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WILLIAM L. ANTHONY (State Bar No. 106908) 
ERIC L. WESENBERG (State Bar No. 139696) 
HEIDI L. KEEFE (State Bar-No. 178960) 
BAS DE BLANK (Slate Bar No. J 93487) 
ORR1CK, HERRINGTON & SUTCLIFFE, LLP 
1000 Marsh Road 
Menlo Park, CA 94025 
Telephone: (650) 614-7400 
Facsimile: (650) 614-7401 

STEVEN ALEXANDER (admitted Pro Hoc Vice) 

JAMES E. GERINGER (admitted Pro Hoc Vice) 

JOHN D.. VANDENBERG 

KLARQUTST SPARKMAN, LLP 

One World Trade Center, Suite J 600 

121 S.W. Salmon Street 

Portland, OR 97204 

Telephone: (503) 226-739J 

Facsimile: (503) 228-9446 

Attorneys for Defendant and Counterclaimant, 
MICROSOFT CORPORATION 


UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF CALIFORNIA 
OAKLAND DIVISION 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 


Case No. C 01-1640 SB A (MET) 


Consolidated with C 02-0647 SBA (MEJ) 


Plaintiff, 


DEFENDANT MICROSOFT 
CORPORATION'S PRELIMINARY 
INVALIDITY CONTENTIONS 


v. 


MICROSOFT CORPORATION, a 
Washington corporation, 


(Patent Local Rules 3-3 and 3-4) 


DefendanL 


AND RELATED CROSS-ACTION. 


MlCROSOfTS PRELIMINARY INVALIDITY CONTENTIONS 
C0t-1640SBA(MEJ) 


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1. Patent Local Rule 3 3(a) Identification of Prior Art 

Pursuant to Patent Local Rule 3-3, Defendant Microsoft Corporation ("Microsoft") makes 
the following Preliminary Invalidity Contentions' with respect to the following patents asserted 
by plaintiff InterTrust Technologies Corporation ("InterTrust") in this action: U.S. Patent No. 
6,185,683 ("the '683 patent"); U.S.Patenl No. 6,253,193 ("the 193 patent"); U.S: Patent No. 
5,920,861 ("the '861 patent"); U.S. Patent No. 5,982,891 ("the 891 patent"); U.S. Patent No, 
5,917,912 ("the '912 patent")-, U.S. Patent No. 6,157,721 ("the '721 patent"); U.S. Patent No. 
5,915,019 ("the '019 patent"); U.S. Patent No. 5,949,876 ("the '876 patent"); U.S. Patent No." 
6,1 12,181 ("the '181 patent"); and U.S. Patent No. 6,389,402 ("the ^402 patent"). 

Despite the length of time this case has been pending, discovery is still at an early stage 
due to intervening stays. InterTrust continues to assert eleven patents and over one hundred and 
fifty claims. In view of these factors, Microsoft continues to evaluate the prior art at this time. 
Microsoft reserves the right to amend or supplement its Preliminary Invalidity Contentions to take 
into account prior art, information or defenses that might come to light as a result of its 
continuing discovery efforts, errors subsequently recognized by any of the parties, and as a result 
df further evaluation of the prior art. 2 In addition, Microsoft has moved to strike InterTrust's 
September 2, 2003 PLR 3-1 Preliminary Infringement Contentions as being insufficient. To the 
extent that the Court grants Microsoft's motion and orders InterTrust to amend/re-,serve its 3-1 
statement in compliance with the Local Rules, Microsoft reserves the right to amend or 
supplement its PLR 3-3 Preliminary Invalidity Contentions in response to any amended 
infringement contentions submitted by InterTrust. Microsoft further reserves the right to rely 

1 These Preliminary Invalidity Contentions incorporate by reference Microsoft's prior Preliminary 
Invalidity Contentions dated August 7 and 16, 2002. ■» ~ of 

- 2 For example. Microsoft reserves the right to amend/supplement this disclosure once InterTrust 
complies with discovery responses, which Microsoft contends are incomplete and inadequate. To 
date Microsoft has objected to InterTrust's continued refusal to provide mformauon sought in 
discovery including, but not limited to: the identity of the alleged inventors of specific claims; 
conception or actual reduction to practice dates for specific claims; whether to there has ever been 
any alleged cmbodimcnt(s) of the asserted claims; and what, if any, specification support is 
allied Including from any of the applications for which InterTrust claims priority. 
Each of these pieces of information could affect the. priority date for any given claim, expanding 
ornarrowmo the window of applicable prior an. Without this inlormation, which is within 
InterTrust' s "exclusive knowledge and control, Microsoft's PLR 3-3 Contenuons are subject to 
amendment and/or supplementation. 

, MICROSOFT'S PRELIMINARY INVAUt>rTY CONTENTIONS 

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upon InterTrust's own activities, alone and in connection with others. Microsoft further reserves 
the right to amend this statement or otherwise further respond if Intertrust contends (or the Court 
rules) mat any earlier or later priority dates may apply for individual claims. Microsoft also 
reserves its right to amend or supplement these invalidity contentions pursuant to Patent Local 
Rule 3-6 and 3-7. 

Attached hereto, as Appendix A, is a listing showing "the identity of each item of prior art 
that allegedly anticipates each asserted claim or renders it. obvious" (PLR 3-3(a)). On information 
and belief, each listed publication became prior art at least as early as the dates given. In 
addition, the citations and explanations provided in the exhibits are mere examples, and Microsoft 
reserves its right to rely on any other portions or aspects of the prior art references and systems 
that may also disclose or practice elements of the asserted claims. Patent Local Rule 3-3 docs not 
require identification of evidence that establishes the inherence of a claim element in an item of 
prior art, nor does it require identification of evidence that establishes knowledge of those of 
ordinary skill in the relevant fields of art Accordingly, Microsoft does not purport to have 
provided all such information in the attached exhibits. 

From InterTrust's current document production, it appears that its employees' and 
consultants' activities, including offers for sale, public uses, derivations, "inventions" (as the 
word is used in 35 U.S.C. § 102(g)), and disclosures to Willis Ware, Drew Dean, and others not 
under any dury of confidentiality, constituted or created material and perhaps anticipatory prior 
art to many of the asserted claims. This art was not cited to the Patent Office. Discovery is 
ongoing, and Microsoft reserves the right to amend or supplement this disclosure after Microsoft 
has had an opportunity to investigate this possible prior art during discovery. 
II. Patent Local Rule 3 3(b) and 3-3 (c) Classification and Analysis of Prior Art 

Microsoft contends that at least one term or phrase in each of the asserted claims is 
indefinite under 35 U.S.C. § 1 12, and hence, each of the asserted claims is incapable of 
construction. However, for the limited purpose of classification and analysis of prior art, 
Microsoft has construed the claim lerms in a manner consisieni with the apparent construction of 
terms offered by lnierTrusi in its Revised Preliminary Infringement Contentions. Microsoft does 


_ MICROSOFT' S PRELIMINARY INVALIDITY CONTENTIONS 

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not agree with these constructions, and nothi n g in these Preliminary Invalidity Contentions 
should be construed as an admission, a dec laration against interest whether under the 
Federal Rules of Evidence or otherwise, as to what a pa rticular claim limitation means. For 
this reason. Microsoft's identification of "co rresponding structures" for ^'means-plus- 
function" limitations that are set out in the Preliminary Invalidity Charts are riot 
admissions as to the identity of such structures. Rather, they are based upon Microsoft's best 
guess as to what InterTrust may someday identify as corresponding structures for the means-plus- 
function limitations of its asserted claims, to the extent thai Microsoft understands them. 3 

Accordingly, Microsoft's Preliminary Invalidity Contentions should not be construed as 
advocating a particular claim construction for any disputed claim terms. For the limited purpose 
of providing Preliminary Invalidity Contentions, and subject to the conditions set forth above, 
Microsoft has, to the extent possible, attempted to construe the claims in a manner consistent with 
InterTrust's Revised Preliminary Infringement Contentions. 

Pursuant to Patent Local Rules 3-3(b) and 3-3(c), Microsoft provides the classification of 
prior art in the listing and charts attached hereto as Appendices A and B. Appendix A, beyond 
identifying each item of prior art, further indicates whether each prior art reference is used as an 
anticipatory reference and/or as a reference which, alone, or in combination with other prior art, 
renders the claims obvious. Appendix B includes charts which (1) specifically identify where in 
each item of prior art each element of each asserted claim is found and (2) establish how that 
prior art anticipates or renders obvious all of the asserted claims. In the event that any charted 
prior art is found not to be anticipatory under 35 U.S.C. § 102, Microsoft reserves the right to rely 
upon that art to prove obviousness under 35 U.S.C. § 3 03. Likewise, in the event InterTrust 


3 To date InterTrust has refused to identify any structure corresponding to the means-plus- 
fS^dSSuin its asserted claims. It is Microsoft's position that thts is a v,olat3on of the 
S LocTRules, and that as a result of refusing to identify a structure assoc,a ed ^,th each 
means-plus-functior, element, InterTrust admits that there is no such structure disclosed has 
3,'. n»ht to assert claimed structure, and that those claims are therefore vnvahd at. least foi 
faS^iS aiiiv he wntien desenpuon reqmremem of 35 U.S.C. §112. See InterTrust s Paien- 
Sal Rule 3-1 served September 2, 2003 and InterTrust's Opposmon to Microsoft s Mouon to 
Strike InterTrust's PLR 3-1 Contentions. 


Microsoft's preliminary invalidity contentions 
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amends or supplements its Preliminary Infringement Contentions, Microsoft reserves its rights to 
amend and supplement its Preliminary Invalidity Contention's. 

To the extent thai any prior art produced to InterTrust has not been classified as prior art 
under 35 U.S.C. §§ J02 or 103, Microsoft reserves the right to rely on this ait or supplement its 
disclosure for the following reasons: • 

(i) Microsoft's position on the invalidity of particular claims will depend on how 
those claims are construed by the Court. As thus far only preliminary claim construction has 
occurred Microsoft cannot take a final position for the bases for invalidity of disputed claims: 
The Court's subsequent claim constructions of remaining terms may yield constructions different 
from what Microsoft assumes herein. • 

<ii) Microsoft is continuing lo diligently search for relevant prior art but has not yet 
completed that search and continues to evaluate prior art that has been located. 

(iii) Microsoft has not completed its discovery from Plaintiff or from third parties 
with knowledge of the relevant prior art. Depositions of the persons involved in the drafting and 
prosecution of the patents-in-suil, the inventors, and persons who attempted to practice 
InterTrust's claimed invention, for example, will likely affect Microsoft's contentions. 

A. Prior Art Under 35 U.S.C. § 102 Which Anticipates The Asserted Claims of 
Each of the Asserted Patents 

Subject to the above-referenced qualifications concerning the preliminary nature of this 
disclosure, Microsoft believes a reasonable basis exists that, as more particularly explained in the 
Preliminary Invalidity Contentions attached as Appendix B hereto, the references listed in 
Appendix B anticipate the asserted claims of the each of the asserted patents. 

