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 No. IPR2013-00246
`
`U.S. Patent No. 6,108,704
`
`Before KLAYAN K. DESHPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE PURSUANT
`
`TO 37 CFR 42.23
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIPNET EU S.R.O.
`
`Petitioner
`
`V.
`
`Straight Path IP Group, Inc.
`Patent Owner
`
`Case No. IPR2013-00246
`
`U.S. Patent No. 6,108,704
`
`Before KLAYAN K. DESHPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE PURSUANT
`
`TO 37 CFR 42.23
`
`
`
`TABLE OF CONTENTS
`
`BACKGROUND & FACTS IN DISPUTE ................................................. .. l
`
`ARGUMENT ................................................................................................ .. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Stalker Software (“Stalker”) is not a Real Party-in-
`Interest ................................................................................................. .. l
`
`The Board correctly construed the term “online” in the
`claims to be met by registering an address. The ‘704
`Patent mechanisms to track the process On-line status are
`fully disclosed in NetBIOS (and WINS). ........................................... .. 4
`
`Patent Owner’s argument that Dependent Claims 5, 6,
`and 7 have additional limitations not taught is actually
`the same argument that tracking of the online status is not
`taught................................................................................................... .. 9
`
`Patent Owner’s argument about the claims 33-37 and
`V
`WINS is the same argument that online status tracking is
`not taught. ......................................................................................... .. 10
`
`Petitioner disagrees that NetBIOS registers a computer,
`not a process ...................................................................................... .. 11
`
`“Dynamic Process Address Allocation” in Independent
`Claims is not a limitation. ................................................................. .. 11
`
`NetBIOS Anticipates Dynamic Address Allocation to
`Computers ......................................................................................... .. 12
`
`H.
`
`Petitioner Has Established That WINS Is Prior Art ......................... .. 13
`
`III.
`
`CONCLUSION ........................................................................................... .. 15
`
`
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`Case No. IPR20l3-00246
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`U.S. Patent 6,108,704
`
`Table of Authorities
`
`Cases
`
`In re Guan Inter Partes Reexamination Proceeding,
`Control No. 95/001,045, “Decision Vacating
`File Date,” (Aug. 25, 2008
`
`In re Sclzlecht Inter Partes Reexamination Proceeding,
`Control No. 95/001,206, Petition at 6-7, (June I 0, 2010)
`
`ResQNet. com, Inc. v. Lansa, Inc.,
`533 F. Supp. 2d 397 (S.D.N.Y. 2008)
`
`ResQNet. com, Inc. v. Larisa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010)
`
`Regulations
`
`Practice Guide for Proposed Trial Rules,
`77 Fed. Reg. 6868, 6870 (February 9, 2012)
`(citing Taylor v. Sturgell, 553 US. 880, 895 (2008))
`
`Other
`
`Explanation ofReal Party in Interest Requirement
`provided by Chief Judge James Donald Smith, Board of
`Patent and Appeals and interferences (“BPAI”). Available
`at http ://www.uspto.goV/aia implementation/smith—b1og-
`extravaganzajsp#heading-2
`
`
`
`Case No. IPR2013—00246
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`U.S. Patent 6,108,704
`
`List of Exhibits
`
`Exhibit 1017: Declaration of Yuri Kolesnikov RE WINDOWS NT 3.5
`
`USER GUIDE.
`
`Exhibit 1018: Declaration of Leslie Ehrlich re contents of Windows NT 3.5
`
`Server package referred to in Yuri Kolesnikov declaration.
`
`Exhibit 1019: Print out of help screen shots
`
`from CD ROM with
`
`WINDOWS NT 3.5 USER GUIDE referred to in Yuri Kolesnikov declaration
`
`[Exhibit 1017].
`
`Exhibit 1020:
`
`“Beyond NetWare 3.12,” Elizabeth Eva , Mauri Laitinen and
`
`Rob Ward,
`
`InfoWor1d. 16.51 (Dec. 19, 1994)
`
`[Page 15 of exhibit refers to
`
`documentation included with Windows NT 3.5]
`
`Exhibit 1021: “Microsoft Offers Solution Server Program,” Newsbytes
`
`News Network (Oct 11, 1994) [refers to documentation included with Windows
`
`NT 3.5].
`
`Exhibit 1022: Transcript of deposition of Ketan Mayer-Patel.
`
`Exhibit 1023: Declaration of Vadim Antonov.
