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WILLIAM L. ANTHONY (State Bar No. 106908) 
ERIC L. WESENBERG (State Bar No. 139696) 
HEIDI L. KEEFE (State Bar No 1 78960) 
KENNETH J. HALPERN (State Bar No. 1 87663) 
SAM O'ROURKE (State Bar No. 205233) 
ORRICK, HERRINGTON & SUTCLIFFE, LLP 
1000 Marsh Road 
Menlo Park, CA 94025 
Telephone: (650) 614-7400 
Facsimile: (650)614-7401 

STEVEN ALEXANDER (admitted Pro Hac Vice) 

KRISTIN L. CLEVELAND (admitted Pro Hac Vice) 

JAMES E. GERINGER (admitted Pro Hac Vice) 

JOHN D. VANDENBERG 

KLARQUIST SPARKMAN, LLP 

One World Trade Center, Suite 1600 

121 S.W. Salmon Street 

Portland, OR 97204 

Telephone: (503)226-7391 

Facsimile: (503)228-9446 

Attorneys for Defendant and Counterclaimant, 
MICROSOFT CORPORATION 


UNITED STATES DISTRICT COURT 
NORTHERN DISTRICT OF, CALIFORN LA 
OAKLAND DIVISION 


INTERTRUST TECHNOLOGIES 
CORPORATION, a Delaware corporation, 

Plaintiff, 


v. 


MICROSOFT CORPORATION, a 
Washington corporation, 

Defendant. 


AND RELATED CROSS-ACTION. 


CASE NO. C01- 1640 SB A (MEJ) 
Consolidated with C 02-0647.SBA (MEJ) 

MICROSOFT'S NOTICE OF MOTION 
AND MEMORANDUM IN SUPPORT 
OF MOTION FOR PARTIAL 
SUMMARY JUDGMENT OF 
INVALIDITY OF THE ASSERTED 
CLAIMS OF THE *900 PATENT 
(ANTICIPATION) 

Date: March 30, 2004 

Time: 1:00 p.m. 

Judge: Saundra B. Armstrong 


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DOCSSV 1:260026.1 


NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT ('900 I'atekt), C0I-I640SBA (MEJ) 


°CT 2 9 2004 

TABLE OF CONTENTS TenKT, 

Oology center 2ioo 

Page 

L INTRODUCTION # ; „ ; L 

II. LEGAL STANDARD ■ ;. f . ! 

A. Legal Standard For Summary Judgment.. .....^ v \ 

B. Legal Standard For Patent Invalidity , „ 2 

1. Requirements of 35 U.S.C, § 102(b)..... 3 

, - 2. Presumption of Enablement ■„ 3 

III. ARGUMENT •;. _ 3 

A. Overview of the Challenged Claims and the Durst Patent. 3 

1. Claims 155, 156 and 157 of {he '900 Patent 3 

2. The Durst Reference - Overview... 6 

3. The System Environment _ A 5 

.4. The Programming Is The Same 9 

a. Machine Check Programming 9 

(1) The Meaning of This Element .............. .9 

(2) Machine Check Programming in the Durst 
Reference........... .. \ 10 

b. Integrity Programming.. n 

(1) TheMeaning'of This Element H 

(2) Integrity Programming in the Durst Reference 1 2 

c. Programming That Undertakes an Action Based on the 
Comparison Result .13 

IV. CONCLUSION.... ,, , 14 


NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT ('900 Patent), C0I -164aSBA (MEJ) 


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RECEIVED 


^ ' x OCT* * 2004 

$ TABLE OF AUTHORITIES >— •-r^nn 

# . cases 1 TechnotoQV Center 21W 

Page 

Amgen Inc. v. Hoechst Marion Roussel, Inc., 

314 F.3d 1313 (Fed. Cir. 2003) : ".' 3 

Anderson v. Liberty Lobby, Inc., ' , 

.477 U.S. 242 (1986) : '. 2 

Avia Group International, Inc. v. L.A, Gear California, Inc., 

853 F.2d 1557 (Fed. Cir, 1988)..... ; .,...;„ 2 

Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 

731 F.2d 831 (Fed. Cir. 1984). „.... : 2 

Brassica Protection Products LLC v. Sunrise Farms (In re Cruciferous Sprout Litig., 