B. Prior Art Under 35 U.S.C. § 103 Which Renders Obvious One or More of the 
Asserted Claims 

Each of the references called out in Appendix A can be combined with one another so as 
to render one or more of the claims of the asserted patents invalid as obvious, and many of them 
are explicitly motivated 10 do so by virtue of extensive cross-references to one another's 
solution:., buerl rusi is currently assen.m: 151 chums in eleven patents, which cite hundreds oi 
references. Hundreds of additional non-cited relevant prior art has been uncovered and cited to 

Microsoft's preliminary invalidity contentions 
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Intertrust. The number of potential combinations of these references, if only two or a few 
references are combined for each claim, is necessarily very large. Microsoft requests InterTrust 
to reduce its asserted claims so as to reduce the number of combinations to a manageable number. 
Nonetheless, Microsoft has provided mapping of combinations as discussed below. Indeed, even 
where explicit cross-referencing and incorporation by reference does not exist, the motivation to 
combine any of the references arises from the common objectives and subject matter, digital 
rights management. The common objectives and subject matter arc expressed generally in the 
claim charts of Appendix B, which arc incorporated by reference into Microsoft's showing under 
35U.S.C. §103. 

The motivation for seeking "security," privacy and integrity was widely recognized in the 
United States and elsewhere prior to February 1 3, 1 994, and since prior to February 1 3, J 994, has 
extended to any information or item of perceived value, including books, music, games, computer 
systems, other computer programs, and any digital data or content that maybe deemed valuable or 
worthy of protection. Additional motivations to combine references include the desire to meet or 
exceed any applicable Jaws or industry or government standards, such as the Orange Book, 
Computer Fraud and Abuse Act of 1986, Computer Security Act of 1989 PL100-35, High 
Performance Computing Act (HPCA) of 1991 (PL102-194), and 17 U.S.C. §§ 101 et seq. 
Industry standards include those for communication such as X.509, TCP/IP, WWW, and WA1S, 
and those for encryption or transmission of encrypted information, e.g. DES, Triple DES, RS A, 
SSL, MIME, S/M1ME, SHTTP, HTTPS, MD5, and PEM. Additional teachings to combine these 
references with such items of information include "security" (including "security" levels), 
permissions, certificates, tickets, "secure" processors, "secure" storage, "smart" cards (including 
smart cards able to store data and perform computations such as encryption/decryption), tamper 
resistance techniques for hardware and software, physical "security", and "trusted" time. Also 
included are authenucation and authorization in trusted distributed systems, enabling software or 
features thereof to run only on particular machines or in particular ways, and treating binary 
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. It was further obvious to combine any of these "security" features with any of the software 

or hardware available at the time. For example, it would have been obvious to combine any file 

and operating systems such as NT, NFS, Andrew, Netware, Mach, DT Mach, Multics, Amoeba, 

ISOS, and Unix; or protocols, codes and systems such as secure kernels, WWW, SSL, SGML, 

hyptertext, Oak, Telescript, OOP and other prograrnrhing technologies or frameworks (eg. 

Smalltalk, COM, OLE, Bento, OpenDoc; object oriented databases with watermarking; 

obfuscation; swIPe; SNMP; auditing; on-line (or other digitally transmitted) transaction and 

subscription-based services and billings; electronic payment; on-line banking, entertainment and 

commercial interactive commerce; ATMs; encryption and authentication; physical security tools 

and devices; physically secure locations; physically "secure" products such as tamper resistant 

computer or other devices, "secure" processors, "secure" memory, "smart" cards, set-top boxes, 

portable devices, "secure" communications facilities, electronic wallets. 4 

TEL Patent Local Rule 3-3(d) Disclosure: Invalidity For Failure to Satisfy 
35U.S.C.S112. 

Each of the asserted IntcrTrust patent claims is invalid as indefinite, for inadequate 
written description and for lack of enablement as those requirement are set forth by 35 U.S.C. § 
112. 5 In accordance with Patent L.R. 3-3(d), Microsoft identifies in Appendix C, attached 
hereto, exemplary bases, on an element by element basis, for invalidating each asserted claim of 
each asserted patent for indefiniteness and lack of an adequate written description. The asserted 
claims are unclear in scope and not nearly as precise as the subject matter allows. 

Appendix C contains examples of why the indefiniteness prohibited by 35 U.S.C. 
§ 112(2) arises from many causes, including: 

a) use of terms that lack an ordinary meaning in the art and are undefined in the 

specificaiion; 


4 These examples are not intended to be an exhaustive list and arc set forth for illustrative 

^K?sofi also assens thai one or more of the claims are invalid under 35 U.S.C. § 1 1 2(1 ) for 
failure to idenuiy the "best mode' 1 lor carrying out the mvenuon. However, pursuant to Pateni 
L.R. 3-3(d), Microsoft's arguments related to that defense are not required to be set forth m the 
attached charts, and hence are not included in Exhibit C. 


, Microsoft's preliminary (nvaijdity contentions 

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b) use of terms that are used in the specification in a manner which is internally 
inconsistent, as well as inconsistent with their ordinary meaning, but are not 
specifically defined in the specification; . • 

c) InterTrust's refusal to identify the structure in the application's written description 
linked to claim elements subject to 35 U.S.G. § 1 12, 56 ("means (or step) plus 
function); 

d) such excessive disclaimers of specificity of a term that the term becomes 
meaningless; 

inconsistent uses of a term within a single specification; 
inconsistent uses of a term between a specification and something allegedly 

incorporated into that specification; 
inconsistencies within the language of a given claim; 

inclusion of the same element twice in a claim, resulting in improper double 

inclusion of an element; 

impermissible reference to trademarks in a claim; 

inconsistent use of terms that may be synonyms for one another or that could be 
used to mean same thing or different things. 
The indefiniteness of the asserted claims is exacerbated by InterTrust's attempt to apply these 
claims to the very different structures and techniques of (or those that InterTrust wrongly 
attributes to) the Microsoft accused products. Microsoft reserves the right to modify this listing, 
e.g., if and when InterTrust clarifies its infringement contentions and claim construction 
positions. 

Appendix C also provides examples of the lack of an adequate written description 
supporting the asserted claims. For example, the asserted claims fail for lack of an adequate 
written description under.35 U.S.C. § 1 12(1) to the extent that they are construed to contradict 
and/or fail to require the essential, non-optional alleged attributes of the alleged "inventions" 
identified in ihe.r speciiicauons (and any speculation allegedly .ncorporaied by relercnccj and 
the applications from which the patents issued. The asserted claims also fail to comply with the 

_ MlCR0501 r T5 PRELIMINARY INVALIDITY CONTENTIONS 

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written description requirement as set forth in Gentry Gallery, lnc v. BerJdine Corp., 134 F.3d 
1473 (Fed. Cir 1998) to the extent that the scope of any of them exceeds the scope of the alleged 
"invention" as set forth in the accompanying specification (and any specification allegedly . 
incorporated therein). For example, in the specification of U.S. Patent No. 6,253,193 IntcrTrust 
slates that:. 

The present in vention assertedly provides a new kind of "virtual 
distribution environment" (called "VDE" in this document) that 
secures, administers, and audits electronic information use. VDE . 
also features fundamentally important capabilities for managing 
content that travels "across" the "information highway." These 
capabilities comprise a rights protection solution that serves all 
electronic community members. These members include content 
creators and distributors, financial service providers, end-users, and 
others. VDE is the first general purpose, configurable, transaction 
control/rights protection solution for users of coriiputers, other 
electronic appliances, networks, and the information highway. 

Accordingly any claims that rely on this specification must be limited in scope to the invention 
described therein. To the extent that they exceed the scope of what is described, they arc invalid 
under the written description requirement 

Microsoft further contends that each asserted claim, when viewed in its entirety, is 
invalid under 35 U.S.C. § 1 12(1) because the specifications of the patents fail to teach one of 
ordinary skill in the art how to practice the entirety of the broad scope of those claims without 
undue experimentation. 

For example, based on the specification, most if not all of the claims involve the 
use of software of one kind or another, yet the specification does not disclose any software 
programs that could be used or adapted for use in practicing the claimed inventions. In addition 
to failing to disclose any software program by explicit reference, the patent specifications does 
not describe with sufficient specificity the identity of software programs needed to practice the 
claimed invention that would prevent the need for undue experimentation by a person skilled in 
the art to practice the claimed inventions. The claims set forth a multiplicity of functions, 
features, and characteristics for the purported inventions, and the specifications are replete with 
reierences to sonware necessary to practicing the inventions, yet the specification neitnei 
identifies enabling software that satisfies such requirements, nor provides guidance that would 

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allow a person of ordinary skill in the art to program enabling software without undue 
experimentation. 6 . . 

As shown in Appendix C 7 , asserted claims contain terms that are subjeet to , 
multiple definitions, and the patent specifications do not disclose one or more of the alternate 
definitions. The full scope of the claim is therefore not despribed or taught in the specification. 
Any claim in Appendix C that contains a claim term subject to multiple definitions fails to teach 
the full scope of the claim and therefore fails the enablement requirement if the specification does 
not specify the operative definition lor the term. 

There are numerous other reasons that the unprecedented breadth of scope of the 
claims asserted by InterTrust are not enabled, including InterTnist's failure to implement the 
claims after substantial investment of time, labor, and money. Given the complexity of the 
asserted patents and their interdisciplinary subject matter, the state of the prior an, the absence of 
predictability of the prior art, the amount of experimentation necessary 10 practice the patents, the 
absence of embodiments, and the absence of guidance for practicing the invention provided in the 
specification 8 , the relative skill of those practicing the art and the breadth of the claims, the 
asserted claims fail to roeelihe enablement requirement of 35 U.S.C. § 112 5 1. 

The full claims of the asserted patents fail to satisfy the enablement and written 
description requirements for the following reasons: 

The '683 Patent 

Claim 2: Claim 2 of the '683 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 


6 In its discoverv responses, InterTrust refuses to identify software programs necessary for 
practicing the inventions purportedly disclosed in the asserted patents. See InterTrust responses to 
Microsoft Interrogatory Nos. 39 and 40. , c 

7 See Appendix C for further element by element analysis of invalidity for failure to satisfy 35 
USC § 1121 1. The indefiniteness of the claim terms addressed in Exhibit C affect enablement 
because the indefiniteness of the claim terms prevents the specification from adequately teaching 
a person of skill in the an how to make and use ihe full scope- of the claimed inventions without 
undue experimentation. . 

8 The failure of the specifications to provide necessary guidance also establishes that the claims 
fail to meet the written description requirement of 35 U.S.C. § 11211. 

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software and operation of such software on accompanying hardware. Specifically, limitations in 
CJairo 2 (63:40-66), both explicitly and implicitly require software. Since no software is 
disclosed in the specification, and since the specification provides no useful programming 
guidance, a person of skill in the art would have to engage a process of trial and error, perhaps 
followed by bottom up software development, in order to make and use the full scope of Claim 2. 
Claim 2 also fails the enablement requirement in light of the breadth of the subject matter 
clajmed (e.g. "security", "secure container," "containing"). The specification does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. For these reasons and for the reasons .stated 
above with respect to all of the claims, Claim 2 fails the enablement and written description 
requirements of 35 U.S.C. § 1 12 5 1. 

Claim 3: Claim 3 of the '683 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 3 (64:6-30), both explicitly and implicitly require software. Since ho 
software is disclosed in the specification, and insufficient programming guidance (if any) is 
provided by the specification, a person of skill in the art would have to engage a process of trial 
and error, perhaps followed by bottom up software development, in order to make and use the full 
scope of Claim 3. Claim 3 also fails the enablement requirement in light of the breadth of the 
subject matter claimed (e.g. "security", "secure container," "rule"). The specification does not 
teach a person of ordinary skill in the art how to practice the full scope of the claim, and a person 
of skill in the art would therefore be required to undertake undue experimentation in order to 
make and use the invention across the full scope claimed. For these reasons and for the reasons 
staled above with respect to all of the claims, Claim 3 fails the enablement and written description 
requirement of 35 L'.S.C. § 1 12 <fi ] . 