`
`iii
`
`
`
`I.
`
`BACKGROUND & FACTS IN DISPUTE
`
`Petitioner disputes Patent Owner’s allegations that (a) Stalker Software is a
`
`real party in interest; (b) the Prior Art does not teach a determination as to the on-
`
`line status of a process; (c) NetBIOS is incompatible with dynamic address
`
`allocation; (d) the Microsoft TCP (WINS) Guide is not established as a Prior art.
`
`II.
`
`ARGUMENT
`
`A.
`
`Stalker Software (“Stalker”) is not a Real Party—in—Interest
`
`Patent Owner’s argument that Stalker is a real party in interest because
`
`petitioner obtained a copy of WINS from them would make a library a real party in
`
`interest. Petitioner discovered a reference to the WINS reference in the public
`
`litigation record and asked Stalker for a copy. This is not evidence of control by
`
`Stalker — they did not initiate the contact regarding the copy, Sipnet did. 1
`
`Patent Owner quotes one of 3 factors listed in In re Guanz, and suggests it
`
`is controlling)” In re Guan involved a company named “Troll Busters” that
`
`advertised itself as a strawman for Patent Office challenges. In fact, the Patent
`
`Office has declined to adopt In re Guan as controlling and instead said that the
`
`degree of control exercised by a non—party over a party’s participation in the
`
`1 See answer to Interrogatory No. 1, Exhibit 2026
`2 See In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045,
`“Decision Vacating File Date,” (Aug. 25, 2008)
`
`
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`Case N8. IPR2013—0O246
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`U.S. Patent 6,108,704
`
`proceeding is a “common consideration.” 3 The Rules deliberately declined to
`
`promulgate particular factors, allowing the PTAB to consider each case on its
`
`specific facts. 4
`
`In re Schlecht, also cited by the USPTO’s Proposed Rules, involved the
`
`3rd factor of In re Guan quoted above, and the 1st factor of payment for the
`
`request for reexam by another. 5 The USPTO rejected the argument, and
`
`declined to expand the test beyond the circumstances of In re Guan.
`
`Patent Owner also suggests that because there is a vendor relationship
`
`between Petitioner and Stalker, and other connections, that Stalker must be a real
`
`party in interest. None of these relationships, alone or combination, show any
`
`control by Stalker. The facts suggest no control. As Patent Owner noted, the
`
`litigation with Stalker was settled. Also, Petitioner contacted the undersigned
`
`counsel in November, 2012, well before one year from the Jan. 4, 2012 filing of
`
`the complaint against Stalker. There would have been no need for Stalker to use
`
`3 Practice Guide for Proposed Trial Rules, 77 Fed. Reg. 6868, 6870 (February 9,
`2012) (citing Taylor v. Sturgell, 553 U.S. 880, 895 (2008))
`4 Explanation of Real Party in Interest Requirement provided by Chief Judge James
`Donald Smith, Board of Patent and Appeals and interferences (“BPA1”). Available
`at http://www.uspto.gov/aia_implementation/smith-b1og-
`extravaganza.j sp#heading-2
`5 In re Schlecht Inter Partes Reexamination Proceeding, Control No. 95/001,206 (
`June 10,2010).
`
`
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`Case No. IPR2013-00246
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`U.S. Patent 6,108,704
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`a straw—man if they were behind the filing. The petition was not actually filed
`
`until after a first attempt at settlement with Patent Owner.
`
`Patent Owner characterized Petitioner as a reseller of Stalker Software
`
`powered VOIP services. In fact, Petitioner has a broader business of VoIP
`
`offerings (calling cards, mobile gateways) which do not utilize Stalker products.
`
`In 2009-2012 Sipnet offered its VoIP services to 12.5 million Mail.ru
`
`subscribers, and that activity did not involve any “reselling.”
`
`Patent Owner has suggested that Petitioner stalled discovery regarding
`
`Stalker. Petitioner did not want to incur expenses for the first, out of scope
`
`discovery request, before trial initiation. The second request was overbroad, and
`
`the Board agreed in the Dec. 4, 2013 conference call, suggesting Patent Owner
`
`narrow its requests for a required discovery motion. Petitioner answered two
`
`rounds of discovery requests without a motion, in order to attempt to eliminate
`
`this issue. Patent Owner suggests more discovery would prove Stalker was a
`
`real party in interest, yet has not made a motion for such discovery.