301 F.3d 1343 (Fed. Cir. 2002) .......2 

Brenner v. United States, 

773 F.2d 306 (Fed. Cir. 1985) 2 

Brown v. 3M, • 

265 F.3d 1349 (Fed. Cir. 2001)...., . ; 3 

Spectra Corp. v. Lutz, 

839 F.2d 1579 (Fed. Cir. 1988).. 3 

STATUTES, . ' . , " 

35 U.S.C. § 102 1, 2, 3, 14 

35 U.S.C. § 112 ; 7 

Fed. R. Civ. P. 56 ; I, 2 


NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT ("900 Patijnt), CO I - 1 640 SBA (MEJ) ■ 


RECEIVED 

1 , " OCT 2 9 / 

. NOTICE OF MOTION — I whno/ O0y£ent8f 2100 

Pursuant to Fed. R. Civ. P. 56(b) and 35 U.S.C. § 102(b), Defendant Microsoft 
Corporation ("Microsoft") respectfully moves for Partial Summary Judgment of Invalidity of the 
Asserted Claims of U.S. Patent No. 5,892,900. This motion is noticed for March 30, 2004 at 1 :00 
p.m. and is based upon this Notice and Memorandum of Points and Authorities, the Declaration 
of Eric Wesenberg and exhibits thereto. Pursuant to the Court's Standing Order, Microsoft met 
and conferred with counsel for InterTrust prior to filing this motion. Declaration of Eric L. 
Wesenberg in Support of Microsoft's Motion for Partial Summary Judgment of Invalidity of the 
Asserted Claims of the '900 Patent at 1f 6. , 

MEMORANDUM OF POINTS AND AUTHORITIES 

I, INTRODUCTION 

Microsoft moves for summary judgment of invalidity of claims 155, 156, and 157 
of U.S. Patent No. 5,892,900 ("the '900 Patent"), pursuant to 35 U.S.C. § 102(b), based on the 
anticipatory disclosure of the prior art U.S. Patent No. 5,1 13,5 1 8 ("the Durst Patent" or "the Durst 
reference"). The Durst Patent issued more than one year prior to August 12, 1996, the priority 
date InterTrust claims for the '900 Patent, and discloses every limitation of claims 155, 156 and 
157 of that patent.- InterTrust did not cite Durst during the prosecution of the '900 Patent and, 
therefore, the examiner did not take it into consideration in examining the claims that are 
challenged herein. Granting this motion will render claims 1 55, 1 56 and 157 of the '900 Patent 
invalid, simplifying this case by disposing of that patent altogether (these are the only '900 claims 
asserted by InterTrust). This will eliminate the need for the jury to learn and understand (i) the 
'900 Patent as a whole, (ii) the machine signature programming these claims represent; (iii) the 
details of over 100 infringement arguments that are unique to these claims, and (iv) product 
activation technology altogether, as there would be no claims asserted against such product 
activation technology remaining in the case. 

II. LEGAL STANDARD 

A. Legal Standard For Summary Judgment 

The Federal Circuit has repeatedly emphasized that "[sjummary judgment is as 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV 1:260026.1 -1- OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ('900 Patent), C01-1 640 SB A (MEJ) 


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appropriate in a patent case as in any other." See Avia Group International, Inc. v. Z:ArGear 
California, Inc., 853 F.2d 1557, 1561 (Fed. Cir. 1988); Spectra Corp. v. Lutz, 839 F.2d 1579, 
1581 n. 6, (Fed. Cir. 1988); Brenner v. United States., 773 F.2d 306, 307 (Fed, Cir. 1985). 
"Where no genuine issue of material fact remains and the movant is entitled to judgment as a 
matter of law, the court should utilise the salutary procedure of Fed. R'.'Civ. P. 56 to avoid 
unnecessary expense to the parties and wasteful utilization of the jury process and judicial 
resources." Barmag Banner Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 
(Fed. Cir. 1984); Brassica Protection Products LLC v. Sunrise Farms (In re Cruciferous Sprout 
Litig:, 301 F.3d 1343, 1346 (Fed. Cir. 2002) ("Summary judgment is appropriate when there is no 
genuine issue of material fact and the moving party is entitled to judgment as a matter of law."). 