Claim 4: Claim 4 is dependent upon Claim 3 and thus fails the enablement and 

microsoft's preliminary invalidity contentions 

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written description requirements of 35 U.S.C. § 1 J 2 1 for the reasons staled above. In addition, 
the limitation of Claim 4 fails because it requires additional undisclosed software. 

Claim 5: Claim 5 of the '683 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the devel6p'mcnt of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 5 (64:41-66), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the art would have to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 5. Claim 5 
also fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"security", "secure container," "governed iiem"). The specification does not leach a person of 
ordinary skill in the an how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. For these reasons and for the reasons staled above with 
respect lo all of the claims, Claim 5 fails the enablement and written description requirements of 
35 U.S.C. §11211. 

Claim 6: Claim 6 is dependent upon Claim 5 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 5 1 for the reasons stated above. In addition, 
the limitation of Claim 6 fails because it requires additional undisclosed software.. 

Claim 28: Claim 28 of the '683 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
-software and operation of such software orr accompanying hardware. Specifically, several 
limitations in Claim 28 (70:20-59), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in trie an would have to engage a process ol trial and error, perhaps followed by 
bottom up software, development, in order to make arid use the full scope of Claim 28. Claim 28 

MICROSOFT'S PRELIMINARY INVAUDrTY CONTENTIONS 
C01 : I640SBA(ME)) 


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also fails the enablement requirement in light of \hk breadth of the subject matter claimed (e.g. 
"security," "electronic intermediary," "being associated with ., ."). The specification does not 
teach a person of ordinary skill in the art how to practice the full scope of the claim, and a person 
of skill in the art would therefore be required to undertake undue experimentation in order to 
make and use the invention across the full scope claimed. For these reasons and for the reasons 
stated above with respect to all of the claims, Claim 28 fails the enablement and written 
description requirements of 35 U.S.C. § 1 12 f 1 . 

Claim 29: Claim 29 is dependent upon Claim 28 and fails the enablement and 
written description requirements of 35 U.S.C. § 11211 for the reasons stated above. In addition, 
the limitation of Claim 29 fails because it requires additional undisclosed software. Claim 29 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"operatively connected"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed 

Claim 56: Claim 56 of the '683 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 56 (77:34-56), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the an would have to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 56. Claim 56 
also fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"security," "secure container," "secure electronic container"). The specificauon does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
,n the an would therefore be requ.rcd 10 undenake undue expenmeniauor. jn oroer to make and 
use the invention across the full scope claimed. For these reasons and for the reasons stated 

MICROSOFT'S PRELIMINARY IfA'AUDrn' CONTENTIONS 
- 12 ~ C 01-1640 SBA (N1EJ) 


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) 


above with respect to all of the claims. Claim 56 fails the enablement and written description 
requirements of 35 U.S.C § 11211. 

Claim 126: Claim 126 of the '683 patent fails the enablement requirement 
because the specification does not teach a person of ordinary skill in the relevant arts how to 
practice the purportedly disclosed invention without undue cxperimentation.in the development of 
enabling software and operation of such software on accompanying hardware. Specifically, 
several limitations in Claim 126 (82:50-83:7), both explicitly and implicitly require software. 
Since no software is disclosed in the specification, and no meaningful programming guidance is 
provided, a person of skill in the an would have to engage a process of trial and error, perhaps 
followed by bottom up software development, in order to make and use the full scope of Claim 
126. Claim 126 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "security " "secure digital container," "trusted intermediary services"). The 
specification does not leach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. For these 
reasons and for the reasons stated above; with respect to all of the claims, Claim 126 fails the 
enablement and written description requirements of 35 U.S.C. §11211. 

Claim 127: Claim 127 is dependent upon Claim 126 and thus fails the enablement 
and written description requirements of 35 U.S.C § 1121 1 for the reasons stated above. Li 
addition, the limitation of Claim 127 fails because it requires additional undisclosed software. 
Claim 127 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "at least in pan identifies")- The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed 

The '193 Patent 

Claim 1 Claim 1 of the *] 93 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 

,o MICROSOFT'S PRELIMINARY INVALIDITY CONTKNTJONS 

" : *3 ' COl-K»40SBA(MEJ) 


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purportedly disclosed invention without undue experimentation in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 1. (320:62-321:1 8), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the art would have to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 1. Claim 1 
also fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"budget control," "secure database," "copy control"). The specification does not teach a person : 
of ordinary skill in the art how lo practice the full scope of the claim, and a person of skill- in the 
art would therefore be required to undertake undue experimentation in order to make -and use the 
invention across the full scope claimed. For these reasons and for the reasons stated above with 
respect to all of the claims, Claim I fails the enablement and written description requirements of 

35 U.S.C. §11211. 

Claim 2: Claim 2 is dependent upon Claim 1 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1121 1 for the reasons stated above. In addition, 
the limitation of Claim 2 fails because it requires additional undisclosed software. Claim 127 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "a time 
substantially contemporaneous"). The specification does hot teach a person of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skill in the art would therefore 
be required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed 

Claim 3: Claim 3 is dependent upon Claim 2 and thus fails the enablement and 
written description requirements of 35 U.S.C § 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 3 fails because it requires additional undisclosed software. Claim 3 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"encumbrance on said budget"). The specification does not teach a person of ordinary skill in the 
an how to practice the full scope of the claim, and a person of skili in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 

MICROSOFT'S PRELIMINARY INVALIDITY CONTENTIONS 
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full scope claimed. 

Claim 4: Claim 4 is dependent upon Claim 3 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons staled above. In addition, 
the limitation of Claim 4 fails because it requires additional undisclosed software. Claim 4 also 
fails the enablement requirement in light of the breadth of the subject matter, claimed (e.g. "digital 
file authorized by said budget"). The specification does not teach a person of ordinary skill in the 
an. how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 11: Claim 1 J of the '193 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 1 1 (322:22-45), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful prograrroning guidance is provided, 
a person of skill in the art would have to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 1 1. Claim 1 1 
also fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"security," "secure memory," "features"). The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the fuU scope claimed. For these reasons and for the.reasons stated above with respect to 
all of the claims, Claim 11 fails the enablement and written description requirements of 35 U.S.C. 
§11211. 

Claim 15: Claim 15 of the '193 patent fails the enablement. requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention withoui undue expenmeniauor, in the development of enabl.ng 
software and operation of such software on accompanying hardware. Specifically, several 

Microsoft's preliminary invalidity contentions 
-15- ' C0M640SBA(MEJ) 


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limitations in Claim 15 (323:15-41), both expliciUy 'and implicitly require software. Since no 
software is. disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the art would have. to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 15. Claim 15 
also fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"security," "secure database"). The specification does not teach a person of ordinary skill in the 
art how to practice the full scope of the claim, and a person of skill in the art.would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. For these reasons and for the reasons stated above with respect to all of the 
claims, Claim 1 5 fails the enablement and written description requirements of 35 U.S,C. § 1 12 

1 1- 

Claim 16: Claim 16 is dependent upon Claim 15 and thus fails the enablement 
and written description requirements of 35 U.S.C § 1121 1 for the reasons stated above. In 
addition, the limitation of Claim 16 fails because it requires additional undisclosed software. 
-Claim 16 also fails the enablement requirement in , light of the breadth of the subject matter 
claimed (e.g. "authentication step"). The specificauon does not teach a person of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skill in the art would therefore 
be required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed 

Claim 19: Claim 19 of the ' 193 patent fails the enablement requirement because 
the specificauon does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 19 (324:9-37), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the art would have to engage a process of trial and error, perhaps followed by 
bouom up software development, in order to make ana use me full scope of Claim 19. Cia.m 19 
also fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 

s microsoft's i*kejjmikary invalidity contention*; 

-16- C 01-1640 SHA(MEJ) 


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"clearinghouse"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed- For these reasons and for the reasons stated above with respect to all of the claims^ 
Claim 1 9 fails the enablement and written description requirements of 35 U.S.C. § H 2 <fl 1 . 

ClaimSl: Claim 51 of the '193 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation- in the development of enabling 
software and operation of such software on accompanying hardware. Specifically, several 
limitations in Claim 51 (326:51-327:12), both explicitly and implicitly require software. Since no 
software is disclosed in the specification, and no meaningful programming guidance is provided, 
a person of skill in the art would have to engage a process of trial and error, perhaps followed by 
bottom up software development, in order to make and use the full scope of Claim 51. Claim 51 
also fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"security," "clearinghouse," "location remote from"). The specification does not teach a person 
of ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the 
art would therefore be required to undertake undue experimentation in order to make and use the. 
invention across the full scope claimed. For these reasons and for the reasons stated above with 
respect to all of the claims, Claim 51 fails the enablement and written description requirements of 

35TJ.S.C.§ 112U. 

The '861 Patent 

Claim 34: Claim 34 of the '861 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 34 (24:65-25:15), both explicitly and 
implicitly require software. Since no software is disclosed.in the specification, and no 
mcanmpfui proyrammm? euidance. is provided a person of skill in the an would have ,o engage * 
process of trial and error, perhaps followed by bottom up software development, in order to make 


MICROSOFT S PRELIMINARY INVALIDITY COhTIT^TIONS 
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and use the full scope of Claim 34. Claim 34 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "descriptive data structure," "element information," 
"metadata rules"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 34 fails the enablement and written description requirements of 35 U.S.C. § 11211. 

Claim 35: Claim 35 is dependent on Claim 34 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 f 1 for the reasons stated above. In addition, 
the limitation of Claim 35 fails because it requires additional undisclosed software. Claim 35 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "rights 
management data structure"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 36: Claim 36 is dependent on Claim 35 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 f 1 for the reasons stated above. In addition, 
the limitation of Claim 36 fails because it requires additional undisclosed software. Claim 36 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"content," "rules at least in part governing . . ."). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 37: Claim 37 is dependent on Claim 36 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 37 fails because it requires additional undisclosed software. Claim 37 also 
fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"descriptive data structure is stored within said first secure container"). The specification does 

0 microsoft's preliminar"y iNVAijnrry contentions 

-lb- COMMOSBA(MEJ) 


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not teach a person of ordinary skill in the art how to practice the full scope of the claim, and a 
person of skill in the art would therefore be required to undertake undue experimentation in order 
to make arid use the invention across the full scope claimed. 

Claim 44: Claim 44 is dependent on Claim 34 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12.1 1 for the reasons stated above. In addition, 
the limitation or Claim 44 fails because it requires additional undisclosed software. Claim 44 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"representation of the format of data . . .")■ The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 45: Claim 45 is dependent on Claim 44 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 45 fails because it requires additional undisclosed software. Claim 45 also 
fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"information regarding elements . . ."). The specification does not teach a person of ordinary skill 
in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 46: Claim 46 is dependent on Claim 44 and thus fails the enablement and 
written description requirements of 35 U.S.C. * 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 46 fails because it requires additional undisclosed software. Claim 46 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. J'target 
data block"). The specificauon does not teach a person of ordinary skill in the art how to practice 
the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. 

Claim 47: Claim 47 is dependent on Claim 46 and thus fails the enablement and 

MICROSOFT'S riUEUMlNAkY IKVAJJ1MTV CONTENTIONS 
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written description requirements of 35 U.S.C. § 112 f 1 for the reasons stated above. - In addition/ 
the limitation of Claim 47 fails because it requires additional undisclosed software. Claim 47 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (eg. "target 
data block," "target environment"). The specification does not teach a person; of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skill in the art would therefore 
be required to undertake undue experimentation in order to make and use-the invention across the 
full scope claimed. 

