RECORD OF ORAL HEARING
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`
`SIPNET EU S.R.O.
`Petitioner
`
`vs.
`
`STRAIGHT PATH IP GROUP, INC.
` Patent Owner
`- - - - - -
`Case IPR 2013-00246
`Patent 6,108,704
` - - - - - -
`
` Oral Hearing Held: July 11, 2014
`
`
`
`
`
` Before: KALYAN K. DESHPANDE, THOMAS L. GIANNETTI,
` and TRENTON A. WARD, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on
` Friday, July 11, 2014 at the U.S. Patent and Trademark
` Office, 600 Dulany Street, Alexandria, Virginia at 1:00 p.m.,
` in Hearing Room B.
`
` 1
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`
`SIPNET EU S.R.O.
`Petitioner
`
`vs.
`
`STRAIGHT PATH IP GROUP, INC.
` Patent Owner
`- - - - - -
`Case IPR 2013-00246
`Patent 6,108,704
` - - - - - -
`
` Oral Hearing Held: July 11, 2014
`
`
`
`
`
` Before: KALYAN K. DESHPANDE, THOMAS L. GIANNETTI,
` and TRENTON A. WARD, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on
` Friday, July 11, 2014 at the U.S. Patent and Trademark
` Office, 600 Dulany Street, Alexandria, Virginia at 1:00 p.m.,
` in Hearing Room B.
`
` 1
`
`
`
`
`
`
`
`
`
` 1 APPEARANCES:
` 2 ON BEHALF OF THE PETITIONERS:
` 3 SANJAY PRASAD, ESQ.
` 4 Prasad IP
` 5 1768 Miramonte Avenue, #4845
` 6 Mountain View, CA 94040
` 7
` 8
` 10 PAVEL POGODIN, ESQ.
` 11 TransPacific Law Group
` 12 7140 Crest Hill Drive
` 13 Reno, Nevada 78506
` 14
` 15 ON BEHALF OF THE PATENT OWNER:
` 16 ALAN M. FISCH, ESQ.
` 17 ALICIA MEROS CARNEY, ESQ.
` 18 Fisch Sigler LLP
` 19 5335 Wisconsin Avenue, N.W., Eighth Floor
` 20 Washington, D.C. 20015
` 21
` 22
` 23
` 24
` 25
` 2
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 P R O C E E D I N G S
` 2 (1:00 p.m.)
` 3 JUDGE GIANNETTI: You may be seated, please.
` 4 Good afternoon. We are here for the final hearing
` 5 in Sipnet EU versus Straight Path IP Group, which is case
` 6 IPR2013-00246 involving patent 6,108,704.
` 7 Counsel for the Petitioner, may I have your
` 8 appearances, please.
` 9 MR. POGODIN: Good afternoon, Your Honor. This is
` 10 Pavel Pogodin on behalf of the Petitioner from TransPacific
` 11 Law Group.
` 12 MR. PRASAD: Sanjay Prasad on behalf of Petitioner
` 13 Sipnet also.
` 14 JUDGE GIANNETTI: Okay, welcome. And who is
` 15 appearing on behalf of Patent Owner?
` 16 MR. FISCH: Good afternoon, Your Honor. Alan
` 17 Fisch and my colleague, Alicia Meros Carney.
` 18 JUDGE GIANNETTI: Okay. Thank you very much.
` 19 MR. FISCH: Thank you, sir.
` 20 JUDGE GIANNETTI: And welcome.
` 21 Okay. So each side will have an hour to present
` 22 their argument. Petitioner will start. And we have --
` 23 Petitioner may -- we don't have a motion to amend, so
` 24 Petitioner may reserve time for rebuttal. You can do that
` 25 either now or at the end of your presentation. But there
` 3
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 will be no rebuttal from the Patent Owner.
` 2 All right. Who is presenting the argument for the
` 3 Petitioner?
` 4 MR. PRASAD: That will be me, Your Honor.
` 5 JUDGE GIANNETTI: Okay. I will use the timer
` 6 here, so the red light should go on when your time is up. I
` 7 will try to give you a warning about five minutes before the
` 8 end of your time.
` 9 MR. PRASAD: Okay. I would like to reserve 15
` 10 minutes for rebuttal.
` 11 JUDGE GIANNETTI: All right. So, Mr. Prasad, you
` 12 may proceed when you are ready.