Summary judgment is warranted when the moving party has demonstrated that 
there is no genuine issue as to any material fact and the moving party is entitled to a judgment as 
a matter of law. See Fed. R. Civ. P. 56(c), A fact is material if it 

"might affect the outcome of the suit under the governing law." 
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). "With 
respect to whether there is a genuine issue, the court may not 
simply accept a party's statement that a fact is challenged. 
(Citations omitted). The party opposing the motion must point to 
an evidentiary conflict created on the record at least By a counter 
statement of a fact or facts set forth in detail in an affidavit by .a 
knowledgeable affiant. Mere denials or conclusory statements are 
insufficient." 

Barmag, 731 F.2d at 835-36. 

B. Legal Standard For Patent Invalidity 

1. Requirements of 35 U.S.C. § 1020^ 

A party challenging the validity of a patent claim has the burden of showing 
invalidity by clear and convincing evidence. Brassica, 301 F.3d 1343, 1349 (Fed. Cir! 2002). 
Microsoft moves for summary judgment of invalidity based on 35 U.S.C. § 102(b), which states 
that an individual is not entitled to a patent if their claimed invention "was patented or described 
in a printed publication in this or a foreign country . . . more than one year prior to the date of the 
application for patent in the United States." 35 U.S.C. § 102(b). Summary judgment should be 
granted where the defendant demonstrates that each element of the challenged claim is disclosed 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV1. 260026.1 - 2 - OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ("900 Patent), C01-I640SBA (MEJ) 


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in a single prior art reference. Sep id.; Brown v. 3M, 265 F.3d 1349, 1354-(Fed. Cir. 2001). 

The Durst Patent was filed on June 3, 1 988 and issued on May 1 2, 1 992. 
InterTrust claims a priority date of August 12, 1996 for the '900 Patent. The Durst Patent issued 
more than four years before the purported effective filing date of the '900 Patent and thus 
indisputably is prior art to the '900 Patent. Also, as will be shown below, its specification 
discloses all elements of claims 155, 156 and 157 of the '900 Patent. The Durst reference is 
therefore invalidating prior art under 3 5 U.S.C. § 1 02(b), as the purported invention of claims 
155-157' *was . described in a printed publication in this . . . country . . . more than one year prior 
to the date of the application for patent in the Unite^i States" for the '900 Patent. 

2. Presumption of Enablement ■ 

In addition to preceding the challenged patent claims by more than one year and 
; disclosing all of the claim elements, an anticipatory reference must enable one of skill in the art to 
reduce the disclosed invention to practice. Amgen Inc. v. Hoechst Marion Roussel, Inc^ 314 F.3d 
1313, 1354 (Fed. Cir. 2003). As an issued U.S. patent, the Durst reference carries a presumption 
that it is enabling, even as to the unclaimed matejriaHn its disclosure. Id. at 1355 ("We hold that 
an accused infringer should be . . . entitled to have the district court presume the enablement of 
unclaimed (and claimed) material in a prior art patent defendant asserts against a plaintiff): It is 
InterTrust' s burden to overcome the presumption of enablement by bringing forward evidence of 
non-enablement. Id. 

■III. ARGUMENT 

A. Overview of the Challenged Claims and the Durst Patent 
1. Claims 155, 156 and 157 of the '900 Patent 

Claims 155, 156 and 157 of the '900 Patent each claim the same device, differing 
from each other only with regard to the final element: 



Claim Language 


A virtual distribution environment comprising 
a first host processing environment comprising 

(hardware) 

a central processing unit; 

main memory operatively connected to said central processing unit; 


NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV 1:260026. 1 - 3 - OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ('900 Patent), C01 -1640 SBA (MEJ) 


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mass storage operati vely connected to said central-processing unit and 

said main memory; 1 
said mass storage storing tamper resistant software designed to be loaded 

into said main memory and executed by said central prpcessing unit, ' 

(software) 

• 

said tamper resistant software comprising: 

machine check programming \yhich derives information from one or 
more aspects of said host processing; environment, '/ . , 

one or more storage locations storing said information; 

integrity programming which causes said machine check programming to 
derive said information, compares said information to information 
previously stored in said one or more storage locations, and 
generates an indication based on the result of said comparison; and 

programming which takes one or more actions based on the state of said 
lnaicaiion, 

said one or more actions including ... 


■ ... at least temporarily halting further 
^ processing. 

Claim 156 

• * 

... at least temporarily disabling 
certain functions. . 

Claim 157 

... displaying a. message to the user. 