`
`Patent Owner also alleges Petitioner did not disclose certain past
`
`connections of witnesses to Stalker. Patent Owner says that Petitioner’s
`
`employee contact with Stalker also worked with Stalker at a previous company,
`
`Tario. In fact, “Tario” is the previous name of the Sipnet company, and Tario
`
`
`
`Case No. IPR20l3—O0246
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`U.S. Patent 6,108,704
`
`Trading Ltd is currently a subsidiary of Sipnet EU s.r.o. Also, the declarant
`
`regarding a second copy of WINS was described as having endorsed a Stalker’s
`
`E—mail product in the past. None of this shows or suggests any control by
`
`Stalker.
`
`Finally, Patent Owner suggests that in the licensing negotiations,
`
`Petitioner did not want a license, but rather wanted to be paid money. In fact, it
`
`was Patent Owner that asked Petitioner’s representative if they wanted money,
`
`and Patent Owner ignores the first attempt at settlement before the filing of the
`
`Petition, which collapsed because Patent Owner was unwilling to change its
`
`standard licensing terms. The second attempt at settlement collapsed because
`
`each party wanted the other to make the first proposal, and neither did.
`
`B.
`
`The Board correctly construed the term “online” in the claims to
`be met by registering an address. ‘704 Patent methods to track the
`process On-line status are fully disclosed in NetBIOS (and WINS).
`
`Patent Owner uses Section II of its Response to raise the argument that
`
`"neither NetBIOS nor WINS teach a query or a determination as to the on—line
`
`status of a process" (p.16), while the ‘704 Patent does teach them: “Each of the
`
`independent claims 1, 2, 4, 32, 33, and 38 require a query or a determination as to
`
`the on-line status of the second process" (p. 19). Petitioner disputes that the ‘704
`
`
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`Case No. IPRZO 1 3-00246
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`U.S. Patent 6,108,704
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`Patent teaches any determination of the on—line status of a process not fully
`
`disclosed in NetBIOS (and WINS).
`
`Patent Owner claims that “the NetBIOS and WINS prior art merely
`
`demonstrates a query as to whether the network address of a computer is registered
`
`in a database, and not a query or a determination as to whether a process is on—line"
`
`(p. 17), whereas "each challenged independent claim requires a query or a
`
`determination whether the computer program is on-line, and not merely whether
`
`the network address of the computer program, or the computer itself, is registered
`
`in a database" (p.25).
`
`This Patent Owner statement contradicts its own quote from the '704
`
`Patent: "The first user operating the first processing unit is thus established in the
`
`database as an active on—line party available for communication using the disclosed
`
`point-to-point Internet protocol” (p.28). This ‘704 Patent quote clearly specifies
`
`that presence of a processing unit name in the database establishes it "as an active
`
`on—line party."
`
`The quote continues: “The first processing unit then sends a query, including
`
`the E—mail address of the callee, to the connection server. The connection server
`
`then searches the database to determine whether the callee is logged-in by finding
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`U.S. Patent 6,108,704
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`any stored information corresponding to the cal1ee’s E-mail address indicating that
`
`the callee is active and on-line. If the callee is active and on—line, the connection
`
`server then performs the primary point—to-point Internet protocol." (p.28). This
`
`‘704 Patent quote clearly specifies that when a ‘connection server’ receives a query
`
`for a name, it simply searches the database, and if the record with that name is
`
`found, it means that the registered process “is active and on-line.''
`
`The Board has already directed Patent Owner to this problem in its Decision
`
`to Institute, and Patent Owner disagreed: “However, the Board went further and
`
`stated that “being ‘on-line,’ [] can be done by registering an address with the
`
`server.” Patent Owner respectfully disagrees that registering an address satisfies
`
`the requirement of “being on-line.” While a process may be on-line at the time of
`
`registration, it may subsequently go off—line." (p.26).
`
`Patent Owner uses the following explanation: the presence of a name in the
`
`database indicates that the process is on—line, because the ‘connection server’ of the
`
`'704 Patent keeps in its database only the registrations that correspond to the on-
`
`line processes. This means that the ‘connection server’ of the ‘704 Patent somehow
`
`detects which of the registered processes went off—line and subsequently removes
`
`those process names from its "a list of processes that are connected to the network"
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`Case No. IPR20l3-00246
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`U.S. Patent 6,108,704
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`(i.e. from the database that the ‘connection server’ uses to respond to the
`
`‘queries’). Patent Owner Expert takes the same position: “So if one of those
`
`processes in the list that [..] subsequently become not connected, then, presumably,
`
`to maintain a list of processes that are connected, that process would have to be
`
`removed from that list.” (Deposition of Dr. Mayer-Patel, p.33 :l8—34:2).