` 13 MR. POGODIN: Excuse me, Your Honor. We have a
` 14 printed copy of the presentation. May I approach to provide
` 15 it?
` 16 JUDGE GIANNETTI: That's fine. You can hand those
` 17 up.
` 18 MR. POGODIN: Thank you.
` 19 JUDGE GIANNETTI: Thank you very much.
` 20 All right, Mr. Prasad, you may proceed.
` 21 MR. PRASAD: Thank you, Your Honor.
` 22 May it please the Board, my name is Sanjay Prasad,
` 23 and I represent the Petitioner, Sipnet.
` 24 The Board instituted this proceeding on the basis
` 25 of Petitioner's arguments and evidence showing anticipation
` 4
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 of claims 1 to 7 and 32 to 42 in view of WINS and NetBIOS and
` 2 obviousness of claims 33 to 37 in view of WINS and NetBIOS.
` 3 Patent Owner filed a motion for rehearing, which
` 4 was denied. And Patent Owner did not seek to amend the
` 5 claims or establish an earlier invention date. Consequently,
` 6 this trial is proceeding on the Board's
` 7 original grounds for institution.
` 8 I would like to spend my time allocated on the
` 9 arguments that have been raised by Patent Owner, and
` 10 specifically in the context of the evidence that has been
` 11 adduced during this proceeding.
` 12 The issues in this trial will be reduced down to
` 13 the following four points raised by the Patent Owner. The
` 14 first is a query or determination as to the on-line status of
` 15 a process as required by the challenged claims. Second is
` 16 dynamic address allocation. And then the third and fourth
` 17 points, third is the status of WINS as prior art, and number
` 18 4 is the status of a third-party Stalker Software as a real
` 19 party in interest.
` 20 Before turning to details of WINS and NetBIOS, let
` 21 me briefly review the disclosure of the '704 patent. I have
` 22 it on the screen, slide 2. And the thing to note about the
` 23 '704 patent is that it is not particularly detailed. The
` 24 entirety of the disclosure relevant to this proceeding is
` 25 shown in figures 1, 7, and 8 and in the accompanying
` 5
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 description.
` 2 Those figures in description, they show a first
` 3 processing unit that is able to discover the on-line status
` 4 of a second processing unit by way of connection server. The
` 5 connection server stores e-mail addresses and IP addresses
` 6 for the processing units.
` 7 Turning to slide 3, figure 7 and 8 show the steps
` 8 that are employed to, to execute those processes that I just
` 9 explained.
` 10 Now, Petitioner showed in their request that the
` 11 prior art shows exactly the same structures and methods
` 12 disclosed by the '704 patent. And particularly both WINS and
` 13 NetBIOS show a registration database that stores information
` 14 about the on-line status of processing units or processes.
` 15 They also both disclose processing units in which
` 16 processes execute to register their status with a
` 17 registration database. And they also disclose adjustable
` 18 timer mechanisms that permit setting of an expiration for a
` 19 timeout of a registration.
` 20 And, finally, they both disclose explicit
` 21 invalidation of the information in the registration database.
` 22 So as such, both, both the WINS and NetBIOS references
` 23 disclose exactly the same mechanisms disclosed in the '704
` 24 patent that permits one process to find the on-line
` 25 availability of another process in order to establish
` 6
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 point-to-point communications.
` 2 Now, turning to the first issue raised by the
` 3 Patent Owners, which is the issue of a query or a
` 4 determination as to the on-line status of a process. This is
` 5 effectively in argument that the, that the phrase "on-line
` 6 status" or "connection to the network" means something more
` 7 than what the claim calls for.
` 8 In the '704 patent, as I mentioned, the
` 9 specification discloses registration where the connection
` 10 server stores the e-mail address and the IP address. The
` 11 timeout, as you see in more detail here on slide 5, it shows
` 12 at column 5, lines 34, 39 to 44, the timeout mechanism, and
` 13 also the explicit release is described in column 6, so the
` 14 patent at line 6 through 16.
` 15 Claims 2 and 3 of the '704 patent claim
` 16 determining on-line status. Claims 1, 32, 33, and 38 claim
` 17 connection to the network.
` 18 Now, as was alleged by Petitioners in the opening
` 19 presentation and as shown, been shown in the discovery in
` 20 this proceeding, the only mechanism for performing those
` 21 functions is the same as disclosed in WINS and NetBIOS. Let
` 22 me jump here to slide 42.