The claimed device consists of a virtual distribution environment ("VDE") made up of a host 
processing environment ("HPE") comprising standard personal computer hardware - a central 
processing unit ("CPU"), main memory (e.g., RAM) and mass storage (e.g„ disk drive) - 
operationally connected to each other so that each can perform its familiar function. The mass 
storage stores software capable of being loaded into main memory and executed by the CPU. 

The claimed software has three aspects: (i) machine check programming, which 
derives information from one or more aspects of the HPE and stores it in one more storage 
locations; (ii) integrity programming, which activates the machine check programming to derive 
the same information and compares it to the information previously stored, and (iii) programming 
that takes one or more actions depending on the result of the comparison. As will be shown 
below, the claim elements make out a programming structure that the Durst reference disclosed 
more than four years before the '900 Patent application was filed. 

Before engaging in an element-by-element comparison, it is useful to look at the 
claims as a whole. The specification of the '900 Patent provides context and sheds light on the 
purpose and function of the claimed purported invention. Programming that derives information 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV 1:260026. 1 - 4 OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT. ('900 Patent), CO I -1640 SB A (MEJ) 


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about a system, compares it to previously stored, similar information, andtakes protective action 


based on that comparison is well-known in the art - the derived, stored information is often called 
a "machine signature." The '900 specification contains a discussion of machine signatures that, 
discloses program features corresponding to those of claims 155-57. 

The disclosed "machine signature" technique involves two programming modules: 
the "installation materials" and the "operational materials": 

The installation materials 3470 may be executed by computer 3372 to 
install the operational materials 3472 onto the computers hard disk 
3376. The computer 3372 may then execute the operational materials 
3472 from its hard disk 3376 to provide software-based protected 
processing environment 650 and associated software-based tamper 
resistant barrier 672. 


'900 Patent, 23 1:25-31. 

The installation materials derive a machine signature from the electronic appliance 
and embed that signature into the operational materials. Then, when the operational materials are 
initialized on an appliance, they derive the machine signature of the appliance and compare it to 
the embedded signature: , ' ' „ 

Correspondence Between Installed Software and Appliance < 
"Signature". 

Another technique that may be used during the installation routine 
3470 is to customize the operational materials 3472 by embedding a 
"machine signature 1 ' into the operational materials to establish a 
correspondence between the installed software on a particular 
electronic appliance 600 (FIG. 69C, block 3470(7)). This technique 
prevents a software-based PPE 650 from being transferred from one 
electronic appliance 600 to another (except through the use of the 
appropriate secure, verified backup mechanism).- 

For electronic appliances 600 where it is feasible to do so, the 
installation procedure 3470 may determine unique information about 
the electronic appliance 600 (e.g.., a "signature" SIG in the sense of a 
unique value-not necessarily a "digital signature" in the cryptographic 
sense). Installation routine 3470 embeds the electronic appliance 
"signature" SIG in the installed operational materials 3472. Upon 
initialization, the operational materials 3472 validate the embedded 
signature value against the actual electronic appliance 600 signature 
SIG, and may refuse to start if the comparison fails. 

'900 Patent, 239:4-25 . This language is followed by a description of how various machine 
parameters can be used to generate signatures. Id., 239:26-240:42, To summarize, the 


DOCSSV1;260026:I 


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NOTICE OF MOTION AND MEMORANDUM fN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT (*900 Patent),' C01-I640-SBA (MEJ) 


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installation programming embeds a machine signature in the "PPF' ("Erolected Processing 
Environment") software, which embedded signature is validated each time the PPE is initialized 
by comparing it to the machine signature of the current machine. If the two signatures do not 
match, reflecting that the PPE software has been transferred to a different^ unauthorized machine, 
the PPE refuses to start. 1 1 

2. The Durst Reference - Overview 

The Durst Patent, titled "Method and System for Preventing Unauthorized Use of 
Software," discloses the same arrangement, functioning in the same manner; with the same 
elements. The Durst system also has the same purpose as the claimed '900 Patent's system - to 
prevent the use of software on an unauthorized computer. The abstract of the Durst Patent 
succinctly captures its close similarity to the apparatus in claims 155-157 of the '900 Patent: 

A technique is disclosed for preventing a computer program f\om 
being used by a computer system other than a designated system. The 
values of certain characteristics exhibited by the designated computer 
system first are stored, and then the values of those same 
characteristics exhibited by the compyter system which is intended to 
use the computer program are measured and compared to the scored 
values. If the compared values are substantially the same, -the 
computer program may be executed. However, if they are different, 
the computer system which was intended to use the program is 
inhibited from executing that program. 

