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Full text of "USPTO Patents Application 09870801"

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Filed by: Jameson Lee 
Administrative Patent Judge 
Mail Stop Interference 
P.O.Box 1450 
Alexandria VA 22313-1450 
Tel: 703-308-9797 
Fax: 7^)3-305-0942 

UNITED STATES PATENT AND TRADEMARK OFFICE 


Paper 1 


Filed 
1 8 December 2003 


BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 


KARL L. GINTER, VICTOR H. SHEAR, 
FRANCES J. SPAHN and DAVID M VAN WIE, 
Junior Party, 

(Patents 5,920,861; 5,982,891; 6,138,119 and 6,253,lSB)r 


GREG BENSON, GREGORY H. URICH 
and CHRISTOPHER L. KNAUFT, 
Senior Party, 
(Applications 09/164.606 and 09/321,386). 


MAILED 

DEC 1 8 2003 


PAT. & TM. OFFICE 
BOARD OF PATENT APPEALS 
AND INTERFERENCES 


Patent Interference No. 105,193 


NOTICE DECLARING INTERFERENCE 
(37 CFR§ 1.611) 

Part A. Declaration of interference 

An interference is declared (35 ILS.C § 1 35(a)) between the above-identified parties. 
Details of the application(s), patent (if any), reissue application (if any), count(s) and claims 
designated as corresponding or as not corresponding to the count(s) appear in Parts E and F of 
this NOTICE DECLARING INTERFERENCE. 


Part B. Judge designated to handle the interference 

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

Part C. Standing order 

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

A telephone conference call to discuss whether the priority phase of this interference can 
or should be conducted first is scheduled for 1 :30 p.m. on 7 January 2004 (the call will be 
initiated from the PTO). 

If the priority phase of this interference is not conducted first, the Administrative Patent 
Judge intends to set the times for filing preliminary motions on January 7, 2004 and set Time 
Period 8 as October 7, 2004. 

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


Part E. The parties involved in this interference are: 


Named Inventor: 


Patent: 

Title: 

Assignee: 
Accorded Benefit: 
Attorneys: 
Address: 


Junior Party 

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

5,920,861, granted 6 July 1999, based on 
application 08/805,804, filed 25 February 1997 

Techniques for defining using and manipulating 
rights management data structures 

InterTrust Technologies Corp. 

None 

See last page 

See last page - 


Patent: 

Title: 

Assignee: 
Accorded Benefit: 
Attorneys: 
Address: 


5,982,891, granted 9 November 1 999, based on 
application 08/964,333, filed 4 November 1997 

Systems and methods for secure transaction 
management and electronic rights protection 

InterTrust Technologies Corp. 

Application 08/388,107, filed 13 February 1995 

See last page 

See Jast page 


-3- 


Patent: 6,138,119, granted 24 October 2000, based on 

application 09/300,778, filed 27 April 1 999 

Tit,e: Techniques for defining, using and manipulating 

rights management data structures 

Assignee: InterTrust Technologies Corp. 

Accorded Benefit: 5,920,86 1 , granted 6 July 1 999, based on 

application 08/805,804, 25 February 1 997 

Attorneys: See last page 

Address: See last page 


Patent: 6,253,1 93, granted 26 June 2001 , based on 

Application 09/208,017, filed 9 December 1998 

Title: Systems and methods for the secure transaction 

management and electronic rights protection 

Assignee: InterTrust Technologies Corp. 