` 23 Petitioner's expert Mr. Vadim Antonov stated very
` 24 clearly, "in my opinion the '704 patent does not disclose or
` 25 teach any mechanism to track the online status of registered
` 7
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 processes, other than mechanisms disclosed in the NetBIOS
` 2 reference."
` 3 JUDGE WARD: Mr. Prasad, do these references, the
` 4 NetBIOS or the WINS reference, disclose a polling mechanism?
` 5 MR. PRASAD: They do. The polling mechanism,
` 6 though is the separate embodiment as shown in the '704
` 7 patent. And that was -- there is no disagreement on that,
` 8 Your Honor.
` 9 So the, the mechanisms that would be -- that would
` 10 be relevant to the "determining the on-line status" would be
` 11 either the registration -- the, the explicit -- the timer
` 12 mechanism or the explicit deregistration mechanism.
` 13 JUDGE WARD: So you would not agree that the
` 14 polling mechanism is a way to determine the status of a
` 15 process?
` 16 MR. PRASAD: No, because that's actually an
` 17 alternate embodiment. So when the connection server that --
` 18 the specification very clearly states that when the
` 19 connection server is not to be used or for some reason is
` 20 unavailable, the polling mechanism could be used.
` 21 JUDGE WARD: Where is that provided in the '704
` 22 patent?
` 23 MR. PRASAD: That's in the -- it is slide 6.
` 24 Right here, column 6, lines 17 through 25. "As is shown in
` 25 figures 2 to 4, the disclosed secondary point-to-point
` 8
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 Internet protocol may be used as an alternative to the
` 2 primary point-to-point Internet protocol described above, for
` 3 example, if the connection server is non-responsive,
` 4 inoperative, and/or unable to perform the primary
` 5 point-to-point Internet protocol, as a non-responsive
` 6 condition. Alternatively, the disclosed secondary
` 7 point-to-point Internet protocol may be used independent of
` 8 the primary Internet protocol."
` 9 JUDGE WARD: So that what's described in the
` 10 patent in reference to figure 2 --
` 11 MR. PRASAD: Yes.
` 12 JUDGE WARD: -- is server 24, polling every three
` 13 to five seconds. Is that the alternative embodiment that you
` 14 identify?
` 15 MR. PRASAD: That is, Your Honor, yes.
` 16 JUDGE WARD: So you do agree that this is a method
` 17 disclosed in the '704 patent to determine the
` 18 registration status, the on-line status of a particular
` 19 processor?
` 20 MR. PRASAD: That's actually with respect to
` 21 e-mail, Your Honor. That came out in the testimony. Let me
` 22 find that for a moment.
` 23 Mr. Antonov, yes, so at slide 43, the Antonov
` 24 declaration, page 17, paragraph 33, Mr. Antonov describes in
` 25 detail the mail server.
` 9
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 So the mail server 28 then polls a second
` 2 processing unit 22, for example, every three to five seconds
` 3 to deliver the e-mail. Generally the second processing unit
` 4 checks the incoming lines, for example, at regular intervals.
` 5 He goes on to say, "this text clearly says that
` 6 polling occurs to deliver a communication request sent via
` 7 e-mail, not to check the on-line status of the processing
` 8 unit 22, (in the absence of a communication request, there is
` 9 no polling.)
` 10 Secondly, he explains that POP3 mail servers do
` 11 not poll when they need to deliver mail. And instead they
` 12 poll, they poll the POP3 mail servers to check if there is
` 13 any incoming mail for them.
` 14 Finally, he concludes, the whole paragraph is
` 15 talking about the mail server 28, not the connection server
` 16 26.
` 17 JUDGE WARD: So your contention then is that the
` 18 information retained by the mail server as to the status of
` 19 the second processing unit could not be used by the
` 20 connection server 26?
` 21 MR. PRASAD: That's correct. It is not described
` 22 in the patent.
` 23 Shall I proceed?
` 24 JUDGE WARD: Sure.
` 25 MR. PRASAD: So the Patent Owner's expert, Mr.
` 10
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 Ketan Mayer-Patel, couldn't identify any other mechanisms in
` 2 the '704 patent. In his deposition at page 28 of the
` 3 transcript, there is extensive questioning regarding his
` 4 opinion of the disclosure of the '704 patent. And he could
` 5 not identify any other mechanisms.