`
`Petitioner disagrees that the NetBIOS Name Server only keeps registrations,
`
`without tracking the on-line status of registered processes. The ‘704 Patent
`
`discloses only two mechanisms that its ‘connection server’ can use to detect if the
`
`registered processes are no longer on-line: (a) registration time-outs, and (b)
`
`explicit notification implemented by a process (or its processing unit) sending an
`
`‘off-line message’ to the ‘connection server’.
`
`Both these methods are fully disclosed in NetBIOS specifications, as
`
`explained in detail in Mr. Antonov’s Declaration (Exhibit 1023, Section VII). He
`
`concluded: "In my opinion, the ‘704 Patent does not disclose or teach any
`
`mechanism to track the on-line status of registered processes other than the
`
`mechanisms disclosed in the NetBIOS references.”
`
`Patent Owner argued there is a third, "polling method" allegedly used by the
`
`‘704 Patent ‘connection server’ to track the on-line status of registered processes.
`
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`Case No. lPR2013—00246
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`U.S. Patent 6,108,704
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`The Patent Owner (p. 27) and the Patent Owner's Expert (Exhibit 2018, p.27)
`
`write: "The Figures of the ’704 Patent demonstrate that a query is performed to
`
`identify on-line status. For example, Figure 2 specifies that the mail server
`
`“POLLS EVERY 3-5 SECONDS” to the second processing unit to ensure a
`
`constant connection to the network." However, this Fig. 2 language is explained as
`
`follows ”The mail server 28 then polls the second processing unit 22, for example,
`
`every 3-5 seconds, to deliver the E-mail.” Thus, the polling is done to deliver the
`
`email, not to ensure a constant connection or determine online status. See Mr.
`
`Antonov’s Declaration, Exhibit 1023, Sections 31-33. In addition, this refers to a
`
`secondary protocol where an email is used to check availability for a call, not
`
`checking online status with a connection server (see Col. 6, 11. 17-23). It expressly
`
`assumes the connection server is “non—responsive.” The mail server "secondary
`
`mechanism" is set forth in Claims 8 and 9, which are not included in this Review.
`
`See Mr. Antonov's Declaration (Exhibit 1023, Sections 31-34) for additional
`
`details.
`
`Finally, the ‘704 patent only describes registering the computer itself (the
`
`“processing unit”) as satisfying online status. The term “process” was not used in
`
`the original specification and claims, and was added later in new claims
`
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`Case No. IPR2013-00246
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`U.S. Patent 6,108,704
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`(amendment dated 12-4-1997). The ‘704 Patent actually describes the name
`
`registration of the “processing unit.” “Upon the first user initiating the point-to-
`
`point Internet protocol when the first user is logged on to Internet 24, the first
`
`processing unit 12 automatically transmits it_s associated E-mail address and its
`
`dynamically allocated IP address to the connection server 26.” (‘704 Pat., Col. 5,
`
`11. 24-31, emphasis added). The “processing unit” is described as follows: “The
`
`first processing unit 12 includes a processor 14, a memory 16, an input device 18,
`
`and an output device 20.” Col. 2, lines 60-62. In other words, a computer; in
`
`particular, a specialized computer in the form of a Webphone.” (‘704 Patent,
`
`Col. 3, ll. 6-10). See Mr. Antonov’s Declaration, Exhibit 1023, Sections 39-47.
`
`Thus, Patent Owner’s admission that NetBIOS registers a computer admits
`
`NetBIOS shows online status. Thus, NetBIOS shows online status both as
`
`described in the patent (registering a processing unit) and as argued by Patent
`
`Owner (registering a process).
`
`C.
`
`Patent Owner’s argument that Dependent Claims 5, 6, and 7 have
`additional limitations not taught is actually the same argument
`that tracking of the online status is not taught.
`
`Patent Owner argues that these claims have additional limitations not
`
`taught, but only describes the online argument “as discussed.” This is not a
`
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`Case No. IPRZO l 3-00246
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`U.S. Patent 6,108,704
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`distinction, as discussed above. With respect to Claim 7, Patent Owner alleges
`
`that Petitioner simply says the offline message is inherent. However, Petitioner
`
`only used “inherent” with respect to Microsoft Messenger, a ground not adopted.
