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Paper 1 


Filed by: Jameson Lee 
Administrative Patent Judg« 
Mail Stop Interference 
P.O. Box 1450 
Alexandria Va 223 13-1450 
Tel: 703-308-9797 
Fax: 703-305-0942 


UNITED STATES PATENT AND TRADEMARK OFFICE 


BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 


KARL L. GINTER, VICTOR H. SHEAR, 
FRANCES J. SPAHN and DAVID M. VAN WIE, 
Senior Party, 
(Application 09/41 1 ,205). 


Patent Interference No. 105,142 


NOTICE DECLARING INTERFERENCE 

(37 CFR§ 1.611) 


Part A. Declaration of interference 


An interference is declared (35 U.S.C. § 135(a)) between the above-identified parties. 
Details of the application(s), patent (if any), reissue application (if any), count(s) and claims 
designated as corresponding or as not corresponding to the count(s) appear in Parts E arid F o 
this NOTICE DECLARING INTERFERENCE. 


GREG BENSON, GREGORY H. URICH 
and CHRISTOPHER L. KNAUFT, 
Junior Party, 
(Patent 5,845,281; Applications 09/164,606 
and 09/321,386), 



V. 


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Part B, Judge designated to handle the interference 

Administrative Patent Judge Jameson Lee has been designated to handle the interference. 
37 CFR§ 1.610(a). 

Parte Standing order 

A Trial Section STANDING ORDER accompanies this NOTICE DECLARING 
INTERFERENCE. The STANDING ORDER applies to this interference. 
Part D. Conference call to set dates 

A telephone conference call to set dates for taking action in the interference is scheduled 
for 2:00 p.m. on 21 October 2003 (the call will be initiated from the PTO). 

No later than two business days prior to the conference call, each party shall file and 
serve by facsimile a Hst of the preliminary motions the party intends to file. See STANDING 
ORDER H 10. 

A copy of a "sample" order setting times for taking action during the preliminary motion 
phase of the interference accompanies this NOTICE DECLARING INTERFERENCE. Counsel 
are encouraged to discuss the order prior to the conference call with the view to coming to some 
agreement as to dates for taking action. A typical preliminary motion period lasts approximately 
nine (9) months. Counsel should be prepared to justify any request for a shorter or longer period. 


Part E. The parties involved in this interference are: 


Junior Party 


Named inventor: 

Patent: 
Title: 

Assignee; 
Accorded Benefit: 
Attorneys: 
Address: 


GREG BENSON, Dalby, Sweden 
GREGORY H. URICH, Lund, Sweden 
CHRISTOPHER L. KNAUFT, San Diego, CA 

5,845,281, granted 1 December 1998, based on 
application 08/594,81 1, filed 31 January 1996 

Method and system for managing a data object 
so as to comply with predetermined conditions 
for usage 

Greg Benson 

none 

See last page 

See last page 


Application: 
Title: 

Assignee: 
Accorded Benefit: 

Attorneys: 
Address: 


09/164,606, filed 1 October 1998 

Method and system for managing a data object 
so as to comply with predetermined conditions 
for usage 

Macrovision Corporation 

Patent 5,845,281, granted 1 December 1998, based 
on application 08/594,81 1, filed 31 January 1996 

See last page 

See last page 


Application: 
Title: 

Assignee: 


09/321,386, filed 27 May 1999 

Method and system for managing a data object 
so as to comply with predetermined conditions 
for usage 

Macrovision Corporation 
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Accorded Benefit: Patent 5,845,28 1 , granted 1 December 1 998, based 
on application 08/594,81 1, filed 31 January 1996; 
Application 09/164,606, filed 1 October 1998 

Attorneys: See last page 


Address: See last page 

Senior Party 

Named Inventor: KARL L. GINTER, Beltsville, MD 
VICTOR H. SHEAR, Bethesda, MD 
FRANCIS J. SPAHN, El Cerrito, CA 
DAVID M. VAN WIE, Sunnyvale, CA 


Application: 09/41 1 ,205, filed 4 October 1999 

Title: System and methods for secure transaction 

management and electronic rights protection 


Assignee: none 

Accorded Benefit: Patent 6,253,193, granted 26 June 2001 , based on 
application 09/208,017, filed 9 December 1998; 
Patent 5,982,891, granted 9 November 1999, based 
on application 08/964,333, filed 4 November 1997; 
Application 08/388,107, filed 13 February 1995 

Attorneys: See last page 


Address: 


See last page 


Part F. Count and claims of the parties 


Count 1 


Claim 1 of Benson's Application 09/321,386 (Benson m) 


The claims of the parties corresponding to Count 1 are: 

Benson's Patent No. 5,845,281 (Benson I): Claims 1-3, 5-12. 15-19 and 22-29 

Ginter's Application 09/41 1,205: Claims 91-93, 95-102, 105-109, 1 12-1 19, 120- 

122, 124-131, 134-138 and 141-148 
Benson's Application 09/164,606 (Benson H): Claims 30-32, 34-41, 44-46, 48, 51, 56, 58-66. 

