying a limitation on usage," reflects the plain English meaning of the word. 
(InterTrust's Opening Markman Br. at 16.) In contrast, Microsoft's proposed construction of budget 
requires it to be a unique type of "method" that specifies a decrementable numerical limitation on 
future use, where "use" is defined separately. InterTrust assails Microsoft's proposal by citing 
examples in the specification where the terms "budget" and "BUDGET method" are used separately 
and arguing that, in light of these examples, budget cannot imply a method without being 
nonsensical (See kL) InterTrust also portrays Microsoft's definition as being based on the 
preferred embodiment in the patent, and it argues that reading limitations from preferred 
embodiments in specifications into claims contravenes appropriate claim construction practice. 
(See id at 16-17 (citing Laitram Com, v. Cambridge Wire Cloth Co.. 863 F.2d 855, 865 (Fed. Cir. 
1988)).) InterTrust further adds that there is no basis in the specification to read into the definition 

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hat budget must be a decrementable numerical limitation. (Id. at 17.) 

In its Markman brief, Microsoft does not present any arguments for the term budget, 
ilthough it discusses the larger phrase "a budget specifying the number of copies which can be made 
Df said digital file." (Microsoft's Markman Br. at 38-39.) Its discussion of this phrase is very brief, 
however: it asserts only that its construction of this phrase, which incorporates the term budget, 
answers the questions "can be made since when?" or "by whom?" or "by what?" (Id) 

Given Microsoft's failure to advance any argument specifically directed to its proposed 
definition of the term budget, the Court has no basis to adopt Microsoft's position. Moreover, the 
Court finds InterTrust's proposed definition of budget to be reasonable and its criticisms of 
Microsoft's proposal to be cogent and compelling. Accordingly, the Court adopts InterTrust's 
proposal and CONSTRUES the term "budget" to mean: "Information specifying a limitation on 
usage." 

c. A budget specifvine the number of copies which can be made of 
said digital file 

InterTrust's proposed definition of the phrase "a budget specifying the number of copies 
which can be made of said digital file" (193.1) uses the normal English meanings of the words, but it 
incorporates the separately defined terms budget and copies, (InterTrust's Opening Markman Br. at 
21.) Microsoft's definition of the phrase incorporates the term budget, requires the budget to state 
'the total number of copies (whether or not decrypted, long-lived or accessible)," and requires that 
"[n]o process, user, or device is able to make another copy of the Digital File once this number of 
copies has been made." InterTrust criticizes the requirement that the budget state the total number 
of copies as unsupported by the claim term and as nonsensical. (Id.) InterTrust also contends that 
the requirement that no process, user, or device be able to make another copy of the digital file once 
the specified number of copies have been made, is inconsistent with the specification. (14) 
Microsoft responds only by claiming that its construction answers the questions "can be made since 
when?" or "by whom?" or "by what?" (Microsoft's Markman Br. at 38-39.) 

The Court has no basis to adopt Microsoft's proposal. Microsoft does not explain why it is 
necessary to read into claims utilizing this phrase a limitation addressing when, by whom, or by 

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what copies can be made of a digital file. No reason is evident. By contrast, InterTrust's definition 
is commonsensical. Accordingly, the Court adopts InterTrust's definition and CONSTRUES the 
phrase "a budget specifying the number of copies (defined infra) which can be made of said digital 
file" to mean: "a budget (i.e.. information specifying a limitation on usage) stating the number of 
copies that can be made of the digital file referred to earlier in the claim." 
d. Component Assembly 
The parties agree that "component assembly 5 * (912.8, 912.35) has no ordinary meaning in the 
art. InterTrust's proposed definition is "two or more components associated together," where 
components "are code and/or data elements that are independently deliverable"; InterTrust explains 
that component assemblies "are utilized to perform operating system and/or applications tasks." 
Microsoft proposes a definition that is extremely lengthy — far too long to be suitable for 
reproduction here. 

InterTrust asserts that its proposed construction "is taken directly from the manner in which 
the term is used in the specification and file history." (InterTrust's Opening Markman Br. at 38.) It 
cites to examples in the relevant specifications. (Li (citing JCCS Ex. C at 18 (6(A) ('193 patent at 
83:12-26), 6(B) ('193 patent at 83:43-48)), 21 (6(K) ('912 patent file history, Sept. 22, 1998 Office 
Action at 2-3))).) InterTrust argues that certain limitations that Microsoft reads into its proposed 
construction are preferred embodiments, not claim elements, and this practice is improper. (IdJ It 
further argues that Microsoft's proposed limitation that a component assembly be assembled and 
executed in a "Secure Processing Environment" is directly contradicted by the specification, which 
states that this condition is merely an option. (Id. at 38-39.) 

Microsoft's sole argument is that the only type of "component assembly" mentioned in the 
Big Book is the kind identified in Microsoft's proposed construction, and therefore this construction 
should be adopted. (Microsoft's Markman Br. at 36.) Microsoft, however, provides no citations in 
support of the assertion that component assembly is "uniformly" used in the Big Book to refer to 
executable components, (Id.) In its reply, InterTrust allows that it "did not intend to leave open the 
possibility that a component assembly might include no programming." (InterTrust's Reply 
Markman Br. at 21.) Accordingly, InterTrust states that it "is willing to amend the third sentence of 

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its proposed construction to read as follows: Component Assemblies must include code, and are 
utilized to perform operating system and/or applications tasks.'" (Id.) 

Regardless of what the Big Book says, the relevant specifications clearly contradict 
Microsoft's proposed construction. Moreover, Microsoft fails to provide support for all of the 
features of its proposed definition. InterTrust's definition, as amended above, is well-supported and 
reasonable, and the Court adopts it Accordingly, the Court CONSTRUES "component assembly" 
to mean: "Two or more components (i.e.. code and/or data elements that are independently 
deliverable) associated together. Component assemblies must include code, and are utilized to 
perform operating system and/or applications tasks." 

e. Contain 

The key dispute between the parties is whether "contain" (683.2, 912.8, 912.35) implies that 
something has within it an actual element (Microsoft's proposal), or whether it may contain either an 
element or a reference to the element (InterTrust's proposal). InterTrust's proposed construction is 
based on the plain English meaning of contain. (InterTrust's Opening Markman Br. at 27.) 
InterTrust further argues that its construction is consistent with the relevant specifications, which 
explicitly state that a container may "contain" items "without those items actually being stored 
within the container." OsL at 28 (citing JCCS Ex. C at 22 (7(B) ('193 patent at 58:48-58))).) 
Microsoft responds in its Markman brief that such items must actually be stored in a container 
because Dr. Reiter testified that he could not think of any non-empty digital file that does not 
contain linked and/or embedded items, and thus all digital files would qualify as containers. 
(Microsoft's Markman Br. at 39.) 

InterTrust's argument is persuasive: the language from the specifications is clear — contain 
includes having references. Accordingly, the Court adopt's InterTrust's proposal and CONSTRUES 
"contain" to mean: "To have within or hold. In the context of an element contained within a data 
structure (e.g., a secure container), the contained element may be either directly within the container 
or the container may hold a reference indicating where the element may be found." 

f. Control (n.) 