`
`In Petitioner’s claim chart, Petitioner had pointed out a NetBIOS diagram on
`
`page 389 of Exhibit 1003 and released name propagation in WINS. The diagram
`
`in NetBIOS shows an arrow labeled “negative response” from NBNS to the P-
`
`node (see Mr. Antonov’s Declaration, Exhibit 1023, Section 68). When
`
`discussing the ‘off-line” message’ of the Claim 7, Patent Owner confuses name
`
`conflict detection with reporting that no on-line process is found. These errors
`
`are addressed in Mr. Antonov’s Declaration, Exhibit 1023, Sections 67-69.
`
`D.
`
`Patent Owner’s argument about the claims 33-37 and WINS is the
`same argument that online status tracking is not taught.
`
`Patent Owner makes the same argument that neither NetBIOS, nor WINS
`
`(which is an implementation of a NetBIOS Name Server) teach a query as to the
`
`on-line status. Patent Owner makes no argument, and thus must concede that it
`
`is obvious to combine the two references. Thus, determining online status is
`
`done by NetBIOS in the combination, as discussed above.
`
`10
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`Case No. IPR2013—O0246
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`U.S. Patent 6,108,704
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`E.
`
`Petitioner disagrees that NetBIOS registers a computer, not a
`
`process.
`
`NetBIOS RFC1001 clearly states: “An application, representing a resource,
`
`registers one or more names that it wishes to use” (Exhibit 1003, p.378). Mr.
`
`Antonov’s Declaration, Exhibit 1023, Section VIII explains this in detail.
`
`F.
`
`“Dynamic Process Address Allocation” in Independent Claims is
`not a limitation.
`
`Patent Owner alleges that language in the independent claims 1, 2, 4, 32,
`
`and 38 was found to correspond to a dynamic element in the previous Ex-Parte
`
`reexamination, but this is not supported in the referenced Notice of Intent to Issue
`
`Ex Parte Reexamination Certificate, in which the term ‘dynamic’ is used nowhere.
`
`The ‘704 Patent carelessly mixed the terms ‘process’ and ‘processing
`
`unit’ (computer). Patent Owner and Expert Mayer—Patel repeatedly pointed to
`
`the difference between these terms, and insisted that the Claims are formulated
`
`about ‘processes’, and not computers or ‘processing units’.
`
`A computer (‘processing unit’) can be assigned a network address
`
`permanently, and it can keep that address (in its configuration data) when it is
`
`off—line, or even when it is switched-off. A ‘process’ (an instance of a running
`
`application) always receives its network protocol address dynamically, some
`
`11
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`Case No. IPR20l3—00246
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`US Patent 6,108,704
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`time after it has started. The Patent Owner Expert confirms this: “process
`
`would receive a network protocol address when it uses the operating system in
`
`order to make a connection to some other process on some other computer.”
`
`(Mayer—Patel Deposition, Exhibit 1022, p.22: l 5- 19).
`
`The ‘704 Patent claim language of “network protocol address received
`
`by [a process] following connection to the computer networ ” is not anything
`
`new. It is true for all computer processes, including those using NetBIOS. See
`
`Mr. Antonov’s Declaration, Exhibit l023, Section IX.
`
`G.
`
`NetBIOS Anticipates Dynamic Address Allocation to Computers
`
`As mentioned above, the ‘704 Patent does not show true dynamic
`
`addressing. Nevertheless, Mr. Antonov’s Declaration (Exhibit 1023, Section X)
`
`demonstrates that dynamic address allocation to computers was anticipated not
`
`only by WINS (which was explicitly designed to work in dynamic addressing,
`
`DHCP-based environment), but that it was clearly anticipated by the NetBIOS
`
`specification itself, of which WINS is an implementation. Petitioner notes that
`
`Patent Owner does not dispute the fact that WINS anticipates dynamic address
`
`assignment to computers.
`
`12
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`Case No. IPR20l3-00246
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`U.S. Patent 6,108,704
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`H.
`
`Petitioner Has Established That WINS Is Prior Art
`
`Patent Owner takes the position that WINS was not publically available —
`
`Patent Owner suggests that the manual for Microsoft’s flagship product, in its
`
`dominate market (companies) of the most well—known software company in the
`
`world at the time, wasn’t publically available. Patent Owner does not dispute the
`
`evidence about the number of sales of the WINS product. Pursuant to the Board’s
`
`suggestion in the scheduling conference, Petitioner has served on Patent Owner
`
`numerous articles and declarations proving the public availability of WINS.