Claim 48: Claim 48 is dependent on Claim 46 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1121 1 for the reasons staled above. In addition, 
the limitation of Claim 48 fails because it requires additional undisclosed software. Claim 48 also 
fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"source," "source message field"). The specification does not teach a person of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skill in the art would therefore 
be required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 58: Claim 34 of die '861 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 34 (24:65-25:15), both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of trial and error, perhaps followed by bottom up software development, in order to make 
and use the full scope of Claim 34. Claim 34 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e. £ . "metadata information," "generating or identifying at 
least one rule . . "). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required 10 
undertake undue experimentation in OTder io make, and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 

0 . MICROSOFT'S PRELIMINARY INVALIDITY CONTENTIONS 

- J\) - COl-lWOSBA(MEJ) 


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Claim 34 fails the enablement and written description requirements of 35 U.S. C. §11251. 

Claim 64: Claim 64 is dependent on Claim 58 and thus fails the enablement and 
written description requirements of 35 U.S.G § 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 64 fails because it requires additional undisclosed software. Claim 64 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"creation of said first secure container")* The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and. a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. 

Claim 67: Claim 67 is dependent on Claim 64 and thus fails the enablement and 
written description requirements of 35 U.S.C. §11211 for the reasons stated above. In addition, 
the limitation of Claim 67 fails because il requires additional undisclosed software. Claim 67 also 
fails the enablement requirement in light of the breadth of the subject matter claimed. The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. 

Claim 68: Claim 68 is dependent on Claim 67 and thus fails the enablement and 
written description requirements of 35 U.S.C. §11211 for the reasons stated above. In addition, 
the limitation of Claim 68 fails because it requires additional undisclosed software. Claim 68 also 
fails the enablement requirement in light of the breadth of the subject matter claimed. The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the an would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. 

Clairo.7l: Claim 71 is dependent on Claim 58 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 112? 1 for the reasons stated above. In addition, 
the limitation of Claim 71 fails because il requires additional undisclosed software. Claim 71 also 
fails me enabiemeni requirement m hghi ol tne oreadtb of tne subject matter claimed. The 
specification does not leach a person of ordinary skill in the art how to practice the full scope of 

01 Microsoft's i^keumfnaky invalidity contentions 

- ^-l ~ C 01-1640 SB A (MEJJ 


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the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. 

Claim 72: Claim.72 depends to Claim 58 and fails the enablement and written 
description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above.- In addition, the 
limitation of Claim 72 fails because it requires additional undisclosed software. 

The '891 Patent 

Claim 1: Claim 1 of the '891 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the • 
purportedly disclosed invention without undue experimentauon in the development of enabling 
software. Specifically, several limitations in Claim 1 (318:59-319:8), both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of trial and error, perhaps followed by bottom up software development, in order to make 
and use the full scope of Claim 1. Claim 1 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "securely receiving," "secure operating environment," 
"control"). The specification does not teach a person of ordinary skill in the art how to practice 
the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 1 fails the enablement and written description requirements of 35 U.S.C. § 1 12? 1. 

Claim 22: Claim 22 of the '891 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 22 (320:15-31) both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bonom up sol t ware development, m order to make and use 
the full scope of Claim 22. Claim 22 also fails the enablement requirement in light of the breadth 

MICROSOFT S PRELIM JNAR Y INVALIDITY CONTENTIONS 
- 22 - C 01-1640 SUA (MEJ) 


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of the subject matter claimed (e.g. "securely combining," "control arrangement," "securely 
requiring"). The specification does not teach a person of ordinary skill in. the art how to practice 
the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 22 fails the enablement and written description. requirements of 35 U.S.C. § 1 12 1 1 .. 

Claim 23: Claim 23 is dependent on Claim 34 and thus fails the enablement and 
written description requirements of 35 U.S.C § 1 121 1 for the reasons stated above. In addition, 
the limitation of Claim 23 fails because it requires additional undisclosed software. 

Claim 26: Claim 26 of the * 89 1 patent fails the enablement requirement because 
the specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling . 
software. Specifically, several limitations in Claim 26 (320:40-55) both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 26. Claim 26 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "composite data item," securely providing,"). The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order lb make and use the invention across the full scope claimed. For these 
reasons and for the reasons stated above wilh respect to all of the claims, Claim 26 fails the 
enablement and written description requirements of 35 U.S.C. § 1 1 2 1 1 . 

Claim 27: Claim 27 is dependent on Claim 26 and thus fails the enablement and , 
written description requirements of 35 U.S.C. §112^1 for the reasons stated above. In addition, 
the limitation of Claim 27 fails because it requires additional undisclosed software. Claim 27 also 
fails the enablement requirement in listhi of the breadth of the subicci matter claimed [e.f. 
"combining step"). The specification does not teach a person of ordinary skill in the art how to 

MICROSOFT'S PRELIM IN AR Y INVALIDITY CONTENTIONS 
- 15 - C 01-1040 SBA (ME)) 


1 

2 

3 

4 

5 

6 

7 

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14 

15 

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19 

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25 

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27 

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practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 

claimed. '. 

Claim 28: Claim 28 is dependent on Claim 26 and thus fails the enablement and 

written description requirements of 35 U.S.C. § 1 12 * 1 for the reasons stated above. In addition, 
the limitation of Claim 28 fails because it requires additional undisclosed software. Claim 28 also 
fails the enablement requirement in light of the breadth of the subject matter claimed 
"composite"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would thercfore.be required to 
undertake undue experimentation in order to make and use thrinvention across the full scope 
claimed. 

Claim 29: Claim 29 is dependent on Claim 26 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 11-211 for the reasons stated above. In addition, 
the limitation of Claim 29 fails because it requires additional undisclosed software. Claim 29 also 
fails the enablement requirement in light of the breadth of the subject matter claimed {e.g. 
"ensuring the integrity of said association . . "). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 

invention across the full scope claimed. 

Claim 31: Claim 31 is dependent on Claim 26 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 1 2 U for the reasons slated above. In addition, 
the limitation of Claim 31 fails because ii requires additional undisclosed software. Claim 31 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
."codelivering"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. 

Claim 35: Claim 35 of the '891 patent fails the enablement requirement because 

MICROSOFT'S PRELIMINARY INVALIDITY CONTENTIONS 
-24- C 01-1640 SBA(MEJ) 


1 

2 
3 
4 
5 
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7 
8 
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14 
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) 


) 


the specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 35 (321:29-41), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have t Q engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 35. Claim 35 also fails the enablement requirement in light or the breadth 
of the subject matter claimed (e.g. "secure operating environment")- The specification does not 
teach a person of ordinary skill in the art how to practice the full scope of the claim, and a person 
of skill in the art would therefore be required to undertake undue experimentation in ordw to 
make and use the invention across the full scope claimed. For these reasons and for the reasons 
stated above with respect to all of the claims, Claim 35 fails the enablement and written 
description requirements of 35 U.S.C. § 1121 1. 

Claim 36: Claim 36 of the '891 patent fails the enablement requirement because 
the specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 36 (321:44-57), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 36. Claim 36 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "secure operating environment system," "operatively 
connected," "logically associated with"). The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. For these reasons and for the reasons slated above with respect to 
all- of the claims. Claim 36 fails the- enablement and written description requirements of 35 U.S.C 
§11211. 

~ - MlCROSOPr" S PRELIMINARY INVALIDITY CXJNTEKTIOKS 

-25' C 01-1640 SBA(MEJ) 


1 

2 
3 
A 
5 
6 
7 
8 
9 
10 

n 

12 
13 
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15 
16 
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18 
19 
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21 
22 
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24 
25 
26 
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Claim 39: Claim 39 is dependent on Ciaim 22 and thus fails the enablement and 
written description requirements of 35 U.S.C. § ; 1 12 1 1 for the reasons stated above. In addition, 
the limitation of Claim 39 fails.because it requires additional undisclosed software. Claim 39 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"persistently associating," "control arrangement"). The specification does not leach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person Of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 

invention across the full scope claimed; 

Claim 40: Claim 40 is dependent upon Claim 26 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112? 1 for the reasons. stated above. In 
addition, the limitation of Claim 40 fails because it requires additional undisclosed software. 
Claim 40 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e g. "control arrangement"). The specification does not teach a person of ordinary skill 
in the art how \to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 51: Claim 51 is dependent upon Claim 1 and thus fails the enablement and 
written description requirements of 35 U.S.C. ft 1121 1 for the reasons stated above. In addition, 
the limitation of Claim 51 fails because it requires additional undisclosed software. Claim 51 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "end 
user electronic appliance," "secure processing step"). The specification does not teach a person 
of ordinary skill in the art bow to practice the full scope of the claim, and a person of skill in the 
art would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 53: Claim 53 is dependent upon Claim 22 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 121 1 for the reasons stated above. In 
addition, the limitation of Claim 53 fails because, it regimes additional undisclosed software. 
Claim 53 also fails the enablement requirement in light of the breadth of the subject matter 


MICROSOFT* 1'KEUMJNARY IKVA1JDTTY CONTENTION 
26 - C01-1640SDA(M£J) 


) 


1 

2 

.3 


claimed (e.g. "end user electronic appliance"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 

4 invention across the full scope claimed. 

5 claim 54: Claim 54 is dependent upon Claim 26 and thus fai)s the enablement 
and written description requirements of 35 U.S.C. § 1 12 i 1 for the reasons stated above. In 

7 addiuon, the limitation of Claim 54 fails because it requires additional undisclosed software. 
Claim 54 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g.. "end user electronic appliance"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the an 
would therefore be required to undertake undue experimentation in order to make and use the 

12 invention across the full scope claimed. 

13 Claim 56: Claim 56 is dependent upon Claim 35 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 fi for the reasons stated above. In 
addition, the limitation of Claim 56 fails because it requires additional undisclosed software. 
Claim 56 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "end user electronic appliance"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required lo undertake undue experimentation in order Jo make and use the 

invention across the full scope claimed. 

Claim 57: Claim 57 is dependent upon Claim 36 and thus fails the enablement 
and written description requirernems of 35 US.C § 1 1 2 1 1 for the reasons staled above. In 
addition, the limitation of Claim 57 fails because itrequires addiuonal undisclosed software. 
Claim 57 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "end user electronic appKance," "protected processing environment"). The 
specification does not teach * person of ordinary skill in the art how to practice the full scope of 
the claim, and :« person of skill in the an would therefore he. required to undertake undue 
^pcrimentaiion in order to make and use the invention across the full scope claimed. 