InterTrust's proposed definition of the term "control" (n.) (193.1, 193.1 1, 193.15, 193.19, 

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683.2, 891.1) relies primarily on the plain English definition of the word and on the specifications. 
( See InterTrust's Opening Markman Br. at 17-19.) The specifications, according to InterTrust, 
equate control with "control information," and it provides examples of these terms that include both 
data and executable files. (Id. at 17-18.) InterTrust also cites to excerpts from the '193 and related 
file histories that suggest that a control can be a data file. (Id. at 18.) InterTrust assails Microsoft's 
proposed definition for requiring a control to be executable (see infra) , noting that the specifications 
demonstrate that a control can be data, which are not executable. (Id.) InterTrust also criticizes 
Microsoft's proposal for requiring a secure processing environment ("SPE"), contending that the 
patents make clear that requiring an SPE is but a limitation in a particular embodiment, and the 
patents disclose an alternate embodiment known as a host processing environment. (Id.) InterTrust 
adds that Microsoft's requirement that control implies the ability to modify controls is but a 
preferred embodiment, and in any event it is a capability provided by a particular operating system 
described in the specification, (Id.) Finally, InterTrust objects to Microsoft's apparent application 
of the general definition of control to the term "user control," which, InterTrust argues, was on the 
parties' initial list of claim terms to be construed for the mini- Markman proceeding but was not 
selected. (Id, at 18—19.) 

Microsoft proposes an extraordinarily lengthy definition of control that reflects the alleged 
use of the term in the Big Book. First, it argues that control can be explained with an analogy to a 
rare books library holding valuable texts, where each type of access is controlled by a different set of 
rules, such as a particular type of guard performing a particular function. (Microsoft's Markman Br. 
at 37.) Once again, Microsoft provides no citations in support of this proffered analogy. (Id,) 
Second, Microsoft refers to the Big Book, suggesting that the sense in which "control" is used 
therein should be applied to the claims at issue. (Id. at 37-38.) Third, Microsoft assails InterTrust's 
argument that "rules and controls" are equated with "control information," pointing out that the 
patent specifications distinguish between rules and controls, such as by using the phrase "rules 
and/or controls." (IdL at 38.) 

InterTrust's arguments are generally well-supported and convincing. Microsoft's are not. 
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declined to take the time to provide any citations in support of it, nor will the Court accept counsel's 
entreaty at the hearing to divine an evidentiary basis from the sparse citations in the 36 pages 
appearing in Microsoft's brief before this analogy, (see Tr. 78:2-12). As for Microsoft's reliance on 
the Big Book, Microsoft's quotations of excerpts from the specifications demonstrate only that a 
control may be executable; they do not demonstrate that a control may not be non-executable. (See 
Microsoft's Markman Br. at 37-38.) Given that InterTrust's proposed construction allows for both 
executable and non-executable programming, this evidence is fully consistent with InterTrust's 
proposed definition. 

Microsoft's only point that merits attention — a point criticizing InterTrust's proposal, not 
supporting Microsoft's — is its attempt to distinguish between rules and controls, and thereby its 
attempt to distinguish control and control information, by invoking the specifications' references to 
"rules and/or controls." These references to rules and controls both in the conjunctive and 
disjunctive may well seem to suggest that rules are distinct from controls, and thus controls cannot 
be equivalent to control information if, as InterTrust urges, control information is also equivalent to 
rules. Nevertheless, the evidentiary support cited by InterTrust is sufficient to overcome the Court's 
concerns. In particular, the specification for the '193 patent clearly uses control and control 
information interchangeably, (see JCCS Ex. C at 24 (8(C)) ('193 patent at 129:52-60)), and the file 
histories of the '193 patent and the '683 patent demonstrate that control is used to mean data, (id. 
Ex. C at 3 1-32 (8(W)), 32 (8(X)), 33 (8(AA))). InterTrust has thus established that control is 
equivalent to control information. That is the key to the Court's resolution of this issue: once this 
identity is established, the remaining evidence cited by InterTrust provides ample support for its 
position. The Court need not resolve whether "rule" has a meaning independent from control. Even 
if the Court were to attempt to do so, Microsoft does not provide any evidence as to what that 
independent meaning might be; its assertion that u [i]n the Big Book's usage, a 'rule' need not be 
executable, but a 'control' must be," is bereft of supporting citations. Without such evidence, the 
Court cannot ascribe to the phrase "rules and/or controls" a significance that would call into 
question the aptness of InterTrust's proposal. 

Accordingly, the Court adopt's InterTrust's proposed definition and CONSTRUES "control" 

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(n.) to mean: "Information and/or programming controlling operations on or use of resources (e.g., 
content) including (a) permitted, required, or prevented operations, (b) the nature or extent of such 
operations, or (c) the consequences of such operations." 

g. Controlling, Control (v.) 

InterTrust asserts that "control" (v.) (193.1, 861.58) does not have any special meaning in the 
specifications. (InterTrust's Opening Markman Br. at 21 .) Its proposed construction is based on the 
plain English meaning of the word: "to exercise authoritative or dominating influence over; direct." 
InterTrust criticizes Microsoft's proposed construction as being unduly lengthy and complex, for 
having no basis in the specification, and for having a particular limitation (the requirement of a VDE 
SPE) that is actually contradicted by the specifications. (Id, at 22.) Microsoft faults InterTrust's 
proposed construction as being vague and for promising only "influence" that is inconsistent with 
the high degree of protection that "the Blue Book promises the owners of content entrusted to 
VDE." (Microsoft's Markman Br. at 39.) Microsoft also advances an argument about "arbitrary 
granularity" that is difficult to comprehend. (Id.V 8 

InterTrust's proposed construction is consistent with the specifications. Microsoft's 
proposed construction does not appear to have any support in the specifications and actually 
contradicts them. Microsoft's reliance on the supposed promises regarding VDE contained in the 
Big Book is undercut by the PTO's determination that the Big Book described multiple inventions. 
Accordingly, the Court adopts InterTrust's sound proposal and CONSTRUES "control" (v.) to 
mean: "To exercise authoritative or dominating influence over; direct" 

h. Controlling the copies made of said digital file 

The phrase "controlling the copies made of said digital file" (193.1) appears as part of a 
slightly longer clause in 193.1: "and said at least one copy control controlling the copies made of 


18 Specifically, Microsoft states that "'controlling' in this 'invention' is done at an arbitrary 
granularity, which is an important feature that the Big Book relied upon to distinguish prior art: HO 
'VDE also extends usage control information to an arbitrary granular level (as opposed to a file based 
level provided by traditional operating systems)' [citation]." (Id. (citing '193 patent 275:8—1 1) 
(emphasis omitted).) Whatever the significance of this statement may be, the cited sentence from the 
'193 specification is inapposite because it concerns "control information," which is equivalent to the 
noun form of control. See supra . Here, the Court is construing the verb form of control. 


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said digital file[.]" InterTnist contends that this phrase is further explained by language appearing 
later in 193.1, namely: "if said copy control allows at least a portion of said digital file to be copied 
and stored on a second device." (InterTrust's Opening Markman Br. at 22.) InterTnist maintains 
that this further description, along with the separately defined incorporated terms, makes clear that 
the copy control that is controlling the copies made of said digital file, is used to determine whether 
a digital file may be copied to a second device. (Id.) InterTnist asserts that its definition is based on 
this straightforward, plain-English interpretation, fid.) 