And, just as in the '900 Patent, Durst discloses embedding the machine signature in the software 
itself. Durst, 26:14-21; 27:1 1-13. The sections that follow show in detail that Durst discloses 
each and every element of these three '900 Patent claims. 

3. The System Environment J 

The three '900 Patent claims first recite the computing context in which the 
programming operates. These basic elements are as follows: 


Claim 
Language 


A virtual distribution environment comprising 


As construed by the Court, this element is simply the sum of the other elements 
:hat follow. A "virtual distribution environment" is "defined by the elements of 900.155 [claim 
155 of the '900 Patent]; it has no definition independent of those elements." Order Denying 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
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JUDGMENT ('900 Patent), CO I - 1 640' SB A (MEJ) 


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Motion for Partial Summary Judgment and Construing "Mim-Markman-Glaims" ("Markman 
Order"), July 3, 2003, at 55. 1 Therefore, the Durst reference need not disclose it as such. 2 


Claim 
Language 


a first host processing environment comprising 


The Court has defined "host processing environment" ("HPE") to mean 
"capabilities .available to a program running on a computer or other device or to the user of a 
computeror other device," which, "[depending on the context ... may be in a single device {e.g., 
a personal computer) or may be spread among multiple devices (e.g., a network)." Markman 
Order, at 45. There is a further distinction between, a non-secure HPE and a secure HPE, the 
latter having two additional features: its "processing and/or data is at least in part protected from 
tampering," and it incorporates "software-based security." Id. 

The Durst reference discloses "HPEs" of both types. First, the Durst reference 
discloses that its technology is to be used within a computer system. Durst, Fig. 1, and 5:60-64. 
Second, the software is "tamper-resistant" ("make[sj tampering more difficult and/or allow[s] 
detection of tampering " Markman Order, at 51), Djirst discloses an embodiment in which the 
machine signature is itself stored within the software in encrypted form and can thereafter be 
altered only with a password provided by the manufacturer. In this embodiment, the 
manufacturer will first confirm that the customer has modified the system hardware and is 
mthorized to receive a new password. Durst, 26:14-21; 27:1 1-13; 28:6-27. Additionally, the 
software may be programmed to change the encrypted key after re-recording the machine 
signature so that each password maybe used only once. Durst, 28:3-27. The encryption makes it 
nore difficult to tamper with the machine signature, which is both part of the software's code and 
central to its authorization functions. 
// 


The same would presumably apply to the VDE element of claims 156 and 1 57, which employ 
he term "VDE" in exactly the same fashion as claim 155 and which are otherwise almost 
dentical to claim 155. 

Microsoft maintains its argument that "VDE" is the "present invention" identified in the '900 
>atent f900 Patent, 2:19-32), and that the asserted claims are invalid for lack of written 
lescription (35 U.S.C. § 112), non-enablement and are not infringed. 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
lOCSSV 1:260026.1 - 7 - OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

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Finally, the system described in Dursp incorporates "software-based security." The 
Court has construed "secure" to mean employing "[b]ne or more mechanisms ; . . that prevent or 

discourage . . . misuse of or interference with information or processes for the purpose of 
discouraging and/or avoiding harm," which mechanisms may. include "tamper resistance" and 
"authentication," the latter separately defined to mean "(identifying (e.#« a . . . device 
•includ[ing] uniquely identifying." The software contains both the encryption tamper-resistance 
feature described above, and authentication - programming that creates and uses machine 
signatures to uniquely identify hardware and thereby prevent unauthorized use of the software. 
Inasmuch as both of these forms of security are software-based, the Durst reference discloses all 
the features of a HPE under either definition of that term. 


Claim 
Language 


a central processing unit 


A central processing unit is a standard computer component -in personal 
computers, this. is typically a microprocessor. The Durst Patent discloses a central processing 
unit. Durst, Fig. 1; 7:26. • ' , ( * 


Claim 
Language 


main memory operatively connected to said central processing unit 


The Durst reference discloses a main memory (RAM) connected to the CPU. 
Durst, Fig. 1; 7:18-20. 