MICKOWTS PRELIMINARY INVALIDITY CONTENTION'S 

-27- C0l-)640SBA(MEn 


6 


8 
9 
10 
11 


14 

15 
16 
17 
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21 
.22 
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2 

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4 
5 
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,\ ™« Claim 1 and thus fails the enablement and 
Claims* ClaimSSisdependentuponClatml 

f « U S C § 112 1 1 for the reasons stated above. 
wri ttendes,ription re quirementsof35U : S. ^ ^ Claim 58also 

• • nfdaim^failsbecauseitrequnesaddiuonaiun 
th e limaauon of Clam ^ ^ ^ ^ clairted <* g . 

fails the enablement requirement mh. . ford - nary skill in the arlhowto 

«,ntityscon*o^ 

pra ctice»efull scopeof Reclaim, andaperson ^ ^ „ teflfll ^ 
— eundue-perimentat ion in order to malce and use ^e 

claimed. ' rwim 22 and thus fails the enablement 

„ addiuon,theli"^°"° fC,a,roM ,. liehlofte b re ad*of*e S ubj=«n.a ll er 

13 claimed (e.*. "supply control ) P ^ ^ ^ ^ 

I .-^.k.. full scope of the claim, and a person u» 

;;r^:^:— i.— — — 

across the full scope claimed. ^ on n^im 26 and thus fails the enablement 

addition, the tantaflon ° f a <™ ^ of te £ubj ect matter 

21 I claimed, "P-idin^ ^^ iCCaU0 " te nlnintbeanwo^^o^ 

I ^„,w undue expetimentauon reorder to maKe 

23 I required to undenaV ™" f ■ ■ . 

24 J mi scope claimed. , , im „ claim 35 and thus fails the enablement 
Claim 03: Claim 63 is dependent upon Claim « 

251 f«,ISC U 12111 for the reasons staled above, ta 

datm 63 also fads *ee .-^«--»-"?K3S 


2 
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claimed (e.g. "securely receiving"). The specification does not teach a person of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skill in the art would therefore 
be required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed 

Claim 64: Claim 64 is dependent upon Claim 36 and thus fajls the enablement 
and written description requirements of 35 U.S.C § 112 1 1 for the reasons stated above. In 
addition, the limitation of Claim 64 fails because it requires additional undisclosed software. 
Claim 64 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "controls"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the an would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 65: Claim 65 is dependent upon Claim 1 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 112 % 1 for the reasons stated above. In addition, 
the limitation of Claim 65 fails because it requires additional undisclosed software. Clain? 65 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "secure 
processing environment"). The specification does not leach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 67: Claim 67 is dependent upon Claim 22 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 $ 1 for the reasons staled above. In 
addition, the limitation of Claim 67 fails because it requires additional undisclosed software. 
Claim 67 also fails the enablcmenl requirement in light of the breadth of the subject matter 
claimed (e.g. "secure processing environment"). The specification does not teach a person of 
ordinary skill in the art how 10 practice the full scope of the claim, and a person of skill in the art 
would ihcrefore be required io undenake undue experimeniaiion in order to- make and use the 
invention across the full scope claimed. 

ft Microsoft s preliminary invalidity contentions 

- " C0)-1640SBA(MEJ) 


i 


10 
11 


13 
14 


Claim 68: Claim 68 is dependent upon Claim 26 and thus fails the enablement 

2 and written description requirements of 35 U.S.C. § 112 <I 1 for the reasons stated above. In. 

3 addition, the limitation of Claim 68 fails because il requires additional undisclosed software. 

4 Claim 68 4 also fails the enablement requirement in light of the breadth of the subject matter 

5 claimed (e.g. "secure processing environment"). The specification does not teach a person of 

6 ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 

7 would therefore be required to undertake undue experimentation in order to make and use the 

8 invention across the full scope claimed. 

9 Claim 70: Claim 70 is dependent upon Claim 35 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1.12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 70 fails because it requires additional undisclosed software. 

12 Claim 70 also fails the enablement requirement in light of the breadth of the subject matter 
claimed {.eg. "secure processing environment," "securely processing," "securely executing"). 
The specification does not teach a person of ordinary skill in the art how to practice the full scope 

15 J of the claim, and a person of skill in the art would therefore be required to undertake undue 

16 experimentation in order to make and use the invention across the full scope claimed. 
Claim 71: Claim 71 is dependent upon Claim 1 and thus fails the enablement and 

written description requirements of 35 U.S.C. § 1 12 \ 1 for the reasons stated above. In addition, 
the limitation of Claim 71 fails because it requires additionalundisclosed software. Claim 71 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"securely combining," "control arrangement")^ The specification does not teach a person of 
ordinary skill in the art.how to practice the full scope of the claim, and a person or skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 

invention across the full scope claimed. 

Claim 74: Claim 74 is dependent upon Claim 35 and thus fails the enablement 
and written description requirement, of 35 U.S.C. § 1 1 2 1 1 for the reasons stated above. In 
addition, the limitation of Claim 1A fails because n requites additional und.sciosed software. 
Claim 74 also fails the enablement requirement in light of the breadth of the subject matter 

Microsoft's preliminary invalidity contentions 

-30- C 01-1640 SBA(MEJ) 


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claimed (e.g. "securely combining " "combined executable"). The specification does not teach a 
person of ordinary skill in the art how to practice, the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. 

Claim 75: Claim 75 is dependent upon Claim 36 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 1 for the reasons stated above. In 
addition, the limitation of Claim 75 fails because it requires additional undisclosed software, 
Claim 75 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "combined control arrangement"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 76: Claim 76 is dependent upon Claim 1 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 112 1 J for the reasons stated above. In addition, 
the limitation of Claim 76 fails because it requires additional undisclosed software. Claim 76 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 
"securely receiving steps " "independently performed at different tiroes"). .The specification does 
not teach a person of ordinary skill in the art how to practice the full scope of the claim, and a 
person of skill in the art would therefore be required to undertake undue experimentation in order 
to make and use the invention across the full scope claimed. 

Claim 79! Claim 79 is dependent upon Claim 26 and thus fails the enablement 
and written description requirements of 35 U.S.C § 1 12 % 1 for the reasons staled above. In 
addition, the limitation of Claim 79 fails because it requires additional undisclosed software. 

Claim 81: Claim 81 is dependent upon Claim 35 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 J 1 for the reasons stated above. In 
addition, the limitation of Claim 81 fails because it requires additional undisclosed software. 
Claim 8 J ajso Jails the enabjement requirement in light of the breadth of the subject matter 
claimed (e.g. "securely receiving steps"). The specification does not teach a person of ordinary 

oi Microsoft s preliminary invalidity contentions 

" • ' C 01*1640 SB A (MEJ) 


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2 
3 
4 
5 
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7 
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skill in the ait how to practice the full scope of theciaim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. . '• 

Claim 82: Claim 82 is dependent upon Claim 36 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 1 1. for the reasons stated above. In 
addition, the limitation of Claim 82 fails because it requires additional undisclosed software. 
Claim 82 also fails the, enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "controls"). The specification docs not teach a person of ordinary skill in the art ; 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 84: Claim 84 is dependent upon Claim 1 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 % I for the reasons stated above. In addition, 
the limitation of Claim 84 fails because ii requires additional undisclosed software. Claim 84 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (eg. 
"first/second entity's control")- The specification does not teach a person of ordinary skill in the 
art how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 86: Claim 86 is dependent upon Claim 26 and thus fails the enablement 
and written description requirements of 35 U.S.C. §11211 for the reasons slated above. In 
addition, the limiiauon of Claim 86 fails because it requires additional undisclosed software. 
Claim 86 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (eg- "control"). The specification does not teach a person of ordinary skill in the art how 
io practice the full scope of the claim, and a person of skill in the art would therefore be required 
,o undertake undue experimentauon in order io make and use the invention across the full scope 
ciaimed. 

Claim 88: Claim 88 is dependent upon Claim 36 and thus fails the enablement 

„ . MOlOSOFT*S PRELIMINARY INVALIDITY CONTENTIONS 

-32- C0)-1640SBA(MEI) 


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3 
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5 
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7 

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and written description requirements of 35 U.S.C. § .' 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 88 fails because it requires additional undisclosed software. 
Claim 88 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "control"). The specification does not teach a person of ordinary skill in the ah how 
to practice the full scope of the claim, and a person of skill in the art would therefore be required 
to undertake undue experimentation in order to make and use the invention across the full scope 

claimed. . • 

Claim 89: Claim 89 is dependent upon Claim 1 and thus fails the enablement and . 
written description requirements of 35 U.S:C. § 1 12 i .1 for the reasons stated above. In addition, 
the limitation of Claim 89 fails because it requires additional undisclosed software. Claim 89 also ' 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.j». 
"control," "protected processing environment"). The specification does not teach a person of 
ordinary skill in the art how to pracuce the fuli scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 91: Claim 91 is dependent upon Claim 22 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1121 1 for the reasons stated above. In 
addition, the limitation of Claim 91 fails because it requires additional undisclosed software. 
Claim 91 also fails the enablement requirement in light of the breadth of the subject matter 
claimed. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of the claim, and a person of skill in the art would therefore be required to undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 94: Claim 94 is dependent upon Claim 35 and thus fails the enablement 
and written description requirements of 35 U.S. C. § 112% 1 *<* * e reasons stated above - ln 
addition, the limitation of Claim 94 fails because it requires additional undisclosed software. 
Claim 94 also fails the enablement requirement in light of the breadth of the subject matter 
claimed. The speciftcauon does not teach a person oi ordmary skill in the an how ,o pracuce. thf 
full scope of the claim, and a person of skill in the art would therefore be required to undertake 

„ M ICKOSOFT' S PRELIMINARY INVALIDITY CONTENTIONS 

-33- Ct>l-1640SBA(MEJ) 


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2 
3 
4 
5 
6 
7 
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) 


undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 95: Claim 95 is dependent upon Claim 36 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons staled above. In 
addition, the limitation of Claim 95 fails because it requires additional undisclosed software. 
Claim 95 also fails the enablement requirement in light of the breadth of the -subject matter 
claimed. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of the claim, and a person of skill in the art would therefore be required to undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

The '912 Patent 

Claim 6: Claim 6 of the '912 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 6 (326:65-327:23), both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of trial and error, perhaps followed by bottom up software development, in order to make 
and use the full scope of Claim 6. Claim 6 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "relatively lower level of security," "private portion 
characterized by . . . " "accessing," "record"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. For these reasons and for the reasons stated above with 
respect to all of the claims, Claim 6 fails the enablement and written description requirements of 

35 U.S.C.§ 11211. 

Claim 7: Claim 7 is dependent upon Claim 8 and thus fails the enablement and 

written description requirements of 35 U.S.C. § 112 1 1 for the reasons slated above. In addition, 
the limitation of Claim 7 fails because ii requires additional undisclosed software. Claim 7 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 

MJCROSf JFTS PRELIMINARY INVAI JDJTY CO^^^^^TlONS 
-34- C01-1640SBA(MEJ) 


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"relatively higher/lower level of security"). The specification does not teach a person of ordinary* 
skiJl in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. 

Claim 8: Claim 8 of the '9 12 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation' in the development of enabling 

software. Specifically, several limitations in Claim 8 ( ), both explicitly and implicitly 

require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the ait would have to engage q process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 8. Claim 8 also fails the enablement requirement in light of the breadth 
of the subject matter claimed {e.g. "higher/lower level of security," "execution space identifier " 
"assembling"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentaUon in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 8 fails the enablement and written description requirements of 35 U.S.C. § 112 % 1. 

Claim 9: Claim 9 is dependent upon Claim S and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1121 1 for the reasons staled above. In addition, 
the limitation of Claim 9 fails because it requires additional undisclosed software. 

Claim 13: Claim 13 is dependent upon Claim 8 and thus fails the enablement and 
written description requirements of 35 U.S.C. § 1 12 i 1 for the reasons stated above. In addition, 
the limitation of Claim 13 fails because it requires additional undisclosed software. Claim 13 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "a 
security level higher that that of the execution space,"). The specification does not teach a person 
of ordinarv skill in the an how to practice the full scope of the claim, and a person of skill in the 
an would therefore be required to undertake undue experimentation in order to make and use the 

o c M ICROSOfT' S PRI£UMtNARY rNVALJDITY 

'■"7 CUI-1MO SB A (MEJ) 


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invention across ihe full scope claimed. 

Claim 3 4: Claim 1 4 is dependent upon Claim 13 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112? '1 for the reasons slated above. In 
addition, the limilauon of Claim 14 fails because it requires additional undisclosed software. 