InterTnist criticizes Microsoft's requirement of a VDE in its construction as not required by 
the claim and inconsistent with the specification. (Id. at 22-23.) InterTnist also assails Microsoft's 
definition's requirement that the copy control control "all copies of the Digital File" as not required 
by the claim. (Id. at 23.) Finally, InterTnist disputes Microsoft's definition's requirement that all 
uses and accesses be prohibited except to the extent allowed by the copy control(s). ( Id.) InterTnist 
argues that this limitation has no support in the claim and is inconsistent with the specification, 
which suggests that the item may also be governed by an alternate control structure. (Id. (citing, 
inter alia. JCCS Ex. C at 1 16 (26(A) ('193 patent at 28:19-37)), 1 16-17 (26(B) ('193 patent at 
31:29-56))).) 

In its response, Microsoft does not affirmatively argue why its definition should be adopted; 
Rather, it faults InterTrust's definition as reading the claim more as "controlling the copying. " even 
though the claim refers to "controlling the copies ." (Microsoft's Markman Br. at 39-40.) Microsoft 
does not explain the significance of this distinction. (Id.) Microsoft also contends that "InterTrust's 
proposal suggests that the copies are transferred to the second device, but the claims recite that the 
file (as opposed to any copy) is transferred." (Id. at 40.) Microsoft does not cite to any authorities 
in support of these assertions. (Id. at 39-40.) 

In its reply brief InterTnist clarifies: 

The InterTnist construction is based on the manner in which this phrase is used in the 
claim, in which it explains the "copy control." See JCCS Ex. A, Row 7. The nature of 
the copy control is farther described later in the claim. JCCS Ex. A, Rows 8 and 9. 
InterTrust's definition is based on the phrase itself and on its context in the claim, a 
context Microsoft entirely ignores. 


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(InterTrust's Reply Markman Br. at 23.) 

InterTrust's proposed construction is sensible and supported by the language of 193.1 and 
the '193 patent specification. Microsoft has provided no argument in support of why rts proposed 
construction should be adopted. Accordingly, the Court adopts InterTrust's proposed construction 
and CONSTRUES the phrase "controlling the copies made of said digital file" for purposes of 193.1 
to mean: "Determining the conditions under which a digital file may be copied (defined infra) and 
the copied file stored on a second device." 

i. Copy. Copied. Copying 
InterTrust's proposed construction of the term "copy" 19 and its other permutations (193.1, 
193.11, 193.15, 193.19) is based on the plain English meaning of the word. (InterTrust's Opening 
Markman Br. at 19.) InterTrust's construction, however, requires that the copy be usable, whereas 


Microsoft's definition allows a copy to be ephemeral, unusable, or inaccessible. (Id.) InterTrust's 
proposal also allows a reproduction to involve some changes and still be a copy, as long as the 
essential nature of the content remains unchanged. 

InterTrust maintains that the whole point of making a copy is to have it be usable; temporary, 
automatically-generated internal reproductions of a file by a computer do not fit this description. 
(See id. at 19-20.) InterTrust adds that construing copies to include such reproductions, which are 
copies under Microsoft's proposal, would lead to absurd results: a user attempting to utilize a 
budget (defined supra) by making copies could deplete the entire budget on these ephemeral 
reproductions without being able to use any of them. (Id. at 20.) 

In advancing its proposed definition, Microsoft relies on language from the Big Book, which 
appears to indicate that a copy need not be usable by everyone. (Microsoft's Markman Br. at 
22-23.) Microsoft contends that InterTrust's proposed construction is nonsensical because whether 
a file is usable and, therefore, whether it is a copy, may change depending on whether a particular 
user has the ability to use the file. (Id. at 23.) Finally, Microsoft argues that InterTrust's definition 
contravenes the VDE "invention," which, according to Microsoft, promises prevention of 


19 The parties do not distinguish between the noun form and the verb form of this word for 
purposes of this mini- Markman proceeding. 


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unauthorized copying, which may take place even if the unauthorized copier could not use the copy. 
(Id, at 23-24.) 

The Court agrees with InterTrust that adopting Microsoft's definition of copy would lead to 
absurd results because a user might exhaust his entire budget by opening a file without obtaining a 
single usable copy — and without realizing that he was making a copy every time he opened the file. 
The Court cannot discern what utility might be gained from this result At the same time, Microsoft 
makes a good point that once a "copy" is made, it should not cease being a copy just because it is 
transferred to someone else who is no longer able to use it. The Court believes that this concern is 
adequately addressed by adding to InterTrust's definition the requirement that the copy be usable in 
anv way bv the person, entity, or device making the copy . Thus, if a copy is made such that it is 
usable by the person or entity making the copy, and then it is transferred to someone else who is 
unable to use it, it is still a copy. 

It is crucial to understand, however, that 'disable" is defined broadly in this definition to 
mean "capable of any conceivable use," where the noun "use" has its common-English meaning. 
For example, if a person makes a copy of a digital file that his own computer cannot run for the 
purpose of e-mailing that file to a friend whose computer can run the file, the copy is still a copy: 
the person making the copy "used" the file by distributing it to a friend. In other words, a copy is 
"usable" essentially if it is accessible for anv purpose . This understanding of "usable" stands in 
contrast to Microsoft's apparent understanding of the word. Microsoft seems to take for granted that 
"usable" (as used in the definition of copy) connotes a certain degree or quality of utility. For 
example, Microsoft's counsel at the hearing seemed to suggest that a photocopy of a Latin text made 
by counsel would not be usable by him because he would not be able to read it. (Tr. 221:12-222:3.) 
By making this assertion, counsel implicitly presumed that the copy would not be usable because it 
was not comprehensible by the person making the copy. But that premise is not implicit in the word 
'disable" as it is used in this definition. The copy, whether or not it was comprehensible by the 
person making the copy, would still be usable if the person making the copy had access to it and 
could do something with it— perhaps send it to a friend, whether or not the friend's computer could 
access it. Of course, if the "copy" described by counsel in his analogy fell behind the photocopy 

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machine before the person making the copy could retrieve it and was no longer accessible, it would 
not be a "copy" in the sense contemplated by the claims at issue. This requirement is necessary to 
avoid achieving absurd results. It also illustrates the limitations of the analogy presented by 
Microsoft's counsel at the hearing. 

Finally, the Court agrees with InterTrust that a copy need not be an exact reproduction as 
long as the essential nature of the content remains unchanged. Surely a user can be said to copy a 
music file for a song even though he only copies half the song, as long as the resulting copy retains 
the essential nature of the original song. And, as InterTrust's counsel explained at the hearing, 
(see Tr. 208:23-209:22), the same user can also be said to copy the music file even if the 
reproduction he generates is encrypted and thus not an exact duplicate of the original, because the 
reproduction retains the essential nature of the content of the original. 

