UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`SIPNET EU S.R.O.,
`
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`
`Patent Owner
`
`________________
`
`
`
`Case IPR2013-00246
`U.S. Patent No. 6,009,704
`
`________________
`
`
`
`
`
`PATENT OWNER’S
`SUPPLEMENTAL BRIEFING
`
`
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`SIPNET EU S.R.O.,
`
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`
`Patent Owner
`
`________________
`
`
`
`Case IPR2013-00246
`U.S. Patent No. 6,009,704
`
`________________
`
`
`
`
`
`PATENT OWNER’S
`SUPPLEMENTAL BRIEFING
`
`
`
`Table of Contents
`
`
`
`Page
`
`I.
`The CAFC’s Construction Of “is connected” Is Controlling .......................... 2
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction .................................................................... 3
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network. .................................................................. 4
`B. Whether a name has been released does not indicate whether
`any particular computer is connected to the computer network. .......... 5
`The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released. ....................................... 6
`III. Conclusion ....................................................................................................... 7
`
`C.
`
`
`
`
`
`
`
`i
`
`
`
`
`
`
`
`Case No. IPR2013-00246
`
`TABLE OF AUTHORITIES
`
`Cases Page(s)
`Phonometrics, Inc. v. Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ............................................................................ 2
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`No. 15-1212 (Fed. Cir. Nov. 25, 2015) .......................................................passim
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Case No. IPR2013-00246
`
`TABLE OF ABBREVIATIONS
`
`
`ABBREVIATION
`CAFC
`R
`Sipnet
`
`WORD PHRASE
`Court of Appeals for the Federal Circuit
`Straight Path’s Patent Owner Response
`Federal Circuit Opinion in Straight Path IP Group,
`Inc. v. Sipnet EU S.R.O., No. 15-1212
`(Fed. Cir. Nov. 25, 2015)
`
`
`
`iii
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2013-00246
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`CASE IPR2013-00246
`
`PATENT OWNER EXHIBIT #
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`2013
`2014
`
`2015
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`DESCRIPTION
`Power of Attorney
`Request for Ex Parte Reexamination
`Reexamination Certificate
`Response to Non-Final Rejection in a
`Re-Examination
`Notice of Intent to Issue Ex Parte
`Reexamination Certificate
`Final Rejection
`List of References
`Complaint for Patent
`Stipulation for Dismissal
`June 11, 2013 Letter from P. Lee to P.
`Haughey
`June 17, 2013 Correspondence from P.
`Haughey to P. Lee
`IPR2012-00041 Decision
`Patent Owner’s Certificate of Service
`Declaration of Alan M. Fisch in
`Support of Motion for Admission Pro
`Hac Vice
`Certificate of Service
`Declaration of Jason F. Hoffman in
`Support of Motion for Admission Pro
`Hac Vice
`Declaration of R. William Sigler in
`Support of Motion for Admission Pro
`Hac Vice
`Declaration of Professor Ketan Mayer-
`Patel
`Curriculum Vitae of Prof. Ketan
`Mayer-Patel
`Declaration of David K. Callahan
`
`iv
`
`
`
`
`
`Case No. IPR2013-00246
`
`DESCRIPTION
`Stalker Complaint
`Stalker Summons
`Declaration of Michelle Chatelain
`Sipnet - Contacts
`Sipnet.Net
`Dec. 10, 2013 Petitioner Response to
`Discovery
`Oct. 28, 2013 Patent Owner
`Interrogatories
`Nov. 26, 2013 Petitioner Objections to
`Interrogatories
`Dec. 20, 2013 Petitioner Response to