Accorded Benefit: 5,982,891 , granted 9 November 1 999, based on 

application 08/964,333, filed 4 November 1997; 
Application 08/388,107, filed 13 February 1995 

Attorneys: See last page 


Address: 


See last page 


Senior Party 


Named inventor: 

Application: 
Title: 

Assignee: 
Accorded Benefit: 

Attorneys: 
Address: 


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

09/1 64,606, filed 1 October 1 998 

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

Macrovision Corporation 

Patent 5,845,281, granted 1 December 1998, based 
on application 08/594,81 1, filed 31 January 1996; 
Swedish Application 9500355-4, filed 1 February 1995 

See last page 

See last pape 


Application: 
Title: 

Assignee: 
Accorded Benefit: 


09/321,386, filed 27 May 1999 

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

Macrovision Corporation 

Patent 5,845,281, granted 1 December 1 998, based 
on application 08/594,8 1 1 , filed 3 1 January 1 996; 
Application 09/164,606, filed 1 October 1998; 
Swedish Application 9500355-4, filed 1 February 1995 


Attorneys: 


See last page 


Address: 


See last page 


Part F. Count and claims of the parties 


Count 1 

Claim 48 of Benson's Application 09/321,386 (Benson ID) 
The claims of the parties corresponding to Count 1 are: 

Ginter's Patent No. 5,920,861 (Ginter I): Claims 1-4, 11-13, 34-38, 40-43, 56, 63, . 

64,67 and 68 

Ginter's Patent No. 5,982,891 (Ginter U): Claims 26-31 

Ginter's Patent No. 6,138,1 19 (Ginter UJ): Claims 1-28, 30-32, 34-42, 51, 53-57 and 59-63 
Ginter's Patent No. 6,253,193 (Ginter IV): Claims 1-18 and 64-72 
Benson's Application 09/164,606 (Benson U): Clairhs 30-32, 34-41, 44-46, 48, 51, 56, 58-66, 

68 and 69 

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

39-53 

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

Ginter's Patent No. 5,920,861 (Ginter I): Claims 5-10, 14-33, 39, 44-55, 59-62, 65, 66, 

69 and 70 

Ginter's Patent No. 5,982,891 (Ginter H): Claims 1-25 and 32-102 

Ginter's Patent No. 6,138,1 19 (Ginter UJ): Claims 29, 33, 43-50, 52, 58 and 64 

Ginter's Patent No. 6,253,193 (Ginter IV): Claims 19-63 

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


Part G. Heading to be used on papers 

The following heading shall be used on papers filed in the interference. See STANDING 
ORDER f 3.5. 


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

Name of backup counsel 

Street address 

City, State, and Zip-Code 

Tel: 

Fax: 

UNITED STATES PATENT AND TRADEMARK OFFICE 


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


KARL L. GINTER, VICTOR H. SHEAR, 
FRANCES J. SPAHN and DAVID M. VAN WIE, 
Junior Party, 

(Patents 5,920,861; 5,982,891; 6,138,119 and 6,253,193), 


GREG BENSON, GREGORY H. URJCH 
and CHRISTOPHER L. KNAUFT, 
Senior Party, 
(Applications 09/164,606 and 09/321,386). 


Patent Interference No. 105,193 


TITLE OF PAPER 


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


-7- 


Part H. Summary of dates for taking action 

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

T4: date for identifying lead and backup counsel. 

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

1 6: date for requesting copies of involved and benefit applications and 
patents. 

H 7: date for accomplishing certain discovery. 
f8: date for filing clean copy of claims. 

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

110: date for filing list of proposed preliminary motions. 

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

f 14.1.1: date for objecting to admissibility of evidence. 

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

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

1 1 5.2 : dates for taking action with respect to settlement discussions. 


Parti. Order form for requesting file copies 

FILE COPY REQUEST 
Interference 105,193 

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

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

1 . Charge fees to USPTO Deposit Account No. ■ 

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


Telephone, including area code: 


Part J. Signature of administrative patent judge 


MMESONLEE 

/•s y-r/ /Administrative Patent Judge 

Date: I^/lH/o^ 


Enc: 

Copy of STANDING ORDER 

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

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


Revised May 2003 


cc (via Federal Express): 


- Attorney for GINTER: 

Linda J. Thayer, Esq. 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP 
700 Hansen Way 
Palo Alto, CA 94304 

Attorney for BENSON: 

Charles L. Gholz, Esq. 

oblon, sprvAK, McClelland, 

MATER & NEUSTADT, P.C. 
1940 Duke Street 
Alexandria, VA 22314