Accordingly, the Court adopts InterTrust's proposed definition with the aforementioned 

alteration, such that "copy" (v.), "copied," and "copying" are CONSTRUED to mean, respectively: 

"Reproduce, reproduced, reproducing, where the reproduction must be usable in any way by the 

person, entity, or device making the reproduction, may incorporate all of the original item or only 

some of it, and may involve some changes to the item as long as the essential nature of the content 

remains unchanged." A "copy" (n.) is such a reproduction. 

j. Derives information from one or more aspects of said host 
processing environment 

InterTrust's definition of the phrase "derives information from one or more aspects of said 
host processing environment" (900.155) purports to rely on normal English, incorporating the 
separately defined terms derive, aspect, and host processing environment. (Id. at 37.) InterTrust 
argues that the requirement in Microsoft's proposed definition that information be derived from the 
host processing environment "hardware" is inconsistent with the disclosed embodiment, (id. (citing 
JCCS Ex. C at 129-30 (29(A) ('900 patent at 239:4-42)))), and finds no support in relevant claim, 
900.155, (id). In response, Microsoft contends, without citation or clear explanation, that 
InterTrust's proposed construction may serve no security purpose at all because it does not require a 
"unique machine signature" technique allegedly identified by Dr. Reiter. (Microsoft's Markman Br. 

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at 40.) 

InterTrust's proposed definition is sensible and supported by the '900 patent specification. 
Microsoft has neither provided any support for adopting its proposed definition, nor has it addressed 
InterTrust's arguments that certain features of its definition are inconsistent with or unsupported by 
the specification. Accordingly, the Court adopts InterTrust's proposal and CONSTRUES "derives 
information from one or more aspects of said host processing environment" to mean: "Derives (Le., 
obtains, receives, or arrives at through a process of reasoning or deduction) information based on at 
least one aspect (Le^, feature, element, property, or state) of the previously referred to host 
processing environment (defined infraV 

k. Host Processing Environment (HPE) 
In its opening brief, InterTrust maintains that host processing environment ("HPE") 
(900.155) is explicitly defined in 900.155: it consists of the elements listed in that claim. (JCCS Ex. 
A at 33 (TI 87).) InterTrust maintains that HPE therefore needs no additional definition, yet it offers 
a definition in the alternative; QdJ Turning to that definition, InterTrust explains it agrees with 
Microsoft that HPEs may be either secure or non-secure and that InterTrust's proposed definition is 
more accurately a definition of a secure HPE. (InterTrust's Opening Markman Br. at 36.) It 
therefore states that if necessary, its proposed construction should be qualified to allow for secure 
and non-secure HPEs, and it offers language containing such a qualification which it claims to be 
supported by the specification. Q4) InterTrust, however, takes issue with Microsoft's inclusion of 
additional limitations in its proposed definition, arguing that they are unwarranted. For example, 
InterTrust points out that Microsoft's implicit assertion that an HPE consists only of executable 
programming contradicts 900.155, which identifies various hardware elements as part of the HPE. 
(Id.) Microsoft argues in response, without citations to evidence, only that the Big Book permits 
HPEs to be secure or non-secure, and Microsoft's proposed construction addresses this feature. 
(Microsoft's Markman Br. at 40.) Microsoft's proposal provides, among other things, that a secure 
HPE run in "protected (privileged) mode" and that a non-secure HPE run in "user mode." 

At the hearing the Court explored InterTrust's offer to qualify its original proposed 
definition. InterTrust's counsel proposed that the proffered definition be modified to the following: 

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"[A] host processing environment may be either secure or non-secure. A secure host processing 
environment is a protected processing environment incorporating software-based security, and a 
non-secure host processing environment is a processing environment with insufficient security to 
constitute a secure host processing environment." (Tr. 264:19-24.) Counsel, however, adhered to 
the position that the Court need not define this term because it consists of the elements of 900.155. 
(Tr. 265:22-266:14.) Counsel contended that the reference to HPE in 900.155 is similar to a 
preamble, requiring no construction by the Court, but he admitted that he could not cite to the Court 
any authority in support of this position. (Id) Microsoft's counsel responded to InterTrust's 
amended proposal by arguing that it was nonsensical to construe HPE to include both secure and 
non-secure processing environments because an HPE is a type of protected processing environment. 
(Tr. 268:21-269: 12.) He cited portions of the '193 patent specification in support of this position. 
(Tr. 269: 1 8—27 1 : 10.) Microsoft's counsel admitted, however, that Microsoft's own proposed 
definition allowed for HPE to be both secure and non-secure. (Tr. 273:21-274:1.) InterTrust's 
counsel commented that the key difference between InterTrust's revised proposal and that of 
Microsoft was that Microsoft's proposal requires that an HPE run in protected mode. (Tr. 
272:12-14.) He went on to assert that there is no statement in the '193 patent that suggests that a 
secure HPE or a non-secure HPE must operate in a particular mode. (Tr. 272:15-273:7.) 

The Court fully understands InterTrust's position that the reference in 900.155 to HPE is 
akin to a preamble requiring no construction, as that reference appears on the second line of the 
claim without any other elements. Yet given the references to HPE in conjunction with protected 
processing environments and secure processing environments in the specifications of the '193 patent 
and the '900 patent, (JCCS Ex. C at 56 (16(B) ('193 patent at 105:18-22, '900 patent at 
1 12:48-52))), the Court considers it to have significance independent from the remaining elements 
of 900.155 themselves. The Court thus construes HPE accordingly. 

Microsoft's proposed definition is not plausible. Microsoft provides no support for the 
requirement that HPE be "within a VDE node" or for the requirement that a secure HPE run in 
protected mode and a non-secure HPE run in a different mode. InterTrust's revised proposal, on the 
other hand, properly incorporates the term "protected processing environment" (defined infra) 

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insistent with HPE's use in the specifications. Moreover, the Court does not agree with 
Microsoft's suggestion that InterTrust's proposed definition is nonsensical because there cannot be a 
non-secure protected processing environment. A protected processing environment is a separately 
defined term that, under InterTrust's proposed definition, provides protection against tampering . 
(See JCCS Ex. B at 1 1 fl| 18).) InterTrust's proposed definition of tampering (a term that is not 
offered for construction by the Court but will be implicitly defined in the Court's construction of 
"tamper resistance") is not coextensive with its proposed definition of secure. (Compare icL Ex. B at 
15 (U 21) with id Ex. B at 13 fl[ 19).) Given that, as discussed infra, the Court adopts InterTrust's 
proposed definitions of secure and tamper resistance, there is no inconsistency in concluding that 
HPEs may be secure and non-secure. Moreover, Microsoft's own proposed construction of HPE 
allows it to be either secure or non-secure. 

Accordingly, the Court adopts InterTrust's revised proposal and CONSTRUES "host 
processing environment" (and its acronym, "HPE") as follows: "A host processing environment 
may be either secure or non-secure. A secure host processing environment is a protected processing 
environment (defined infra) incorporating software-based security, and a non-secure host processing 
environment is a processing environment with insufficient security to constitute a secure host 
processing environment. 