Claim 35: Claim 35 of the '912 patent fails.thc enablement requirement because 
the specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 35 (330:27-57), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage aprocess of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 35. Claim 35 also fails the enablement requirement in light of the breadth 
of the subject matter claimed {e.g. "second processing environment remote from first processing 
environment," "identification information"): The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person.of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. For these reasons and for the reasons stated above with 
respect to all of the claims, Claim 35 fails the enablement and written description requirements of 
35U.S.C.§ 112? 1. 

The '900 Patent 

Claim 155: Claim 155 of ihe *900 patent fails the enablement requirement 
because the specification docs not teach a person of ordinary skill in the relevant arts how to 
practice the purportedly disclosed invention without undue experimentation in the development of 
enabling software. Specifically, several limitations in Claim 155 (370:30-55),-both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of iriaj and error, perhaps followed by honom up software development, in order to make 
and use the full scope of Claim 155. Claim 155 also fails the enablement requirement in light of 

. Microsoft s preliminary wvAijDrrv contusions 

-JO* COI-1640SBA(MEI) 


) 


) 


1 the breadth of the subject matter claimed (e.g. "host processing environment," "tamper resistant 

2 software designed to be loaded into said main memory . . "machine check programming which 

3 derives information . . "integrity programming"). The specification does not teach a person of 

4 ordinary skill in the art how to practice the full scope of the claim, and a person of skjll in the art 

5 would therefore be required to undertake undue experimentation in order to make and use the 

6 invention across the full scope claimed. For these reasons and for the reasons stated above with 

7 respect to all of the claims, Claim 155 fails the enablement and written description requirements 

8 of35U.s'.C. §112J1. ■ *' 

9 Claim 156: Claim 156 of the 4 900 patent fails the enablement requirement 
JO because the specification does not tesch a person of ordinary skill in the relevant arts how to 

1 1 practice the purportedly disclosed invention without undue experimentation in the development of 

12 enabling software. Specifically, several limitations in Claim 1 56 (370:57-37 1 : 15), both explicitly 

13 and implicitly require software. Since no software is disclosed in the specification, and no 

14 meaningful programming guidance is provided, a person of skill in the art would have to engage a 

15 process of trial and error, perhaps followed by bottom up software development, in order to make 

16 and use the full scope of Claim J 56. Claim 156 also fails the enablement requirement in light of 

17 the breadth of the subject matter claimed (e.g. "virtual distribution environment," "host 

1 8 processing environment," "tamper resistant software designed lo be loaded into said main 

19 memory . . "machine check programming which derives information . . "integrity 

20 programming"). The specification does not teach a person of ordinary skill in the art how to 

21 practice the full scope of the claim, and a person of skill in the art would therefore be required to 

22 undertake undue experimentation in order to make and use the invention across the full scope 

23 claimed. For these reasons and for the reasons staled above with respect to all of the claims, 

24 Claim 156 fails the enablement and written description requirements of 35 U.S.C. § 1 12 $ 1. 

25 Claim 157: Claim 157 of the 4 900patent fails the enablement requirement 

26 because the specification does not teach a person of ordinary skill in the relevant arts how to 

27 1 -practice the purportedly-disclosed invention without undue experimentation in the development of 

28 enabling software, Specifically, several limitations in Claim 157 (371:16-42), both explicitly and 

Microsoft* s preliminary invaijdity contentions 
" D 9 " C 01-1640 SUA (MEJ) 


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implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of trial and error, perhaps followed by bottom up software development, in order to .make 
and use the full scope of Claim. 157. Claim 157 also fails the enablement requirement in light of 
the breadth of the subject matter claimed (e.g. "virtual distribution environment," "host 
processing environment," "tamper resistant software designed to be loaded into said main 
memory . . .," "machine check programming which derives information . . .," "integrity 
programming"). The specification does not leach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required it) 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims. 
Claim 157 fails the enablement and written description requirements of 35 U.S.C. § 1 121 1. 
The '721 Patent 

Claim 1: Claim 1 of the '721 patent fails the enablement requirement because the 
specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 1 (21:10-24), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 1, Claim 1 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "load module," "tamper resistance " "security level"). The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. For these 
reasons and for the reasons stated above with respect to all of the claims. Claim 1 fails the 
enablement and written description requirement of 35 U.S.C. §112^1. 

Claim 5: Claim 5 of the '721 patent fails the enablement requirement because the 

oo Microsoft's preliminary invalidity contentions 

-Jo- C01-1640SDA<MEJ) 


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specification does noi teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 5 (21:39-47), both explicitly and implicitly 
require software, Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 5. Claim 5 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "software verifying method," "specification"). The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skiJJ in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. For these 
reasons and for the reasons stated above with respect to all of the claims, Claim 5 fails the 
enablement and written description requirements of 35 U.S.C. § 1 1% f 1 . 

Claim 9: Claim 9 of the *721 patent fails the enablement requirement because the 
specification does not leach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 9 (22:5-15), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 9. Claim 9 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "distinguishing between trusted and untrusted load modules . . 
. " "associated digital signature," "conditionally executing"). The specification does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. For these reasons and for the reasons staled 
above wiih respeci 10 ali of the claims. Claim 9 1 ails the enablement and written descriptor, 
requirements of 35 U.S.C. § 112% 1. - 

-jq Microsoft's prelim wary invalidity contentions 

C 01-1640 SBA(MEJ) 


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. Claim 14: Claim 14 of the -721 patent fails the enablement requirement because - 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 14 (22:44-51), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 1 4. Claim 14 also fails the enablement requirement in light of the / 
breadth of the subject matter claimed (e.g. "arrangement within the first tamper resistant barrier 
that prevents . . .,")• The specification does not teach a person of ordinary skill in the ait how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 14 fails the enablement and written description requirements of 35 U.S.C. § U21.1. 

Claim 1 8: CJaim 1 8 of the '721 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 1 8 (22:64-25:3), both explicitly and implicitly 
require software. Since no software is disclosed in the specificauon, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope oT Claim 1 8. Claim 1 8 . also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "preventing the first computing arrangement . . ."). 
The specificauon does noi teach a person of ordinary skill in the art how to practice the full scope 
" of theclaim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. For these 
reasons and for the reasons Mated above wiih respeci m all of the claims. Claim 1 8 fails the 
enablement and written description requirements of 35 U.S.C. § 112<J 1. 

MICROSOFT'S IKEUMINAK Y INVAiJDITY CONTEKTIONS 
-40- C01-I640SBA(MEJ) 


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Claim 34: Claim 34 of the '721 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in CJaim 34 (24:47-56), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no rneaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 34. Claim 34 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "secure execution space " "security level"). The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the an would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scope claimed. For these 
reasons and for the reasons stated above with respect to all of the claims, Claim 34 fails the 
enablement and written description requirements of 35 U.S.C. § 1125 1- 

Claim 38: Claim 38 of the '721 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in CJaim 38 (25:1-8), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 38. Claim 38 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "computing arrangement surrounded by a first tamper 
resistant barrier . . " "security I eveF). The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across ihe full scope darned. For these reason*. or.d lor the reasons siaied above with respect to 
all of the claims, Claim 38 fails the enablement and written description requirements of 35 U.S.C. 

MICROSOFT'S PRELIMINARY INVALIDITY CONTENTIONS 
"41 - C01-1640SBA(MEJ) 


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§11211. 

The '019 Patent 

Claim 1: Claim 1 of the '019 patent fails the enablement requirement because the 
specification docs not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 1 (319:46-320:7), both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no -" 
meaningful programming guidance is provided, a person of skill in the art would have to engage a : 
process of trial and error, perhaps followed by bottom op software development, in order to make 
and use the full scope of Claim 1 . Claim 1 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "associated control," "protected," transferring," 
"protected content file") The specificauon does not teach a person of ordinary skill in the art how 
to practice the full scope of the claim, and a person of skill in the art would therefore be required 
to undertake undue experimentation in order to make and use the in vention across the full scope 
claimed. For these reasons and for the reasons stated above with respect 10 all of the claims, 
Claim 1 fails the enablement and written description requirements of 35 U.S.C. § 1121 1. 

Claim 33: Claim 33 of the '019 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software . Specifically, several limitations in Claim 33 (323:60-324:14), both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 
meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of .trial and error, perhaps followed by bottom up software development, in order to make 
and use the full scope of Claim 33. Claim 33 also fails the enablement requirement in light of the 
breadth of the subject matter claimed (e.g. "means for incorporating," "means for transferring," 
"protected data") The specification does not teach a person of ordinary skill in the art how to 
pracrice the full scope of the claim, and a person of skill in the an would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 


MICROSOFT'S PRISUMINAKY INVALIDITY CONTENTIONS 
- 42 - CO1-1U0 SBAfMEJ) 


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claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 33 fails the enablement and written description requirements of 35 U.S.C. § .11211. 

Claim 34: Claim 34 is dependent upon Claim 33 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1121 1 for the reasons staled above. In 
addition, the limitation of Claim 34 fails because it requires additional undisclosed software. 
Claim 34 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for applying"). The specification does not teach a person of ordinary skill 
in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. 

Claim 35: Claim 35 is dependent upon Claim 34 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1121 1 for the reasons stated above. In 
addition, the limitation of Claim 35 fails because it requires additional undisclosed software. 
Claim 35 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for applying"). The specification does not teach a person of ordinary skill 
in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 41: Claim 41 of the 4 019 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software: Specifically, several limitations in Claim 41 (325:7-29), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 41 . Claim 41 also fails the enablement requirement in light of the breadth 
of the subjeci matter ciamied (e.g. "virtual distribution environrnenr) The specification does noi 
teach a person of ordinary skill in the art how to practice the full scope of the claim, and a person 

. « MICROSOFT'S PRE1 JMINARY INVALIDITY CONTENTIONS . 

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of skill in the art would therefore be required to undertake undue experimentation in order to 
make and use the invention across the full scope, claimed. For these reasons and for the reasons 
stated above with respect to all of the claims, Claim 4 J fails the enablement and written , 
description requirements of 35 U.S.C. § 112? 1. 

Claim 42: Claim 42 is dependent upon Claim 4] and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 1 for the reasons stated above. In 
addition, the limitation of Claim 42 fails because it requires additional undisclosed software- 
Claim 42 also fai Is the enablement requirement in light of the breadth of the subject matter '• 
claimed (eg. "control," "protected infonmatfon/' "secure container"). The specification does not 
teach a person of ordinary skill in the art how to pracuce the full scope of the claim, and a person 
of skill in the art would therefore be required to undertake undue experimentation in order to 
make and use the invention across the full scope claimed. 

Claim 47: Claim 47 is dependent upon Claim 41 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 47 fails because it requires additional undisclosed software. 
Claim 47 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "control"). The specification does not teach a person of ordinary skill in the art how 
to practice the full scope of the claim, and a person of skill in the art would therefore be required 
to undertake undue experimentauon in order to make and use the invention across the full scope 
claimed. 

Claim 52: Claim 52 is dependent upon Claim 41 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 52 fails because it requires additional undisclosed software. 
Claim 52 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "creating" "secure container," "site"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required io undertake undue, experimentation in order to make and use the 
invention across the full scope claimed. 

MICROSOFT'S INVALIDITY CONTEKTIONS 

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Claim 53: Claim 53 is dependent upon Claim 52 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 11 for the reasons stated above. In 
addition, the bmitation of Claim 53 fails because it requires additional undisclosed software. 
Claim 53 also fails the enablement requirement in light of the breadth of the subject matter 
claimed \e.g. "associated"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 54: Claim 54 is dependent upon Claim 53 and thus fails the enablement 
and written description requirements of 35 U.S.C. §1-1211 for the reasons stated above. In 
addition, the limitation of Claim 54 fails because it requires additional undisclosed software. 
Claim 54 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (eg. "associated"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experiment alion in order to make and use the invention across the 
full scope claimed. 