`Supplemental Discovery Requests
`CommuniGate – Tario
`Communications
`CommuniGate – Yuri Kolesnikov
`Dec. 4, 2013 Telephonic Hearing
`Oct. 25, 2013 Patent Owner Objections
`to Exhibits
`Nov. 6, 2013 Petitioner Supplemental
`Evidence
`NT Resource Kit
`Nov. 27, 2013 Petitioner Supplemental
`Evidence
`Nov. 27, 2013 Petitioner Decl. of Yuri
`Kolesnikov
`May 11, 2010 Office Action in a
`Reexamination
`Nov. 6 2013 Petitioner Supplemental
`Evidence (A)(1)
`[Reserved]
`[Reserved]
`Y. Kolesnikov LinkedIn Profile
`(served on Petitioner at May 29, 2014
`Y. Kolesnikov Deposition)
`
`
`
`PATENT OWNER EXHIBIT #
`2021
`2022
`2023
`2024
`2025
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`2032
`2033
`
`2034
`
`2035
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`2041
`2042
`
`
`
`v
`
`
`
`
`
`PATENT OWNER EXHIBIT #
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`
`2048
`2049
`2050
`
`2051
`2052
`
`
`
`
`
`Case No. IPR2013-00246
`
`DESCRIPTION
`May 29, 2014 Y. Kolesnikov
`Deposition Transcript
`May 29, 2014 L. Ehrlich Deposition
`Transcript
`May 30, 2014 V. Antonov Deposition
`Transcript
`Oct. 25, 2013 Patent Owner Objections
`to Evidence
`May 6, 2014 Patent Owner Objections
`to Evidence
`Patent Owner’s Demonstratives
`Patent Owner’s Power of Attorney
`Declaration of Michael C. Newman in
`Support of Motion for Pro Hac Vice
`Admission
`Biography of Michael C. Newman
`2016-04-13 email from Pavel Pogodin
`
`vi
`
`
`
`
`
`
`
`Case No. IPR2013-00246
`
`When the CAFC rejected Petitioner Sipnet’s claim construction arguments
`
`in the Sipnet Appeal, Sipnet effectively lost its IPR. In Sipnet’s Petition and Reply
`
`Brief, it provided no argument or evidence that WINS and NetBIOS disclosed the
`
`“is connected” limitations under Straight Path’s—and now the CAFC’s—
`
`construction. Instead, Sipnet chose to rely solely on its proposed “registered”
`
`construction, which the CAFC has now explicitly rejected: “[i]t is not a reasonable
`
`interpretation of the claim language, considering its plain meaning, to say that it is
`
`satisfied by a query that asks only for registration information, regardless of its
`
`current accuracy.” Sipnet at 7. Accordingly, because Sipnet’s entire IPR challenge
`
`is based on an incorrect claim construction, Sipnet has failed to meet its burden of
`
`proving invalidity as a matter of law.
`
`Indeed, Sipnet has effectively admitted its failure to carry it its burden in this
`
`IPR. On remand, Sipnet originally requested leave to file additional briefing so that
`
`it could present invalidity arguments under the now-controlling claim construction
`
`established in the Sipnet Appeal. (See Paper No. 68 at 2). But when the Board
`
`ordered that the additional briefing “shall not include any new evidence or any new
`
`argument” and further required Sipnet to “provide citations in the [requested]
`
`additional briefing to those portions of the previously existing record where the
`
`argument were originally introduced” (Paper No. 68 at 2-3), Sipnet informed the
`
`
`
`1
`
`
`
`
`
`Case No. IPR2013-00246
`
`Board that it would not be filing the requested additional briefing after all, thereby
`
`tacitly admitting that Sipnet had not previously presented any invalidity arguments
`
`or evidence under the now-controlling claim construction. (Exhibit 2052).
`
`Nor could Sipnet have reasonably presented any such argument or evidence,
`
`because all of the evidence of record establishes that the WINS and NetBIOS
`
`references do not teach the “is connected” limitations under the CAFC’s
`
`controlling claim construction.
`
`I.