L Identifier 

InterTrust contends that its proposed construction of "identifier" (193,15, 912.8) is based on 
the normal English meaning of the term and is consistent with its use in the specifications, 
(InterTrust's Opening Markman Br. at 24.) InterTrust asserts that the main dispute between the 
parties is whether, as Microsoft contends, identifier must be unique to an "individual instance" of a 
person or thing, or whether, as InterTrust contends, it can specify that a person or thing is a member 
of a group. (Id.) InterTrust points to a specification embodiment of a portion of 912.8 that appears 
to lend support to its construction. (Id, (citing JCCS Ex. C at 131 (30(A) ('193 patent at 
140:15-46))).) Microsoft in response does not address identifier, but rather "identifying (identify)." 
(Microsoft's Markman Br. at 40.) Without offering any evidentiary citations in support, Microsoft 
asserts that "[i]n common usage and these patents, to identify someone or something is to establish 

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the person or thing as a particular individual or thing." (Id.) In its reply brief, InterTrust objects to 
Microsoft's construction of the terms "identifying (identify)", contending that they are distinct from 
identifier and were not agreed-upon as terms that would be construed at the mini-Markman. 
(InterTrast's Reply Markman Br. at 23 n. 1 3.) InterTrust adds that its proposed construction is based 
on the American Heritage Dictionary. (Id. at 23.) 

InterTrast's arguments are persuasive. Microsoft's argument is unsupported. Accordingly, 
the Court adopts InterTrast's proposal and CONSTRUES "identifier" to mean: "Information used to 
identify something or someone (e.g.. a password). In this definition, 'identify' means to establish 
the identity of or to ascertain the origin, nature, or definitive characteristics of; includes identifying 
as an individual or as a member of a group." 

m. Protected Processing Environment (PPE) 

InterTrust contends that its proposed construction of "protected processing environment" 
("PPE") (683.2, 721.34) is consistent with the specifications, which describe two embodiments of a 
PPE: a secure processing environment ("SPE") and a host processing environment ("HPE"). 
(InterTrast's Opening Markman Br. at 28-29.) InterTrust explains that its construction properly 
covers both embodiments because the specification explicitly states that any action that can be taken 
by an SPE can also be taken by an HPE, albeit possibly with a lower level of security. (Id. at 29.) 
InterTrust further contends that a number of Microsoft's proposed definitions would improperly 
exclude the HPE embodiment, which provides software-based security. (Id.) InterTrust adds that 
Microsoft's proposed definition of PPE is 345 words in length and thus impossible for any jury to 
understand. (Id.) 

In its Markman brief Microsoft address only what it deems to be the "central dispute": 
whether a PPE must have a physical tamper resistant barrier (see infra) and prevent unauthorized 
access, observation, and interference. (Microsoft's Markman Br. at 34.) Although Microsoft's 
discussion of issues relating to the proper construction of PPE runs a page and a half in length, 
careful review of this discussion reveals only one substantive argument in support of its proposed 
definition: that the three reasons provided elsewhere in the brief for adopting Microsoft's 
construction of tamper resistant barrier also demonstrate that these claims' PPE must be the 

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hardware-based SPE, not the software-based HPE. (Id at 35.) Microsoft also faults InterTrust's 
proposed definition as being "vague" and lacking in more specific information. Q&) 

InterTrust's arguments are persuasive and well-supported. Given that, as discussed infra, 
Microsoft's tamper resistant barrier arguments are unavailing, so, too, are its arguments regarding 
PPE. Further, InterTrust's proposed definition is not vague, and Microsoft does not demonstrate that 
the information that is not provided in InterTrust's definition is crucial. Accordingly, the Court 
adopts InterTrust's proposal and CONSTRUES "protected processing environment" to mean: "An 
environment in which processing and/or data is at least in part protected from tampering. The level 
of protection can vary, depending on the threat. In this definition, 'environment' means capabilities 
available to a program running on a computer or other device or to the user of a computer or other 
device. Depending on the context, the environment may be in a single device (e^, a personal 
computer) or may be spread among multiple devices (e.g., a network)." 
n. Secure. Securely 

InterTrust's proposed construction of "secure" and "securely" (193.1, 193,11, 193.15, 683.2, 
721.34, 861.58, 891.1, 912.8, 912.35) is flexible and denotes any of several different attributes, 
including secrecy and authenticity, some or all of which may be applicable depending on the 
particular context discussed in the specifications. (See InterTrust's Opening Markman Br. at 
14-16.) InterTrust assails Microsoft's proposed definition, which requires all of five qualities 
identified by Prof. Mitchell, as being flatly contradicted by the specifications, which in some 
contexts make clear that secure connotes fewer than all five of these qualities. (See, e.g., id. at 14 
(quoting '193 patent at 233:25-30 ("In one embodiment, the portable appliance 2600 could support 
secure (in this instance encrypted and/or authenticated) two-way communications with a retail 
terminal which may contain a VDE electronic appliance 600 or communicate with a retailer's or 
third.party provider's VDE electronic appliance 600.")); see also id at 14-15.) InterTrust asserts 
that, as Dr. Reiter has testified, nothing is absolutely secure; InterTrust maintains that its proposed 
construction reflects this reality, whereas Microsoft's does not. (See id* at 15.) 

Microsoft's proposed definition requires that something must have all five of the following 
qualities to be secure: "availability"; "secrecy"; "integrity"; "authenticity"; and "nonrepudiation." 

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(Microsoft's Markman Br. at 28.) Microsoft contends that its definition "honors the basic premise 
of VDE." (Id. at 27.) Microsoft provides no citations whatever in support of its proposal, other than 
certain extrinsic evidence tending to suggest that secure connotes an absolute state. (IcL at 25-28.) 
Microsoft criticizes InterTrust's proposal on several grounds (without citations), one of which is that 
InterTrust's definition, which contains the phrase "one or more mechanisms are employed to . . .", 
suggests that something can be secure simply if an effort is made, regardless of the result; Microsoft 
maintains that the term secure connotes a state, regardless of the effort made to achieve that state. 
(IcL at 26.) 

The Court finds InterTrust's proposed definition, for the most part, to be very well supported 
by the relevant specifications, Microsoft's definition, by contrast, has no evidentiary support and is, 
in fact, clearly contradicted by the specifications of the patents-in-suit. 

But there are a few modifications to InterTrust's proposal that the Court explored with the 
parties at, the hearing and that the Court now deems appropriate to make. First, Microsoft makes a 
good point that secure connotes a state — albeit not necessarily an absolute state — and not merely an 
effort. Thus, InterTrust's use of the phrase "one or more mechanisms are employed to . . in its 
proposed construction is potentially problematic. To address this concern, the Court proposed at the 

hearing modifying this phrase to "one or more mechanisms are employed that " This alteration 

indicates that a state has been achieved, not merely that an effort has been made. InterTrust's 
counsel stated at the hearing that InterTrust had no objection to this modification. (Tr. 
121:18—122:1, 149:24-150:1.) Nevertheless, the Court recognizes that a particular mechanism may 
not bv itself prevent discourage, or detect misuse; rather, it may do so only in conjunction with 
other mechanisms. Accordingly, the Court believes that a further modification would be helpful: 
the phrase should read "one or more mechanisms are employed that (whether alone or in conjunction 
with one or more other mechanisms) " 

Second, the Court agrees with Microsoft's proposal at the hearing — a proposal that counsel 
later withdrew— that the portion of the last sentence of InterTrust's proposal, namely "but is 
designed to be sufficient for a particular purpose", should be stricken, such that the sentence shall 
read: "Security is not absolute." (Tr. 148:14-149:21,152:20-153:3.) This proposal arose out of the 

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debate between counsel for InterTrust and counsel for Microsoft about whether something can be 
secure if it does not guarantee protection against specified threats. Although the Court fully 
appreciates the distinction that the parties have sought to draw, the Court agrees with InterTrust that 
security is not absolute and that the language in question adds nothing to the definition and might 
confuse to a jury. The statement that "security is not absolute" fully captures the meaning sought to 
be conveyed. Moreover, Microsoft's counsel agreed at the hearing that security is not absolute, (Tr. 