Claim 55: Claim 55 is dependent upon Claim 54 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112? 1 for the reasons staled above. In 
addition, the limitation of Claim 55 fails because it requires additional undisclosed software. 
Claim 55 also fails the enablement requirement in ligbt of the breadth of the subject matter 
claimed (e.g. "site"). The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 

clai_med. _. .. _~. 

Claim 64: Claim 64 is dependent upon Claim 54 and thus fails the enablement 
and written description requirements of 35 U.S.C § 1 12 1 1 for the reasons stated above. In 
addiuor,. the hmnaiior, of Claim 64 fails because n reqwrt* additional undisclosed software. 
Claim 64 also fails the enablement requirement in light of the breadth of the subject matter 

Microsoft's prhjminary invalidity contentions 
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claimed (e.g. "portion of said first protected information"). The specification does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. 

Claim 76: Claim 76 is dependent upon Claim 41 and thus fails the enablement 
and written description requirements of 35 V.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 76 fails because it requires additional undisclosed software. 
Claim 76 also fails the enablement requirement in light of the breadth of the subject matter .." : 
claimed (e.g. "secure container," "contained"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art • 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 78: Claim 78 is dependent upon Claim 52 and thus fails the enablement 
and written description requirements of 35 V.S.C. § 112 1 1 for the reasons stated above. In 
addition, the limitation of Claim 78 fails because it requires additional undisclosed software. 
Claim 78 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "secure container," "contained"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required lo undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 81: Claim 81 of the '019 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 81 (328:9-23), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
ihe full scope of Claim 8 1 . Claim 8 1 also fails the enablement requirement in light of the breadth 

, MtCKOSOFTS PRELIMINARY INVALID rTY OONTCKTIONS 

-46- C 01-1 640 SBAfMEJ) 


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of the subject matter claimed (e.g. "means for incorporating'*) The specification does not teach a ' 
person of ordinary skill in the art how to practice the fall scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed For these reasons and for the reasons stated 
above with respect to all of the claims, Claim 81 fails the enablement and written description 
requirements of 35 U.S.C § 112 ^ L 

Claim 82: Claim 82 is dependent upon Claim 81 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 <E 1 for the reasons slated above. In ' 
addition, the limitation of Claim 82 fails because it requires additional undisclosed software. 
Claim 82 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for applying," "govern"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 83: Claim 83 is dependent upon- CJaim 82 and thus fails the enablement, 
and written description requirements of 35 U.S.C. § 112 ^ 1 for the reasons stated above. In 
addition, the limitation of Claim 83 fails because it requires additional undisclosed software. 
Claim 83 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (eg. "govern " "means for applying"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 85; Claim 85 of the *019 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 85 (328:28*56), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 

An MICROSOFT'S PR£UMrNARY!N^\UJ>r^ 

-4/- C 01-1640 SUA <MEJ) 


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trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 85. Claim 85 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "creating," "copying," transferring") The specification does 
not teach a person of ordinary skill in the art how to practice the full scope of the claim, and a 
person of skill in the art would therefore be required to undertake undue experimentation in order 
to make and use the invention across the full scope claimed. For these reasons and for the reasons 
stated above with respect to all of the claims/Claim 85 fails the enablement and written . 
description requirements of 35 U.S.C. § 112 1 1 - 

Claim 87: Claim 87 is dependent upon. Claim 85 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1121 1 for the reasons stated above. In 
addition, the limitation of Claim 87 fails because it requires additional undisclosed software. 
Claim 87 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "copied," "protected information"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 

invention across the full scope claimed. 

Claim 89: Claim 89 is dependent upon Claim 85 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 % 1 for the reasons stated above. In 
addiuon, the limitation of Claim 89 fails because it requires additional undisclosed software. 
Claim 89 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (fi.g. "copying," "transferring"). The specification does not teach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 90: Claim 90 is dependent upon Claim 85 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitatmn of Claim 90 fails because ,« requires additional undisclosed software. 
Claim 90 also fails the enablement requirement in light of the breadth of the subject matter 


MICROSOFT'S PRELIMINARY INVALIDITY CONTENTIONS 
4b - C 0M640 SBA (MEJV 


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claimed (e.g. "memory")- The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore.be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 93: Claim 93 is dependent upon Claim 85 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above. In 
addition, the Jimitation-of Claim 93 fails because it requires additional undisclosed software. 
Claim 93 also fails the enablement requirement in light of the breadth of the subject matter 
claimed {e.g. "copying transferring"). The specification does not teach a person of ordinary skill 
in the art how to practice the full scope of the claim, and a person of skill in the art wduld 
therefore be required to undertake undue experimentation in order to make and use the invention 

across the full scope claimed. 

Claim 94: Claim 94 is dependent upon Claim 85 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 89 fails because it requires additional undisclosed software. 

Claim 95: Claim 95 is dependent upon Claim 94 and thus fails the enablement 
and written descripuon requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 95 fails because it requires additional undisclosed software. 
Claim 95 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "copied," "protected information"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 96: Claim 96 of the '01 9 patent fails the enablement requirement because 
the specification docs not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
soJiwarc. Specifically, several hmuauons in Oaim 96 329:38-330:12). both explicitly and 
implicitly require software. Since no software is disclosed in the specification, and no 

- MICROSOFT'S I»RELIMINaKY invalidity contentions 

-49- C0M640SHA(MEJ) 


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meaningful programming guidance is provided, a person of skill in the art would have to engage a 
process of trial and error, perhaps followed by bottom up software development, in order to make 
and use the full scope of Claim 96. Claim 96 also fails the enablement requirement in light of the 
breadth of the subject matter claimed {e.g. "virtual distribution environment," "protected 
information") The specification does not teach a person of ordinary skill in the art how to 
practice the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 96 fails the enablement and written description requirements of 35 U.S.C. § 112$ L 
The '876 Patent 

Claim 2: Claim 2 of the '876 patent fails the enablement requirement because the 
deification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 2 (319:20-32), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
thc full scope of Claim 2. Claim 2 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "means f or . . . securely integrating," "value chain extended 
agreement"). The specification does not leach a person of ordinary skill in the art how to practice 
the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. For these reasons and for the reasons stated above with respect to all of the claims, 
Claim 2 fails the enablement and written description requirements of 35 U.S.C. § 1 1 2 1 1 . 

Claim 11: Claim 1 1 is dependent upon Claim 2 and thus fails the enablement and 
written description requirements of 35 U.S.C. §11211 for the reasons stated above. In addition, 
the limitation of Cla.m 1 1 fails because n reqmres addmonal und.sclosed software. CJa,m 1 1 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. 

MICROSOFT S PRELIMINARY INVALIDITY CONTENTIONS 
- 50 - C 01-1640 SBA <MEJ) 


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'Virtual Distribution Element"). The specification does not teach a person of ordinary skill 
n the art how to practice the full scope of the claim, and a person of skill in the an would 
herefore be required to undertake undue experimentation in order to make and use the invention 

icross the full scope claimed. . . ' 

Claim 29: Claim 29 is dependent upon Claim 2 and thus fails the enablement and 
vritten description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above. In addition, 
he limitation of Claim 29 fails because it requires additional undisclosed software. Claim 29 also 
ails to enablement requirement in light of the breadth of the subject matter claimed (e.g. "secure • 
:ontrol » "required terms")- The specification does not teach a person of ordinary skill in the art 
1QW to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 32: Claim 32 is dependent upon Claim 2 and thus fails the enablement and 
written description requirements of 35 U.S.C §1121 1 for the reasons stated above. In addition, 
the limitation of Claim 32 fails because it requires additional undisclosed software. Claim 32 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "secure 
control " "required terms"). The specification does not teach a person of ordinary skill in the art 
bow to practice the full scope of the claim, and a person of skill in the art would therefore be 
required to undertake undue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 60: Claim 60 is dependent upon.Claim 2 and thus fails the enablement and 
written description requirements of 35 US.C. § 1 12 % 1 for the reasons stated above. In addition, 
the limitation of Claim 60 fails because it requires additional undisclosed software. Claim 60 also 
fails the enablement requirement in light of the breadth of the subject matter claimed (e.g. "secure 
control," "required terms"). The specification does not teach a person of ordinary skill in the art 
how to practice the full scope of the claim, and a person of skill in the art would therefore be 
rfc qu,red ,o undertake uncue expenmemauon in order ,o make ano use the mvemiori across the 
full scope claimed. 

MICROSOFT* S PRELIMINARY IKV AUDTTY CONTENTIONS 
- 51 - CUM640SBA(MEJ) 


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Claim 130: Claim 130 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 fl 1 f6r the reasons stated above. In 
addition, the limitauon of Claim 29 fails because it requires additional undisclosed software. 
Claim 29 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for executing . . . control"). The specification does not.teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 132: Claim 132 is dependent upon Claim 1 30 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 1 1 for the reasons stated above. In 
addition, the limitauon of Claim 132 fails because it requires additional undisclosed software. 
Claim 132 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "protected processing environment"). The specification does not leach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 161: Claim 161 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above, J* 
addition, the limitation of Claim 161 fails because it requires additional undisclosed software. 
Claim 161 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "machine executable controls"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Claim 162: Claim 162 is dependent upon Claim 16 1 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 f 1 for the reasons stated above. In 
addition, the. limitation of Claim 162 fails, because ii requires additional undisclosed software 
Claim 162 also fails the enablement requirement in light of the breadth of the subject matter 

microsoft's preliminary invalidity contentions 

-•52- C 01-1640 SBA (ME)) 


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claimed (e.g. "data descriptor data structures"). The'specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed.* , 

Claim 170: Claim 170 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 % 1 for the reasons stated above. In 
addition, the limitation of Claim J 70 fails because it requires additional undisclosed software. 
Clai m 1 70 also fails the enablement requirement in light of the breadth of the subject matter • 
claimed (e.g. "means for creating a first secure control"). The specification does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. 

Claim 171: Claim 171 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 % 1 for the reasons stated above. In 
addition, the limitation of Claim 171 fails because it requires additional undisclosed software. 
Claim 171 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for creating . . . secure control"). The specification does not teach a person 
of ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the 
art would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. 

Qaim 172: Claim 172 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 J 1 for the reasons stated above. In 
addition, the limitation of Claim 172 fails because it requires additional undisclosed software. 
Claim 172 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e g. "means ... for securely integrating"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be reciuired io undenake. undue cxpcnmeniaiion in order to make and use the 
invention across the full scope claimed. 

~ ^ M jcrosoft s prelimin ary invalidity contentions 

- - COM640SBA(MEJ) 


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aaira329: Claim 329 is dependent upon Claim 2 and thus fails the enablement •■ 
and wrilten description requirements of 35 U.S.C. § 1121 1 for the reasons stated above. In 
addition, the limitation of Claim 329 fails because it requires additional undisclosed software. 
Claim 329 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means for creating . : . secure control")- The specification does not teach a person 
of ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the 
art would therefore be required to undertake undue experimentation in order to make ind use the 

invention across the full scope claimed. 

Claim 331 : Claim 331 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 UAdj 112 H for me reasons stated above. In 
addition, the limitation of Claim 331 fails because it requires additional undisclosed software. 
Claim 331 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means ... for securely integrating," "based on or compatible with . . .")• The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
experimentation in order to make and use the invention across the full scopeclaimed. 