`
`The CAFC’s Construction Of “is connected” Is Controlling
`
`It is undisputed that each challenged claim requires a determination of
`
`whether a process “is connected to the computer network” or some variation
`
`thereof, such as “currently connected to the Internet” or “on-line.” (R at 19-25;
`
`‘704 patent at claims 1-7, 32-42). For example, representative challenged claim 1
`
`is directed to a “computer program product” that (1) transmits to the server a
`
`“query as to whether the second process is connected to the computer network,”
`
`and (2) receives the second process’s network protocol address from the server
`
`“when the second process is connected to the computer network.” (R at 2, 4, 16-
`
`17, 19-20; ’704 patent at claim 1).
`
`In Sipnet, the CAFC construed the “is connected to the computer network”
`
`limitation “and the counterpart claim phrases that the parties agree bear the same
`
`
`
`2
`
`
`
`
`
`Case No. IPR2013-00246
`
`meaning . . . to mean ‘is connected to the computer network at the time that the
`
`query is transmitted to the server.’” Sipnet at 13 (emphasis added). There is no
`
`dispute that the CAFC’s construction is controlling here. See, e.g., Phonometrics,
`
`Inc. v. Westin Hotel Co., 350 F.3d 1242, 1244-1245 (Fed. Cir. 2003).
`
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction
`
`Unlike the challenged claims under the CAFC’s construction, WINS and
`
`NetBIOS do not describe any mechanisms for tracking or determining whether a
`
`computer (much less the claimed process) is connected to the computer network at
`
`the time of the query, nor do they describe any mechanism for sending the
`
`requested target’s address dependent on if that target is in fact connected to the
`
`computer network at the time of the query. (R at 2-3, 17, 31-46). Indeed, the art
`
`explicitly admits it cannot: “[a]ny name-to-IP address mapping registered with a
`
`WINS server can be provided reliably as a response to a name query. However, a
`
`mapping in the database does not ensure that the related device is currently
`
`running.” (Ex. 1004 at 72-74; R at 2-3, 17, 31-46).
`
`This is because whether a computer is online is not tracked or considered by
`
`the WINS and NetBIOS name servers. (Ex. 1004 at 64-70, 72-75; Ex. 1003 at 377-
`
`378, 394-398; R at 2-3, 17, 31-46). Rather, name servers have a different purpose,
`
`
`
`3
`
`
`
`
`
`Case No. IPR2013-00246
`
`i.e., enabling one computer to request another target computer’s IP address by
`
`name. (Ex. 1004 at 64-70, 72-75, 121; Ex. 1003 at 377-378, 394-398, 406; R at 17,
`
`31-32, 39-40). To this end, the WINS and NetBIOS name servers have two
`
`primary functions: (1) Registration, by which the name server ensures that two
`
`different computers do not claim the same name and (2) Resolution, by which the
`
`name server determines and returns a computer’s address when that address is
`
`requested using the computer’s name. (Ex. 1004 at 64-70, 72-75; Ex. 1003 at 377-
`
`378, 394-398, 406-409; R at 31-36, 39-44). In performing these functions, the
`
`WINS and NetBIOS servers do not check or rely on whether any particular
`
`computer (or process) is online. (Ex. 1004 at 64-70, 72-75; Ex. 1003 at 394-398,
`
`406-409; R at 2-3, 17, 31-46).
`
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network.
`
`During Registration, a computer tries to register a name, and the name server
`
`then checks if another computer is already using that name. (Ex. 1004 at 64-70, 72-
`
`75; Ex. 1003 at 378, 394-400, 402-405, 412-414; R at 31-36, 39-44). If any
`
`computer previously registered that name, the server checks if that computer has
`
`relinquished its claim to (has “released”) that name. (Ex. 1004 at 64-68, 72-75; Ex.
`
`1003 at 378, 394-400, 402-405, 411, 412-414; R at 31-36, 39-44). During
`
`
`
`4
`
`
`
`
`
`Case No. IPR2013-00246
`
`Resolution, a first computer asks the name server for a second computer’s address
`
`using that second computer’s name (a “name query”); the server then searches its
`
`database for an address mapped to the queried name and, if a mapping exists,
`
`returns that address to the first computer. (Ex. 1004 at 64-70, 72-73; Ex. 1003 at
`
`395, 406-409, 415-417; R at 31-36, 39-44).