141:22 ("So we agree secure is not absolute "), 152:24 ("[S]aying 'secure is not absolute' . . . 

[is] a truism . . . ."), and InterTrust's counsel represented that InterTrust was amenable to this 
modification, (Tr. 149:8-24). 

Finally, the Court agrees with Microsoft's concern that defining secure to include 
mechanisms that merely detect misuse of or interference with information or processes is 
inappropriate. At the same time, it is clear that the relevant claims contemplate employing security 
technologies including digital signatures. (See JCCS Ex. C at 74 (19(A)) (citing '193 patent at 
8:1-3).) As explained to the Court at the hearing, digital signatures do not provide security by 
preventing or discouraging misuse of data; instead, they provide security by alerting the user to 
misuse or interference with the data in question, thereby allowing the user to avoid harm stemming 
from the misuse or interference. It would thus be inappropriate to exclude detection from the 
definition of security altogether. The Court believes that it can accommodate Microsoft's concerns 
while remaining faithful to the meaning of secure contemplated by the patent specifications by 
modifying "detect" in InterTrust's proposal to "detect misuse of or interference with information or 
processes for the purpose of discouraging and/or avoiding harm." 

Accordingly, the Court adopts InterTrust's proposed definition with the modifications stated 
above and CONSTRUES "secure" to mean: 
/// 
/// 

/// 
/// 
/// 

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One or more mechanisms are employed that (whether alone or in conjunction with one 
or more other mechanisms) prevent or discourage misuse of or interference with 
information or processes, or that detect misuse of or interference with information or 
processes for the purpose of discouraging and/or avoiding harm. Such mechanisms may 
include concealment, tamper resistance (defined infra), authentication (Le., identifying 
(e.g.. a person, device, organization, document, file, etc.)), and access control. 
Concealment means that it is difficult to read information (e.g.. programs may be 
encrypted). Tamper resistance and authentication are defined separately. Access control 
means that access to information or processes is limited on the basis of authorization. 
Security is not absolute. 

"Securely" means: "In a secure (defined supra) manner." 

o. Secure Container 

InterTrust's proposed construction of "secure container" (683.2, 861.58, 912.35) is 
straightforward: a container (defined supra) that is secure (defined supra ). InterTrust provides 
several examples from the specifications that support its proposed construction. (InterTrust's 
Opening Markman Br. at 26 (citing, inter aUa, JCCS Ex. C at 83 (20(A) ('193 patent at 127:3(M9)), 
84 (20(C) ( ? 683 patent at 15:61-16:4))).) InterTrust also takes issue with a number of features of 
Microsoft's proposed definition, arguing, inter alia, that it conflicts with the specifications, (id at 
26), that it impermissibly relies on the preferred embodiment, (id. at 27), and that one of its 
limitations finds no support in the specifications or elsewhere, (id.) . 

Microsoft proposes a construction of secure container that is enormous in length. Microsoft 
relies almost exclusively on the alleged Big Book's description of a VDE secure container. (See 
Microsoft's Markman Br. at 29.) The crucial feature of this proposed type of container is that it 
prevents, and not simply detects, all access to and use of protected content — ie^, it promises 
absolute protection. (Id. at 30 ("This 'access control' ability of VDE secure containers is critical to 
VDE's promise to content owners that it can prevent (not simply detect) all access to and use (not 
just decryption-based uses) of protected content.").) 

InterTrust responds that one feature contained in Microsoft's definition, namely that a secure 
container includes an access control method, is but an example of an embodiment in the 
specifications, not the only embodiment disclosed. (InterTrust's Reply Markman Br. at 18.) 
InterTrust adds that the term "VDE secure container" does not appear anywhere in the '193 patent; 
when the inventors of that patent wanted to refer to a container in terms of VDE capabilities, they 

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used the term "VDE container." QkL at 1 9.) InterTrust presents examples of the use of the term 

VDE container. (Id. at 19.) 

InterTrust's proposed construction is well-supported by the specifications. Microsoft's 

proposed construction, which relies on the concept of a VDE secure container, is contradicted by the 

specifications, as InterTrust demonstrates, in addition, as InterTrust's counsel pointed out at the 

mini- Markman hearing, Microsoft's counsel's reference to the '193 patent specification in support 

of its assertion that a VDE container is equivalent to a secure container is misleading: the portion of 

the specification cited by Microsoft refers only to the preferred embodiment . (Tr. at 238:10-239:1 1, 

240:22 (discussing '193 patent at 127:40-50).) 20 As discussed supra , it is inappropriate for the Court 

to read limitations in the preferred embodiment into the claim terms. Accordingly, the Court adopts 

InterTrust's proposal and CONSTRUES "secure container" to mean: "A container (defined supra) 

that is secure (defined supra) ." 

p. Securely applying, at said first appliance through use of said at 
least one resource said first entity's control and said second 
entity's control to govern use of said data item 

The phrase "securely applying, at said first appliance through use of said at least one 
resource said first entity's control and said second entity's control to govern use of said data item" 
appears only in 891.1. InterTrust contends that "securely applying" is not specially defined in the 
specification and is not a term of art. (InterTrust's Opening Markman Br. at 34.) InterTrust 
explains that in the specification, the terms "securely applying" and "applying" refer to the 
application of control information to govern content. Qd. (citing, inter aha, JCCS Ex. C at 126 
(28(A) ('193 patent at 299:19-51))).) InterTrust faults several features of Microsoft's proposed 
definition for being inconsistent with the specification and/or for lacking support in the 
specification. (See id. at 34-35.) Microsoft proposes a lengthy definition for this phrase, but it has 
elected not to address this phrase in its Markman brief. 

InterTrust's proposed definition, at least to the extent it relies on a construction of "securely 
applying" or "applying," has support in the specification. Microsoft has presented no reason to 


20 The Court needs not even consider this portion of the '193 specification because Microsoft 
never cited to it in its Markman brief. 

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adopt its proposed definition. Accordingly, the Court adopts InterTrust's proposed definition and 
CONSTRUES "securely applying, at said first appliance through use of said at least one resource 
said first entity's control and said second entity's control to govern use of said data item" to mean: 
'The first entity's control (defined supra) and the second entity's control are securely (defined 
supra) applied to govern use (defined infra) of the data item, the act of securely applying involving 
use of the resource." 

q. Tamper Resistance 

InterTrust advances a construction of "tamper resistance" (721.1) that, it contends, is 
consistent with the use of the term in the specifications and in relevant extrinsic evidence. 
(InterTrust's Opening Markman Br. at 31.) InterTrust faults Microsoft's proposed definition as 
requiring that access, observation, and interference be prevented : InterTrust contends that this 
requirement is inconsistent with the plain meaning of "resistance." (IdL) InterTrust also faults 
Microsoft's definition as inexplicably requiring prevention of access, which is not connoted by the 
term "tampering." (Id) 

Microsoft presents little in the way of argument in support of its proposed definition. 
Microsoft faults InterTrust's definition as failing to specify with what is being compared in 
connection with the phrase "making tampering more difficult." (Microsoft's Markman Br. at 40.) It 
also states that "merely detecting tampering but not stopping it, plainly is not what VDE means by 
'tamper resistance.'" (Id) It does not provide any evidentiary or legal citations in support of these 
statements. (Id.) InterTrust replies in succinct fashion; it states that tamper resistance makes 
tampering "more difficult" to achieve than it is to achieve in the absence of tamper resistance; and it 
points out that Microsoft's unsupported assertion about what VDE means by tamper resistance is not 
evidence supporting Microsoft's construction, (InterTrust's Reply Markman Br. at 24.) 