Claim 
Language 


mass storage operatively connected to said central processing unit and said 
main memory • 


The Durst reference discloses mass storage (disk drive) connected to the CPU and 
main memory. Durst, Fig. 1; 8:15-18 ("... for convenience, the following description is directed 
to software embodied in the form of a floppy disk, although the specification should be 
interpreted to include ... other mass storage devices"); 9:3-4 ("Disk drive 1 16 may take the form 
of a floppy disk drive or a fixed disk drive, the latter also being referred to as a 'hard' or 
'Winchester' disk drive"). 


DOCSSV 1:260026. 1 


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NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT-C900 Patent'!, C0M64OSBA (MEJ) 


Claim * 
Language 


said mass storage storing tamper resistant software designed to be loaded 
into said main memory and executed by said central processing unit, said 
tamper resistant software comprising ' 


The Durst software is tamper resistant (see discussion of HPE claim element, 
above). It is, in the standard fashion, loaded from mass storage (e.g. , a hard or floppy disk drive) 
into main memory (e.g. , RAM) and Executed by the CPU. 

• 4. The Programming Is The Same 

The "programming" in the claims at issue has three aspects: "machine check 
programming," wfych undertakes the generation and storage of the machine signature based on 
HPE information; "integrity programming," Which activates the machine check programming to 
re-gerierate the machine signature and compares the result with the stored signature; and 
"programming which takes one or more actions" based on the result of the comparison. The 
Durst Patent discloses all of these. ' 

a* Machine Check Programming 


Claim 
Language 


machine check programming which derives information from one or more 
aspects of said host processing environment, one or more storage locations 
storing said information , ' . 


(1) The Meaning Of This Element 

"Machine check programming" is a module that derives information from one or 
more aspects of the HPE. The court has defined "derive" to mean "obtain, receive, or arrive at 
through a process of reasoning or deduction. In the context of computer operations, the 'process 
of reasoning or deduction' constitutes operations carried out by the computer." Markman Order, 
at 21 . In other words, the computer programming carries out operations on aspects of the 
computing environment to produce data in some form (the machine signature), which it then : 
stores. 

The parties agree that this claim language applies to any derivation of information 
that represents an attribute of the hardware on which the machine-check programming is running, 
Throughout its infringement chart, for instance, InterTrust matches this language with the 

//./' 
/// 

rw-ocwi nr/iA« o NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 

UOCbbV 1:260026.1 OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ('900 Patent), CO I -1 640 SB A (MEJ) 


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following description of an infringing element: "derives from the clienlxomputer .^hardware ID 
information." InterTrust's Amended Disclosures of Asserted Claims and Preliminary 
Infringement Contentions ("IT's Amended Disclosures"), at 18, 20, 34, 36, 38, 40, 42, 44 
(emphasis added). In short, the machine signature rnay be based on hardware information. 

The parties also agree that hardware ID information can "be basedon any parameter 
of the physical, material part of the computer, such as "one or more of the CDROM device, disk 
adapter, disk device, display adapter, first drive serial number, MAC address, processor serial, 
processor type, RAM size, SCSI adapter, PCMCIA controller, audio adapter, and whether the 
computer is dockable." IT's Amended Disclosures, at 25. Elsewhere in its chart, InterTrust lists 
an overlapping but somewhat different set of hardware attributes that could serve as the source of 
the derived information. Microsoft agrees that any hardware parameters will do. 

"Machine check programming" cannot, however, refer to the derivation of 
attributes solely from software files stored on the system. InterTrust has taken inconsistent 
positions on this point, arguing that even a software module that derives its checkable values 
entirely from such files can constitute "machine check programming." See, e.g., IT's Amended 
Disclosure, at 23 (accusing Windows File Protection). InterTrust's inconsistency is immaterial to 
this motion as Durst clearly teaches deriving information from hardware, which satisfies the 
requirements of § 102(b) anticipation. ■ 