`
`At no time during Registration or Resolution does the WINS/NetBIOS name
`
`server try to determine if any computer is currently online. (Ex. 1004 at 64-70, 72-
`
`75; Ex. 1003 at 378, 395-400, 402-409, 411-417; R at 2-3, 17, 31-46).
`
`B. Whether a name has been released does not indicate whether any
`particular computer is connected to the computer network.
`
`Whether a computer has released a name is no indication of, and cannot be
`
`relied on to show, whether that computer is connected to the computer network
`
`under the CAFC’s construction. (Ex. 1004 at 64-70, 72-73; Ex. 1003 at 395, 406-
`
`409, 415-417; R at 31-36, 39-44). A computer that is offline can still have a
`
`registered, unreleased name. (Ex. 1004 at 72-75, 129-131, 148-149; Ex. 1003 at
`
`378, 394-400, 402-405, 411-414; R at 31-36, 39-44). Conversely, a computer that
`
`is online can release its name yet stay connected to the computer network. (Ex.
`
`1004 at 72-75, 129-131, 148-149; Ex. 1003 at 378, 395, 398, 400, 411; R at 31-36,
`
`39-44).
`
`
`
`5
`
`
`
`
`
`Case No. IPR2013-00246
`
`For example, a computer may have a permanent name that is never released,
`
`even when the computer is offline. (Ex. 1004 at 138-143; Ex. 1003 at 394, 396,
`
`411; R at 31-36, 39-44). Even a computer with a temporary name may go offline
`
`without releasing its name—which the references themselves admit is “common”
`
`and “occurs frequently”—and its name will stay unreleased until and unless a
`
`second computer attempts to register the same name and successfully challenges
`
`the first computer’s registration. (Ex. 1004 at 72-75, 129-131, 148-149; Ex. 1003 at
`
`378, 394-400, 402-405, 411-414; R at 31-36, 39-44).
`
`C. The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released.
`
`Just as the name server does not attempt to determine whether any computer
`
`associated with a queried name is connected to the network during Resolution, it
`
`also does not attempt to determine whether the queried name has been released.
`
`(Ex. 1004 at 64-68, 72-74; Ex. 1003 at 394-398, 406-409, 415-417; R at 31-36, 39-
`
`44). Once a name is mapped to an IP address, the name server will continue to
`
`provide that address in response to a name query—regardless of whether the target
`
`is online or the name has been released—until that name is removed all together
`
`from the database. (Ex. 1004 at 64-68, 72-74; Ex. 1003 at 395, 406-409, 415-417;
`
`R at 31-36, 39-44).
`
`
`
`6
`
`
`
`
`
`Case No. IPR2013-00246
`
`Thus, even if a name’s released status did somehow correspond to whether a
`
`computer was in fact online—and it does not—that name status has no effect on
`
`whether the name server will return a requested IP address. (Ex. 1004 at 64-68, 72-
`
`74; Ex. 1003 at 394-398, 406-409, 415-417; R at 31-36, 39-44).
`
`III. Conclusion
`For these reasons previously established in the IPR record, the Board should
`
`issue a Final Written Decision finding that Sipnet has failed to show that any of the
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (pro hac vice -
`pending)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`
`challenged claims are unpatentable.
`
`Dated: April 14, 2016
`
`
`
`
`
`
`
`
`
`7
`
`
`
`
`
`Case No. IPR2013-00246
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Supplemental Briefing is being
`
`served by electronic mail on the following counsel for the Petitioner:
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`SIPNET EU S.R.O.
`
`Pavel I. Pogodin
`TransPacific Law Group
`1 Daniel Burnham Ct., Unit 914,
`San Francisco, California, 94109
`pavel@transpacificlaw.com
`
`Sanjay Prasad
`PRASAD IP, PC
`sanjay@prasadip.com
`
`
`
`Dated: April 14, 2016
`
`
`
`8
`
`
`
`47248420v.1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
