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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: 703-305-0942 

UNITED STATES PATENT AND TRADEMARK OFFICE 


Paper 1 


Filed 
4 September 2003 


BEFORE THE BOARD OF PATENT APPEALS 
AND INTERFERENCES 


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


MAILED 

SEP 4 - 2003 

DrtAr RAT.&T.M. OFFICE 
BOARD OF PATENT APPEALS 
_ AND INTERFFRFMircc 


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


Patent Interference No. 105,142 


NOTICE DECLARING INTERFERENCE 
(37 CFR§ 1.611) 

Part A. Declaration of interference 

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


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Part B. Judge designated to handle the interference 

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

PartC. Standing order 

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

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

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

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


Part E. The parties involved in this interference are: 



Junior Partv 

Named inventor: 

GREG BENSON, Dalby, Sweden 


GREGORY H URICH Lund Sweden 


CHRISTOPHER L KNATIFT San niean PA 

Patent- 

5,845,281, granted 1 December 1998, based on 


application 08/594,81 1, filed 31 January 1996 

Title: 

Method and system for managing a data object 


so as to comply with predetermined conditions 


for usage 

ilOJlgllvVi 


Accorded Benefit: 

none 

Attorneys * 

See last nape 

Address: 

See last page 

Application: 

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

1 lUC 

ivieuiou ana system ior managing a aaia ooject 


so as to comply with predetermined conditions 


for usage 

Assignee: 

Macrovision Corporation 

Accorded B enefit : 

Patent 5,845,281 , granted 1 December 1 998, based 


on application 08/594,81 1, filed 31 January 1996 

Attorneys: 

See last page 

Address: 

See last page 

Annlication: 

09/321 386 filed 27 Mav 1999 

Title: 

Method and system for managing a data object 


so as to comply with predetermined conditions 


for usage 

Assignee: 

Macrovision Corporation 


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Accorded Benefit: 


Patent 5,845,281, granted 1 December 1998, based 
on application 08/594,811, filed 31 January 1996; 
Application 09/164,606, filed 1 October 1998 


Attorneys: See last page 

Address: See last page 


Senior Party 

Named Inventor: KARL L. GINTER, Beltsville, MD 

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

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

Title: System and methods for secure transaction 

management and electronic rights protection 

Assignee: none 

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

application 09/208,017, filed 9 December 1998; 
Patent 5,982,891, granted 9 November 1999, based 
on application 08/964,333, filed 4 November 1 997; 
Application 08/388,107, filed 13 February 1995 

Attorneys: See last page 


Address: 


See last page 


Part F. Count and claims of the parties 


Count 1 

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


The claims of the parties corresponding to Count 1 are: 

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

Ginter's Application 09/41 1,205: Claims 91-93, 95-102, 105-109, 1 12-119, 120- 

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

68 and 69 

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

39-53 


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

Benson's Patent No. 5,845,281 (Benson I): Claims 4, 13, 14, 20 and 21 
Ginter's Application 09/41 1,205: Claims 94, 103, 104, 1 10, 1 1 1, 123, 132, 133, 

139 and 140 

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


Count 2 


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


The claims of the parties corresponding to Count 2 are: 

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

Benson's Application 09/1 64,606 (Benson II): Claims 33, 42, 43, 47, 49, 50, 57 and 67 
Benson's Application 09/321, 386 (Benson III): Claims 4, 13, 14, 18, 20, 21, 28 and 38 


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

Benson's Patent No. 5,845,281 (Benson I): Claims 1-3, 5-12 and 15-29 
Ginter's Application 09/411,205: Claims 91-93, 95-102, 105-122, 124-131 and 

134-148 

Benson's Application 09/1 64,606 (Benson II): Claims 30-32, 34-4 1 , 44-46, 48, 5 1 -56, 58-66, 

68 and 69 

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

39-53 


Count 3 


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


The claims of parties corresponding to Count 3 are: 

Benson's Patent No. 5,845,28 1 (Benson I): Claims 20 and 2 1 

Ginter's Application 09/41 1 ,205: Claims 1 1 0, 1 1 1 , 1 39 and 1 40 

Benson's Application 09/164,606 (Benson II): Claims 52, 53 and 55 

Benson's Application 09/32 1 ,386 (Benson III): Claims 23 and 24 


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

Benson's Patent No. 5,845,281 (Benson I): Claims 1-19 and 22-29 
Ginter's Application 09/41 1,205: Claims 91-109, 1 12-138 and 141-148 

Benson's Application 09/1 64,606 (Benson II): Claims 30-5 1 , 54 and 56-69 
Benson's Application 09/321, 386 (Benson III): Claims 1-22 and 25-53 


Part G. Heading to be used on papers 

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


Paper 

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

Name of backup counsel 

Street address 

City, State, and Zip-Code 

Tel: 

Fax: 

UNITED STATES PATENT AND TRADEMARK OFFICE 


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


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

v. 

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


Patent Interference No. 105,142 


TITLE OF PAPER 


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


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Part H. Summary of dates for taking action 

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

f 4 : date for identifying lead and backup counsel. 

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

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

patents. 

If 7: date for accomplishing certain discovery. 

1f 8: date for filing clean copy of claims. 

% 9 : date for filing clean copy of claims in cases with drawings or claims 

containing a means plus function limitation. 

1 0: date for filing list of proposed preliminary motions. 

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

% 14.1.1 : date for objecting to admissibility of evidence. 

f - 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. 

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


Part I. Order form for requesting file copies 

FILE COPY REQUEST 
Interference 105,142 

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

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

1 . Charge fees to USPTO Deposit Account No. 

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


Telephone, including area code: 


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Part J. Signature of administrative patent judge 



Enc: 

Copy of STANDING ORDER 

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

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

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

Copy of claims of Serial No. 09/41 1 ,205 

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

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


Revised May 2003 


cc (via Federal Express): 


Attorney for BENSON: 
Frank Nguyen 

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

Attorney for GINTER: 

FINNEGAN, HENDERSON, FARABOW, 

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


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