`
`Patent Owner has chosen to submit as exhibits with its response only selected ones
`
`of those dealing with number of sales of the product, and has not submitted the
`
`provided articles and declarations showing the manual was publically available.
`
`In other words, Patent Owner has not disclosed evidence in its possession that is
`
`inconsistent with Patent Owner’s position that WINS was not public.
`
`As Exhibits to this Reply, Petitioner includes such documents and
`
`declarations, served on Patent Owner. Patent Owner did supply the Declaration of
`
`Yuri Kolesnikov (Exhibit 203 7), but not the print out of the CD contents referred
`
`to in Mr. Kolesnikov’s declaration (Exhibit l0l9), which is the same Exhibit 1004
`
`WINS manual. What the Patent Owner characterizes as an “installation guide”
`
`13
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`Case No. IPR2013—00246
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`U.S. Patent 6,108,704
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`(“These contents of the Server product, as shown by Petitioner’s declarant, do not
`
`include Exhibit 1004 or any printed manual other than the ‘Installation Guide”) is
`
`in fact identical to Exhibit 1004 except for formatting for a CD vs. a printed
`
`manual (Microsoft distributed in multiple mediums). Patent Owner ignores the
`
`provided declaration of Leslie Ehrlich (attached Exhibit 1018), where the CD
`
`provided by Mr. Kolesnikov was electronically compared to Exhibit 1004, and
`
`found to be identical in all material respects, except for formatting differences
`
`between the printed copy of Exhibit 1004 and the CD version.
`
`Patent Owner also fails to disclose or acknowledge the following evidence
`
`of public availability of WINS that was provided to it, and thus in Patent Owner’s
`
`possession, which contradicts Patent Owner’s position of no public availability.
`
`The following articles refer to documentation accompanying the product, which
`
`includes the user guide. Exhibit 1020 at p.15 states, referring to Windows NT
`
`3.5, “Documentation (50) Good 31.25 A complete set of documentation comes on
`
`the installation CD
`
`Documentation is generally comprehensive, with most
`
`information easy to locate.” As shown in the declarations referenced above, that
`
`CD documentation is WINS Exhibit 1004. Exhibit 1021, at p.2, states “The
`
`Solution Server package includes a free Pentium or RISC (reduced instruction-set
`
`14
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`Case No. IPR20l3—0O246
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`computing)-based server computer running Microsoft Windows NT Server 3 .5,
`
`Microsoft server applications, and technical developer information, including a
`
`comprehensive tutorial, evaluation guide, Microsoft Tech-Net CD, Microsoft
`
`Developer Network Level 1 CD, and data sheets.”
`
`These exhibits provide the showing that “the document’s public availability
`
`must be established independently of the product’s release.” From ResQNet.com,
`
`Inc. , quoted by Patent Owner.
`
`We note that the separate, later filed IPR2014—00230 by Sony on this same
`
`patent includes a declaration of Robert Cobart, Exhibit 1046 therein, similarly
`
`attesting to the public availability of WINS.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully submits that Claims 1-7
`
`and 32-42 should be ruled unpatentable.
`
`Respectfillly submitted,
`
`Date: April 29, 2014
`
`By:
`Paul C. Haughey
`Registration No. 31,836
`Lead Counsel for Petitioner
`
`
`
`15
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of this PETITIONER’S
`
`RESPONSE TO PATENT OWNER’S RESPONSE PURSUANT TO
`
`37 C.F.R. § 42.120, together with Exhibits l0l7 - 1023 has been served, by
`
`agreement of the parties, by electronic mail on counsel for Patent Owner on
`
`April 29 , 2014 as follows:
`
`Patrick J. Lee
`
`Fisch Hoffman Sigler LLP
`Patrick.lee@f1schllp.com,
`
`
`
`Paul C. Haughey
`Registration No. 31,836
`Kilpatrick Townsend & Stoc
`Two Embarcadero Center, Eighth Floor
`San Francisco, CA 941 ll
`
`
`
`Telephone: 4l5—576-0200
`Fax: 415-576-0300
`
`Email: phaughey @killpatricktownsend.com
`Counsel for Petitioner
`
`Dated: April 29, 2014
`
`66247491V.l
`
`
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