(2) Machine Check Programming in the Durst Reference 

The Durst Patent discloses machine-check programming that generates a machine 

signature from hardware parameters and stores it. The software contains a "measure signature" 
step, Durst, Fig. 14 (and see generally 26:55-27:31), and "the 'signature' of a computer system is 
intended to refer to the values of certain characteristics exhibited by that system." Durst, 3:45-47. 
The characteristics can be of two types: "(a) parameters which are designed specifically into 
individual computer systems (such as the type of processor, the version of operating software, 
etc.), and (b) parameters which are defined by particular tolerances in the manufacture of the 
computer system and its peripherals {e.g., the specific rotating speed of a disk drive, which may 
/// • 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV1:260026.I -10- OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ('900 Patent). C0I-1640 SBA (MEJ) 


1 

2 
3 
. 4 
5 
6 
7 
8 
9 
.10 
11 
12 
13 
14 
15 
16 
17 
18 
19 
20 
21 
22. 
23 
24 
25 
26 
27 
28 


vary within a range of design tolerances, etc.)." Id., 3:60-68. Much oCDjjrst's written. description 
explains how to measure particular hardware characteristics in order to create a machine 
signature, such as the 

identification of the computer system processor, the clock speed of 
the computer system clock generator, an identification of the 
computer system ROM, the wait time,' or wait cycles, assigned to 
the computer system processor for accessing a RAM, the rotary 
■ speed of a computer system disk drive, the access speed of that disk 
drive and the sector interleave value of that disk drive. 

Id., 3:50-57; col. 1 1 - col. 25 (detailed description of measuring techniques). However, "[t]he 
invention is not intended to be limited solely' to the^e examples; and other characteristics which 
can be used to distinguish one computer system from another are contemplated." Id., 3:57-60. 

i 

The signature is "determined in accordance with the subroutines" that extract these various 
hardware measurements, as described in columns 1 1-25. Durst, 25:58-60. 

The Durst reference also discloses "one or more storage locations storing said 
information": "After the signature of the computer system has been measured, it is recorded, or 
stored, in the software integrated with the applications program." Id., 26: 14-16; also 27: 1 1-13. 

b. Integrity Programming 


Claim 
Language 


integrity programming which 

causes said machine check programming to derive said information 
compares said information to information previously stored in said 
one or more storage locations, and 

generates an indication based on the result of said comparison 


(1) The Meaning of This Element 

The integrity programming activates )he machine check programming, causing it 
to derive information based on HPE parameters in the same manner as discussed above, to 
compare the result to the previously stored result, and to generate an indication reflecting the 
outcome of that comparison. 

An aside is needed regarding the phrase "said information." This language is 
slightly confusing in that it might be taken to mean that the results of the derivation of 
information must be the same as the previously stored information. Yet the purported invention's 
functionality depends on comparing the latter result with the machine signature previously stored 

NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DOCSSV1:260026.I -11- OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT (*900 Patent), C0M640 SBA (MEJ) 


.2 
3 
4 
5 
6 
.7 
8 

.9 
10 
11 
12 
13 
14 

15 
16 

17 
18 
19 
20 
21 
22 
23 
24 
25 
26 
27 
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to determine if the two are different. Thus, "said information" must meafianformation derived in 

the same manner by the same programming, but which may lead to a different value each time it 

is run. This construction of the term is supported by the specification, '900 Patent, 239:4-25, and. 

by InterTrust's own infringement chart. 3 IT's Amended Disclosures, at 28. 

. . - / 

(2) Integrity Programming in the Durst Reference 

Just as in the '900 Patent claims, the Durst reference discloses programming which 

causes the machine signature to be derived, compares it with the stored signature, and produces 

an indication based on the result. On this point, the language of the Durst Patent is such that a 

comparison chart is the most efficient way to demonstrate the correspondence between the claim 

language and the Durst reference: 


integrity programming 
which 

.■■■--« ■ - - --— - -. ■ — * 

"The copy protection procedure inquires initially at 1402 if a 
signature has been stored previously on the floppy disk. If 
this inquiry is answered in the affirmative " (26:59-62; Fig. 
14) 

causes said machine 
check programming to 
derive said 
information, 

"then the signature of the computer system with which the 
applications program is. intended to be run is measured." 
(26:62-64) • 

compares said 
information to 
. information previously , 
stored in said one or 
more storage locations, 
and 

"If the measured signature is the same as the previously 
determined and stored signature, inquiry 1412 is answered in 
the affirmative and the applications program is executed, as 
represented by instruction 1408. However, if inquiry 1412 is 
answered in the negative, an error message is displayed, 
thereby indicating that an attempt has been made to run the 
applications program on an unauthorized computer system." 
(26:64-27:3) 

generates an indication 
based on the result of 
said comparison; and 


/// 
III 
III 
III 


3 Microsoft rejects InterTrust's infringement assertions as to its products and cites InterTrust's 
infringement position only to show that the parties are in agreement on the relationship between 
the two different hardware checks that the software performs. 