InterTrust's citations to intrinsic evidence, namely the patent specifications, are sufficient to 
demonstrate that its proposed construction is correct. (See JCCS Ex. C at 87 (21(A) (721 patent at 
4:40-42); 21(B) ('193 patent at 59:48-59)).) Reference to the extrinsic evidence that InterTrust 
offers is not necessary, although the Court notes that that evidence clearly supports InterTrust's 
proposed construction. ( See, e.g. . kL Ex. C at 88 (21(D) (quotation from text on tamper resistant 

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software that defines such software as "software which is resistant to observation and 
modification")).) By contrast, Microsoft provides no citations whatever in support of its proposal- 
There is therefore no basis on which the Court can adopt Microsoft's definition. Accordingly, the 
Court adopts InterTrust's proposed definition and CONSTRUES "tamper resistance" to mean: 
"Making tampering more difficult and/or allowing detection of tampering. For purposes of this 
definition, 'tampering* means using (e^, observing or altering) in any unauthorized manner, or 
interfering with authorized use," 

r. Tamper Resistant Barrier 

InterTrust's proposed definition of "tamper resistant barrier" (721.34) is straightforward: 
"hardware and/or software that provides tamper resistance." InterTrust contends that its definition is 
consistent with the use of the term in the specification. (InterTrust's Opening Markman Br. at 
32-33 (citing JCCS Ex. C at 90 (22(C) ('721 patent at 5:1-6))).) InterTrust further contends that, in 
accordance with the specifications, its definition permits a tamper resistant barrier to consist of 
hardware or software. (Id at 33 (citing JCCS Ex. C at 89-90 (22(B) ('193 patent at 80:22-65))).) 

Microsoft claims that its definition, which requires a hardware device and which requires 
prevention of unauthorized access, observation, and interference, is based on the underlying premise 
of VDE in the Big Book. (Microsoft's Markman Br. at 30-33.) Microsoft also faults InterTrust's 
definition of tamper resistant barrier, which incorporates the defined term tamper resistance, as 
failing to answer the questions "'making tampering more difficult' than what?" and "[w]hat does 
'allowing detection of tampering 9 mean?" (IcL at 34.) 

InterTrust points out in its reply that Microsoft's definition's requirement that a tamper 
resistant barrier include a physical hardware device is contradicted by an express embodiment 
disclosed in the specification. (InterTrust's Reply Markman Br. at 5-6.) InterTrust states that it "is 
aware of no Federal Circuit case that has ever held that a claim term can be interpreted to exclude, 
not merely a disclosed embodiment, but a disclosed embodiment that is identified in the 
specification using exactly the same words as the claim ('tamper resistant barrier')." (Id. at 6 
(emphasis in original).) InterTrust adds that the term is found only in 721 .34, and this term contains 
no reference to assigning usage control information or any use of content, nor does it have any 

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language from which such elements can be inferred, yet Microsoft's definition includes such 
elements. (Id. at 19.) 

The Court agrees with InterTrust that Microsoft's proposed definition cannot be correct, 
since it contradicts the use of the term in an embodiment expressly disclosed in the relevant 
specifications. Indeed, language from one of the specifications that Microsoft itself cites 
demonstrates that a tamper resistant barrier may consist of software alone: Microsoft quotes from 
the '900 patent text that includes the following sentence: "No software-onlv tamper resistant barrier 
674 can be wholly effective against all of these threats." (Microsoft's Markman Br. at 33 (quoting 
from '900 patent at 233:24-33) (emphasis added).) Obviously, the specification contemplates that a 
tamper resistant barrier may be software-only; such a software-only tamper resistant barrier, 
however, will not be wholly effective against all the threats identified. Had the inventors intended to 
exclude software-only mechanisms or processes from the definition of tamper resistant barrier, they 
would have said something to the effect of "no software-only mechanisms or processes can be a 
tamper resistant barrier because they cannot be wholly effective against all of these threats." 
Similarly, Microsoft's quotations of certain portions of specifications in support of its definition 
demonstrate only that a tamper resistant barrier may be a hardware device under the appropriate 
circumstances; but these quotations do not demonstrate that it must be a hardware device. (See, e.g.. 
id. (quoting '193 patent at 49:15-17) ("A hardware SPU (rather than a software emulation) with a 
VDE node is necessary if a highly trusted environment for performing certain VDE activities is 
required."); see also id at 32-34.) Finally, Microsoft's practice, utilized frequently in its discussion 
of other claim terms and phrases, of faulting InterTrust' s proposed definition for not addressing 
certain questions, (id at 34), is unconvincing because there is no evidence that it is even necessary 
to address these questions. 

Accordingly, the Court adopts InterTrust' s proposed definition and CONSTRUES "tamper 
resistant barrier" to mean: "Hardware and/or software that provides tamper resistance (defined 
supra)." 

s. Use 

InterTrust contends that the term "use" (193.19, 683.2, 721.1, 861.58, 891.1, 912.8, 912.35) 

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is not specially defined in the specification, and it is not a term of art. (InterTrust's Opening 
Markman Br. at 25.) InterTrust's proposed construction is based on the plain English meaning of 
the word use: "to put into service or apply for a purpose, to employ." (IdJ Microsoft's proposed 
construction appears similar, but it provides examples of the term use (e.g.. copying, printing, 
decrypting) and requires an additional limitation pertaining to VDE. (See Microsoft's Markman Br. 
at 20-21 .) Yet Microsoft does not clearly explain in its Markman brief how the first part of its 
proposed definition — "[t]o use information is to perform some action on it or with it" — is 
inconsistent with InterTrust's proposed definition, nor does it clearly explain the basis for the second 
part of its proposal, which imposes an additional limitation relating to VDE. 

At oral argument the Court expressed its uncertainty regarding Microsoft's position in these 
two respects. Counsel for Microsoft informed the Court that it would be a "reasonable approach" 
for the Court to take if it struck out the second part of its proposed definition (the portion pertaining 
to VDE). (Tr. at 228:9-12.) As for the first part of its proposed definition, Microsoft's counsel 
stated that its proposed definition was intended only to provide examples of "use" for the jury to 
better understand the term in the sense Microsoft intended. (See Tr. 224:18-14, 227:8-228:8, 
229:7-22.) 