Claim 346: Claim 346 is dependent upon Claim 2 and thus fails the enablement 
and written description requirement, of 35 U.S.C. § 112 1 1 for the reasons stated above. In 
addition, the limitation of Claim 346 fails because it requires additional undisclosed software. 
Claim 346 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e. S . "means by which said third control set governs . . ."). The specification does not 
teach a person of ordinary skill in the art how to practice the full scope of the claim, and a person 
of skill in the art would therefore be required* undertake undue experimentation in order to 
make and use the invention across the full scope claimed. 

Claim 347: Claim 347 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 1 1 for the reasons stated above. In 
addition, the hmmmon of Claim 347 fails because i, requires additional undisclosed software:. 
Claim 347 also fails the enablement requirement in light of the breadth of the subject matter 


MlCROSOlTS PRELIMINARY INVALIDITY CONTENTIONS 
-54- C 01-1640 KBA (ME)) 


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claimed (e.g. "means by which said third control set governs the execution of at least one 
method"). The specification does not teach a person of ordinary skill in the art how to practice 
the full scope of the claim, and a pereon of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. 

Claim 349: Claim 349 is dependent upon Claim 2 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above. In 
addition, the limitation of Claim 349 fails because it requires additional undisclosed software. 
Claim 349 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "means by which said third control set governs the execution of at least one 
procedure")- The specification does not teach a person of ordinary skill in the art how to practice 
the full scope of the claim, and a person of skill in the art would therefore be required to 
undertake undue experimentation in order to make and use the invention across the full scope 
claimed. 

The '181 Patent 

Claim 48: Claim 48 of the '181 patent fails the enablement requirement because 
the specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 48 (48:17-38), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful, 
programming guidance is provided, a person of skill in the art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 
the full scope of Claim 48. Claim 48 also fails the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "narrowcasting selected digital information," secure node," 
"information derived in part from specified recipient's creation"). The specification does not 
teach a person of ordinary skill in the art how to praoice the full scope of the claim, and a person 
of sJoli in the an would therefore he rcqu.jea to undertake unoue experimentation in order to 
make and use the invention across the full scope claimed. For these reasons and for the reasons 

MlCKOSOFT S PRELIMINARY INVALIDITY CONTENTIONS 
-55" C01-1640SBAO4EJ) 


stated above with res^ . 
description requirements of 35 U.S.C.§ 11211. , 

Claim 59: Claim 59 is dependent upon Claim 48 and thus fails the enablement 
and written description requirements* 35 U.S.C,§ 1 12 <J 1 for the reasons stated above. In 
addition, the limitation of Claim 59 fails because it requires additional undisclosed software- 
Claim 59 also fails the enablement requirement in light of the breadth of the subject matter 
c.aimcd. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of the claim, and a person of skill in the an would therefore be required to undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 61 : Claim 61 is dependent upon Claim 48 and thus fails the enablement 

and written description requirements of 35 U.S.C. § 112 1 1 for the reasons stated above. In 
addition, the limitation of Claim 61 fails because it requires additional undisclosed software. 
Claim 61 also fails the enablement requirement in light of the breadth of the subject matter 
claimed "entertainment information"). The specification does not leach a person of ordinary 
skill in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across lire full scope claimed. 

Gain. 63: Claim 63 is dependent upon Claim 48 and thusfails the enablement 
,„d wrinen description retirements of 35 U.S.C. § 1121 1 for the reasons stated above. In 
20 I addition, the limitation of Claim 63 fails because i, requires additional undisclosed softy-axe. 
Claim 63 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (,«. "music information"). The specification does not teach a person of ordinary skill in 
the art how to practice the full scope of the claim, and a person of skffi in the an would therefore 
be required to undertake dndue experimentation in order to make and use the invention across the 
full scope claimed. 

Claim 67: Claim 67 is dependent upon Claim 48 and thus fails the enablement 
and wniicn descnpiion requuemems of 35 U.S.C. .5 H2H lor «ne reasons stated above. )r. 
addition, the limitation of Claim 67 fails because it requires additional undisclosed software. 

MICROSOFT'S PRELIMINARY IKV ALD>rTY CONTEMTIONS 
-56- MK*-k*' C0)-1Mf>SBA(MEI) 


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Claim 67 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "digital certificate information"). The specification does not teach a person of 
ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the art 
would therefore be required to undertake undue experimentation in order to make and use the 
invention across the full scope claimed. .* 

Claim 70: Claim 70 is dependent upon Claim 48 and thus fails the enablement 
and written description" requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. In 
addition, the limitation of Claim 70 fails because it requires additional undisclosed software. 
Claim 70 also fails the enablement requirement in light of the breadth of the subject matter 
claimed. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of. the claim, and a person of skill in the art would therefore be required to undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 72: Claim 72 is dependent upon Claim 48 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 ? 1. for the reasons slated above. In 
addition, the limitation of Claim 72 fails because it requires additional undisclosed software. 
Claim 72 also fails the enablement requirement in light of the breadth of the subject matter 
claimed. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of the claim, and a person of skill in the art would therefore be required to undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 75: Claim 75 is dependent upon Claim 72 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 J 1 for the reasons stated above. In 
addition, the limitation of Claim 75 fails because it requires additional undisclosed software. 
Claim 75 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "acceptable clearinghouse," "rights and permissions clearinghouse"). The 
specification does not teach a person of ordinary skill in the art how to practice the full scope of 
the claim, and a person of skill in the art would therefore be required to undertake undue 
ex pen menial ion in order to make and use inc invention across the fuli scope claimed. 

Claim 89: Claim 89 is dependent upon Claim 48 and thus fails the enablement 

c - Microsoft's preliminary invalidity contentions 

-J/- C 01-1640 SUA (ME)) 


and written description requirements of 35.U.S.C. § 1 12 1 for the reasons stated above. 

Claim 91: Claim 91 of the '181 patent fails the enablement requirement because 
the salification does not leach a person of ordinary skill in the relevant arts how to practice, the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 91 (86:47-87:4), both explicitly and implicitly 
require software. Since no software is disclosed in the' specification, and no meaningful 
programming guidance is provided, a person of skill in the art would have to engage process of 
trial and error, perhaps followed by bottom up software development, in order to make and use" • 
the full scope of Claim 91. Claim 91 also fails, the enablement requirement in light of the breadth 
of the subject matter claimed (e.g. "narrowcasting selected digital information," secure node^' 
"information derived in part from specified recipient entity's creation"). The specification does 
not teach a person of ordinary skill in the art how to practice the full scope of the claim, and a 
person of ski" ™ the art would therefore be required to undertake undue experimentation in order 
to make and use the invention across the full scope claimed. For these reasons and for the reasons 
stated above with respect to all of the claims, Claim 91 fails the enablement and written 
description requirements of 35 U.S.C. §11211. 

Claim 104: Claim 104 is dependent upon Claim 91 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 11211 for the reasons stated above. In 
addition, the limitation of Claim 104 fails because it requires additional undisclosed software. 
Claim 104 also fails the enablement requirement in light of the breadth of the subject matter 
claimed. The specification does not teach a person of ordinary skill in the art how to practice the 
full scope of the claim, and a person of skill in the art would therefore be required to undertake 
undue experimentation in order to make and use the in vention across the full scope claimed. 

. Claim 109: Claim 109 is dependent upon Claim 91 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 1 2 <fi 1 for the reasons stated above. In 
addition, the limitation of Claim J 09 fails because it requires additional undisclosed software. 
Claim 109 aiso fails the enablement requirement in light of the breadth of the subject matter 
claimed. The specification does not teach a person of ordinary skill in the an how to practice the 


Microsoft's preliminary invalidity contentions 

58 - C01-1M0SBA(MEJ) 


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full scope of the claim, and a person of skill in the art would therefore be required to'undertake 
undue experimentation in order to make and use the invention across the full scope claimed. 

Claim 114: Claim 1 14 is dependent upon Claim 9J and thus fails the enablement 
. and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons slated above, In 
addition, the limitation of Claim 1 14 fails because it requires additional undisclosed software. 
Claim 114 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "clearinghouse acceptable to rightsholders"). The specification does not teach a 
person of ordinary skill in the art how to practice the full scope of the claim, and a person of skill 
in the art would therefore be required to undertake undue experimentation in order to make and 
use the invention across the full scope claimed. 

Claim 117: Claim 117 is dependent upon Claim' 1 14 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 J 1 for the reasons stated above. In 
addition, the limitation of Claim 1 17 fails because it requires additional undisclosed software. 
Claim 1 17 also fails the enablement requirement in light of the breadth of the subject matter 
claimed (e.g. "rights and permissions clearinghouse"). The specification does not teach a person 
of ordinary skill in the art how to practice the full scope of the claim, and a person of skill in the 
art would therefore be required to undertake undue experimentation in order to make and use the 

invention across the full scope claimed. 

Claim 131: Claim 131 is dependent upon Claim 91 and thus fails the enablement 
and written description requirements of 35 U.S.C. § 1 12 1 1 for the reasons stated above. 

The <402 Patent 

Claim 1: Claim 1 of the '402 patent fails the enablement requirement because the 
specification does not teach a person of ordinary skill in the relevant arts how to practice the 
purportedly disclosed invention without undue experimentation in the development of enabling 
software. Specifically, several limitations in Claim 1 (322:5-25), both explicitly and implicitly 
require software. Since no software is disclosed in the specification, and no meaningful 
programming guidance is provided, a person of skill m .he art would have to engage a process of 
trial and error, perhaps followed by bottom up software development, in order to make and use 

Microsoft's preliminary invalidity contentions 
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the full scope of Claim L Claim 1 also fails the enablement requirement in light of the breadth ' 
of the subject matter claimed (e* "creating," "having associated a first control" "value chain 
extended agreement," "transferring"). The specification does not teach a person of ordinary skill 
in the art how to practice the full scope of the claim, and a person of skill in the art would 
therefore be required to undertake undue experimentation in order to make and use the invention 
across the full scope claimed. For these reasons and for the reasons stated above with respect to 
all of the claims, Claim 1 fails the enablement and written description requirements of 35:U.S.C 
§11211. 

IV. Patent L.R. 3-4 

Each reference identified pursuant to PJLR 3-3(a) but not in the prosecyjion history, 

and the documents referenced in PLR 3-4 that are sufficient to show the operation of the accused 
features of the products specifically and property identified in InterTrust's PI* 3-1 Statements of 
September 2, 2003, has been or is being produced, or is otherwise available for inspection and 
copying. As set forth in greater detail in Microsoft's Motion to Strike InterTrust's Infringement 
Contentions (filed October 8, 2003), InterTrust's Infringement Contentions pursuant to PUR 3-1 
lar gcly fail to properly identify the "accused instrumentalities." Accordingly, Microsoft reserves 
its right to modify this production, if necessary. Microsoft has specifically sought, and has been 
granted, greater protection and confidentiality for its source code than that provided by Patent 
Local Rule 2-2. Source code for the Accused Instrumentalities is being made available for 
inspection at the offices of Orrick, Herrington & Sutcliffe LLP only in accordance with 
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MtCKOSOTf PRELIMINARY IN VALIDITY CONTENTIONS 
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Magistrate James* Order of November 5, 2003. Microsoft does not concede that any source code 
made available for inspection (or any corresponding product or software) is or should be 
considered an Accused Instrumentality. ' 


HEIDI L. KEEFE 

ORRICK, HERRINGTON & SUTCLIFFE LLP 



WiltyimL. Anthon> 
Attomevs for Defendant and Counier£laimanl 
■- MICROSOFT CORPORATION 


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Microsoft s preliminary invalidity coummoNS 

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