DOCSSV 1:260026.1 


NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
- 1 2 - OF MICROSOFT^ MOTION FOR PARTIAL SUMMARY 

JUDGMENT ('900 PATUr^r), COI-1640 SBA (MEJ) 


1 I c. Programming That Undertakes an Action Based on the 

I Comparison Result 

2, 
3 
4 
5 
6 
7 
8 


Claim 
Language 

programming which takes one or more actions based on the state of said 
indication 

Claim 
155 only 

said one or more actions including at least temporarily halting further 
processing. 

Claim 
156 only 

said one or more actionsdncluding at least temporarily disabling 
certain functions. 

Claim 
157 only 

, said one or more actions including displaying a message to the user. 


20 
21 
22 
23 
24 
25 
26 


The action the software takes upon discovering a discrepancy between the 
9 previous and the current machine signature is the only respect in which claims 155, 156 and 157 

10 differ from one another. The Durst reference discloses ,a response to an attempt at unauthorized 

1 1 use of the software that satisfies each of these three different claim elements: 4 ".[I]f inquiry 1412 

12 t me check of whether the present and stored signatures match] is answered in the.negative, an 
J 3 error message is displayed, thereby indicating' that an attempt has been made to run the 

14 applications program on an unauthorized computer system. It is appreciated that, under this 

1 5 condition, the applications program cannot be executed." Durst, 26:68-27:5. This clearly meets 

1 6 the limitations of displaying a message to the user and disabling certain functions, respectively. 

17 Regarding "at least temporarily halting processing," the Durst Patent discloses that 
jg the consequence of a negative comparison of machine signatures is to halt processing of the 
19 J protected software. Durst, Figs. 13B, 14, 15; col. 26:68-27:5. 

/// ' . ' 

III . • ' 
/// 

/// . 
Ill 

Ill ' 
III . 


27 Microsoft notes that the claim language, read plainly, actually requires that the programming 
^ take one or more actions regardless of the outcome of the comparison: "programming which takes 
one or more actions based on the state of said comparison." 

' • - ' NOTICE OF MOTION AND MEMORANDUM IN SUPPORT 
DQCSSV 1:260026.1 - 13 - OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 

JUDGMENT ("900 Patent). C0I-1640 SBA (MEI) 


1 

2 
3 
4 
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6 
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8. 
9 
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11 
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14. 
15 
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17 
18 
19 
20 
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24 
25 
26 
27 
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IV. CONCLUSION 



Because the Durst Patent disclosure has each and ,every element of the challenged 
claims Microsoft respectfully requests that the Court declare claims 1 55, 156 and 1 57 of U.S. 
Patent No. 5,892,900 to be invalid as anticipated by a prior patent, pursuant to 35 U.S.C. 


WILLIAM L. ANTHONY '■ ~/f~ 

ERIC L. WESENBERG V 
HEIDI L. KEEFE 
KENNETH J. HALPERN 
SAM O'ROURKE 

ORRICK HERRINGTON & SUTCLIFFE, LLP 

1000 Marsh Road 

Menlo Park, CA 94025 . 

Telephone: (650)614-7400 

STEVEN ALEXANDER 
KRISTIN L. CLEVELAND 
JAMES E. GERJNGER 
JOHN'D. VANDENBERG 
KLARQUIST SPARKMAN, LLP 
One World Trade Center, Suite 1600 
121 S.W. Salmon Street 
Portland, OR 97204 
Telephone: (503)226-7391 

Attorneys for Defendant and Counterclaimant 
MICROSOFT CORPORATION 


Of Counsel: 


T. Andrew Gilbert, Esq. 
One Microsoft Way 
Building 8 

Redmond, WA 98052-6399 
Phone: (425)882-8080 


:260026.1 


- 14- 


NOT1CE OF MOTION AND MEMORANDUM IN SUPPORT 
OF MICROSOFT'S MOTION FOR PARTIAL SUMMARY 
JUDGMENT ('900 Patent), C01-I640 SBA (MEJ) .