The Court discerns insufficient support for the second part of Microsoft's proposal, and in 
light of Microsoft's willingness to excise it, the Court agrees that this part is not due serious 
consideration. As for the first part of Microsoft's proposal, the Court believes that providing the 
examples of the term use that Microsoft has listed adds nothing in the way of clarification to the 
definition of the term and may in fact confuse the jury. Specifically, Microsoft does not indicate that 
these examples are exhaustive or that they have a particular relationship. Thus, a jury will be 
required to guess at their significance to determine what limiting purpose they serve, if any. At the 
same time, InterTrust's definition is more straightforward and is in fact consistent with this first 
portion of Microsoft's proposed definition. 

Accordingly, the Court adopts InterTrust's proposed definition and CONSTRUES "use" to 
mean: "To put into service or apply for a purpose, to employ." 

t. Virtual Distribution Environment (VDE) 

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InterTrust points out that among the twelve claims at issue in the mini- Markman proceeding, 
the term "virtual distribution environment" ("VDE") (900, 1 55) appears only in the preamble of 
900. 155. (InterTrust's Opening Markman Br. at 35.) It argues that the individual elements of 
900.155 fully define the recited apparatus, and reference to the preamble is not necessary to define 
and understand the claimed apparatus. (Id) Citing Altiris. Inc. v . 'Symantec Corp.. 318 F.3d 1 363, 
1371 (Fed. Cir. 2003), and Alfred J. Schumer v. Laboratory Computer Systems. Inc.. 308 F.3d 1304, 
13 10 (Fed. Cir. 2002), InterTrust contends that the preamble does not "give life, meaning and 
vitality" to the claim, and therefore it is irrelevant to claim interpretation. (InterTrust's Opening 
Markman Br. at 35.) Accordingly, InterTrust asserts that VDE need not be defined and should not 
be read into claims that do not actually recite it. (See id) 

Without waiving its position that VDE should not be read into claims that do not actually 
recite it, InterTrust argues that to the extent it must be defined, the Court should adopt the short 
definition that it proposes, which is taken directly from embodiments of VDEs described in the 
specification. (Id) InterTrust faults Microsoft's proposed definition, which consists of over 2.000 
words, as incomprehensible by a lay jury. (Id) It further criticizes Microsoft's proposed 
definition's requirement of a "secure processing environment" embodiment as conflicting with the 
specification's clear description of an alternate embodiment HPE. (Id) It adds that, given that 
Microsoft seeks to read VDE into each and every claim, the "universe-wide" feature of VDE 
required in Microsoft's definition would appear impossible to apply to a claim relating to a single 
device or process. (Id at 35-36.) It also insists that the requirements in Microsoft's definition that a 
VDE "guarantee" various types of security and that a VDE be "non-circumventable" is inconsistent 
with the real-word fact that guaranteed security is impossible, and it is inconsistent with the 
specification. (Id at 36.) 

Microsoft proposes a definition that is nothing short of gargantuan in length. Its proposed 
definition purports to be derived from numerous statements in the Big Book application. 
(See Microsoft's Markman Br. at 3-9.) Microsoft does not address InterTrust's contention that 
VDE should not be defined separately from the elements of 900. 1 55 because it is found in the 
preamble and arguably does not give "life, meaning, or vitality" to the claim. 

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The Court agrees with InterTrust that VDE does not require construction independent of the 
elements of 900.155. The Court cannot possibly discern what "life, meaning, or vitality" VDE 
imbues in the claim. The claim terms speak for themselves. Moreover, the Court has difficulty 
accepting Microsoft's proposed definition of VDE to the extent it purports to be premised on the Big 
Book application where, as discussed supra, the PTO determined that the Big Book described five 
different inventions. Finally, given that the Court has stricken the Maier Declaration, the Court has 
no evidentiary basis to conclude that VDE would be construed by a person of ordinary skill in the art 
in the manner that Microsoft suggests. Accordingly, the Court adopts InterTrust' s proposal and 
CONSTRUES 'Virtual distribution environment," as that term appears in 900.155, to be defined by 
the elements of 900.155; it has no definition independent of those elements. 

TV. CONCLUSION 

Despite its misgivings, the Court agreed to conduct this mini-Markman proceeding and 
resolve Microsoft's motion for summary judgment on indefiniteness at this stage of the litigation 
based on the parties' representations that early resolution of these matters would facilitate 
compromise. The Court also agreed to enter the partial stay of this action on Microsoft's request 
based on Microsoft's representations that proceeding with this litigation full-throttle might prove 
unnecessary if the Court would construe a key subset of claim terms and phrases and resolve certain 
other issues in dispute. To these ends the Court has expended tremendous time and effort. 

Microsoft's decision to ignore approximately 40 percent of the claim terms and issues which 
were selected by the parties and its failure to provide substantial citations to evidentiary and legal 
authorities in support of its positions call into question the prudence of the Court's having proceeded 
in this fashion. It also lends credence to the suggestion that Microsoft's purported opposition to 
many of InterTrust's proposed constructions is baseless, and it implies that to a large extent the 
eight-month delay in this case has been for naught. It was Microsoft, after all, that proposed that 
thirty claim terms and phrases should be construed in this proceeding, arguing in a submission to the 
Court that construction of this many terms and phrases "should suffice to cover the most important 
disputes." That Microsoft evidently felt entitled to multiply the proceedings needlessly is more than 
a little disconcerting. 

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The Court expects the parties now to conduct compromise negotiations earnestly and in good 
faith, as would be expected by their earlier representations to the Court. In the meantime, the Court 
wishes to make the following unequivocal: The Court will not tolerate a party's creating a dispute 
by taking a position on a material issue where that party does not have a good-faith basis for that 
position that is well-supported by fact and by law. Such conduct may result in the imposition of 
sanctions under Federal Rule of Civil Procedure 1 1 and/or other authority that may be applicable. 
Microsoft should be aware that this instruction applies with special force to it in light of its 
objectionable performance in the instant proceedings. 

Accordingly, 

IT IS HEREBY ORDERED THAT: 

1 . Microsoft's Motion for Summary Judgment that Certain "Mini- Markman " Claims 
Are Invalid for Indefmiteness [Docket No. 229] is DENIED. 

2. Claims 193.1, 193.11, 193.15, 193.19,683.2,721.1,721.34,861.58,891.1,900.15, 
912.8, and 912.35 are CONSTRUED as set forth in the body of this Order. 

3. Consistent with the parties' representations to the Court in their joint letter dated June 
26, 2003, and the Court's consideration thereof, no later than Juiv 9, 2003, the 
parties shall file with the Court a joint statement of any reasonable length explaining 
whether the parties have obtained the consent of an Article III Judge of the Northern 
District of California to conduct settlement discussions (and if so, which Judge), and 
if not, what, if anything, the parties would like the Court to do to assist in their 
conducting settlement discussions. The Court will issue an appropriate Order shortly 
thereafter pertaining to such settlement proceedings. 

4. The parties shall telephonically appear at a Case Management Conference before the 
Court on August 7, 2003. at 3:>S p.m. InterTrust's counsel shall set up the 
telephonic conference call with all the parties on the line and call chambers at (510) 
637-3559 at the time designated above. NO PARTY SHALL CONTACT 
CHAMBERS DIRECTLY WITHOUT PRIOR AUTHORIZATION OF THE 
COURT. The parties shall file a Joint Case Management Statement at least ten (10) 


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days prior to the conference. 
IT IS SO ORDERED. 


Dated: July 3, 2003 

United States District Judge 



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