68 and 69 

Benson's Application 09/321,386 (Benson m): Claims 1-3, 5-12, 15-17, 19, 22, 27, 29-37 and 

39-53 


The claims of the parties not corresponding to Count 1 are: 

Benson's Patent No. 5,845,281 (Benson I): Claims 4, 13, 14, 20 and 21 
Ginter's Application 09/411,205: Claims 94, 103, 104, 110, 111, 123, 132, 133, 

139 and 140 

Beiison's Application 09/1 64,606 (Benson II): Claims 33, 42, 43, 47, 49, 50, 52-55, 57 aiid 67 
Benson's Application 09/321, 386 (Benson ID): Claims 4, 13, 14, 18, 20, 21, 23-26, 28 and 38 


Count 2 


Claim 4 of Benson's Application 09/321,386 (Benson HI) 


The claims of the parties corresponding to Count 2 are: 

Benson's Patent No. 5,845,281 (Benson I): Claims 4, 13 and 14 
Ginter's Application 09/4 1 1 ,205 : Claims 94, 1 03, 1 04, 1 23, 1 32 and 1 33 

Benson's Application 09/164,606 (Benson E): Claims 33, 42, 43, 47, 49, 50, 57 and 67 
Benson's Application 09/321, 386 (Benson HI): Claims 4, 13, 14, 18, 20, 21, 28 and 38 


The claims of the parties not corresponding to Count 2 are: 

Benson's Patent No. 5,845,281 (Benson I): Claims 1-3, 5-12 and 1 5-29 
Ginter's Application 09/411,205: Claims 91-93, 95-102, 105-122, 124-131 and 

134-148 

Benson's Application 09/1 64,606 (Benson II): Claims 30-32, 34-41 , 44-46', 48, 5 1 -56, 58-66, 

68 and 69 

Benson's Application 09/321, 386 (Benson HI): Claims 1-3, 5-12, 15-17, 19, 22-27, 29-37 and 

39-53 


Count 3 


Claim 23 of Benson's Application 09/321,386 (Benson EI) 


The claims of parties corresponding to Count 3 are: 


Benson's Patent No. 5,845,281 (Benson I): 
Ginter's Application 09/41 1,205: 
Benson's Application 09/164,606 (Benson II): 
Benson's Application 09/321,386 (Benson IH): 


Claims 20 and 21 
Claims 110, 111, 139 and 140 
Claims 52, 53 and 55 
Claims 23 and 24 


The claims of the parties not corresponding to Count 3 are: 

Benson's Patent No. 5,845,28 1 (Benson I): Claims 1-19 and 22-29 
Ginter's Application 09/41 1,205: Claims 91-109, 1 12-138 and 141-148 

Benson's Application 09/164,606 (Benson II): Claims 30-51, 54 and 56-69 
Benson's Application 09/321, 386 (Benson HI): Claims 1-22 and 25-53 


Part G. Heading to be used on papers 

The following heading shall be used on papers filed in the interference. See STANDING 
ORDER 113.5. 

Paper 

Filed on behalf of [name of party] 
By: Name of lead counsel 

Name of backup counsel 

Street address 

City, State, and Zip-Code 

Tel: 

Fax: 

UNITED STATES PATENT AND TRADEMARK OFFICE 


BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 
(Administrative Patent Judge Jameson Lee) 


GREG BENSON, GREGORY H. URICH 
and CHRISTOPHER L. KNAUFT, 
Jtmior Party, 
(Patent 5,845,281; Applications 09/164,606 
and 09/321,386), 


KARL L. GINTER, VICTOR H. SHEAR, 
FRANCES J. SPAHN and DAVID M. VAN WIE, 
Senior Party, 
(Application 09/4 1 1 ,205). 


Patent Interference No. 105,142 


TITLE OF PAPER 


Leave a blank line because the board assigns the paper number. 

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Part H. Summary of dates for taking action 

Times for taking action are set out in the following sections of the STANDING ORDER: 

^ 4: date for identifying lead and backup counsel. 

f 5: date for identifying any real party in interest. 

f 6: date for requesting copies of involved and benefit applications and 

patents. 

^ 7: date for accomplishing certain discovery. 

^ 8; date for filing clean copy of claims. 

f 9: date for filing clean copy of claims in cases with drawings or claims 
containing a means plus function limitation. 

^ 10: date for filing hst of proposed preliminary motions. 

% 13.10.2: dates for filing oppositions to Rule 635 miscellaneous motions and 
dates for filing replies to oppositions. 

f 14.1.1 : date for objecting to admissibility of evidence. 

^14.2: date for serving supplemental affidavits or evidence to respond to 
objection to admissibility of evidence. 

f 14.3: dates when cross-examination can take place. 

f 15.2: dates for taking action with respect to settlement discussions. 


Part I. Order form for requesting file copies 

FILE COPY REQUEST 
Interference 105,142 

A copy of Part E of this NOTICE DECLARING INTERFERENCE should be attached to 
this FILE COPY REQUEST, with a circle by hand around the patents and applications for which 
a copy of a file wrapper is desired. 

To facilitate processing of this FILE COPY REQUEST, the following information should 
be included: 

1 . Charge fees to USPTO Deposit Account No. 

2. Complete address, including street, city, state, ZIP code and telephone number (do 
not list a Post Office box because file copies are sent via commercial overnight 
courier). 


Telephone, including area code: 


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Part J. Signature of administrative patent judge 



Enc: 

Copy of STANDING ORDER 

Copy of order used for setting times for taking action in the preliminary motion 
phase of the interference 

Copy of order used for setting times for taking action in the testimony and 
briefing phases of the interference 

Copy of Patent No. 5,845,281 (Benson I) 

Copy of claims of Serial No. 09/4 1 1 ,205 

Copy of claims of Serial No. 09/164,606 (Benson 11) 

Copy of claims of Serial No. 09/321,386 (Benson III) 


Revised May 2003 


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cc (via Federal Express): 


Attorney for BENSON: 
Frank Nguyen 

MACROVISION CORPORATION 
2830 De La Cruz Boulevard 
Santa Clara, CA 95050 

Attorney for GINTER: 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP 
1301 I Street, N.W. 
Washington, D.C. 20005 


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