` 6 Indeed Mr. Mayer-Patel confirmed that what is
` 7 shown on slide 5 of the presentation, of the demonstrative at
` 8 column 5, line 34, specifically line 32, he confirmed that
` 9 the disclosure only specifies that the information in the
` 10 database can be kept relatively current.
` 11 In other words, it is not absolutely current and
` 12 it is not absolute information as to what is stored or
` 13 understood, the status of something online. So what all this
` 14 means is that there is no subtle meaning or distinction in
` 15 the '704 patent that was not understood or unappreciated at
` 16 the institution of these proceedings.
` 17 There is simply nothing new that's come to light.
` 18 The '704 patent discloses the exact same registration
` 19 mechanisms that are disclosed in NetBIOS and WINS. It
` 20 discloses the same timer mechanism. It discloses the exact
` 21 same deregistration mechanism.
` 22 So to the extent the '704 patent covers the
` 23 disclosed embodiments, it is clearly invalid in view of both
` 24 NetBIOS and WINS.
` 25 Let me turn now to the dynamic address allocation
` 11
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 issue. And in this argument, the Patent Owner argues that
` 2 the challenged independent claims each require dynamic
` 3 address allocation due to the language "following connection
` 4 to the computer network."
` 5 Now, there was a prior ex parte reexam. And in
` 6 that, the Patent Owner asserts that the Examiner in that case
` 7 found that the language corresponded to a dynamic element in
` 8 the claims, but the term "dynamic" is actually not used
` 9 anywhere in this notice to intend to issue the ex parte
` 10 certificate.
` 11 Boiled down to its essentials, Your Honors, this
` 12 amounts to an attempt to read a limitation into the claim.
` 13 The Patent Owners had the ability to amend the claims. They
` 14 have chosen not to.
` 15 The claim does not mention the word "dynamic." It
` 16 does not include the word "dynamic." In the absence of a
` 17 claim amendment, it cannot be read to include the word
` 18 "dynamic." That's, that's counter to the interpretation that
` 19 this Board took in the institution of these proceedings. And
` 20 it attempts to read a limitation into the claim.
` 21 Let me turn to slide 42.
` 22 So as Mr. Antonov declared, stated in his
` 23 declaration, and he states at paragraph 52 of his declaration
` 24 that the Patent Owner's expert also confirmed that there is
` 25 no way for a process to receive a network protocol address
` 12
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 other than upon/following connection to the computer network.
` 2 He further states, "all process network protocol addresses
` 3 are assigned dynamically, after the process (a running
` 4 instance of an application) has started and when it uses the
` 5 operating system to 'connect to the network.' This is true
` 6 for any process, whatever communication system or interface
` 7 (NetBIOS, sockets, or any other) that process is using."
` 8 And what he explained fairly clearly is that, is
` 9 that the patent originally called for processing units in the
` 10 claims and it discussed -- it discusses processing units in
` 11 the claims.
` 12 Mr. Antonov explained fairly clearly in his
` 13 declaration how the technology works, specifically that
` 14 network addresses are assigned to what is the equivalent of a
` 15 processing unit in the patent and not to a process. A
` 16 process will get the identity, the network address, when it
` 17 wishes to make a connection, and it will then have some other
` 18 identifier along with it, be it a socket or a port.
` 19 And so as a result that led to his testimony in
` 20 slide 42 which I just read. Now, he further explained as
` 21 shown in slide 44 that when you look at the '704 patent, it
` 22 actually doesn't contain any mechanisms specifically designed
` 23 to support dynamic addressing. And it doesn't disclose any
` 24 mechanism for dynamic allocation of IP addresses.
` 25 The '704 -- the processes in the '704 patent, they
` 13
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 connect to the network, register their current network
` 2 address with a server, and later disconnect. When they
` 3 connect again, they may be using the same network address or
` 4 a different network address.
` 5 The connection server of the '704 patent simply
` 6 registers the network address supplied. And, similarly, a
` 7 NetBIOS name server works equally well if a name is
` 8 registered being mapped to one IP address and later
` 9 reregistered.
` 10 So the dynamic process allocation argument, Your
` 11 Honors, attempts to find a distinction where there is none.
` 12 It is an impermissible attempt to narrow the claim away from
` 13 the broadest reasonable interpretation adopted by the Board.
` 14 And it simply identifies the capability also that existed in
` 15 every computer.
` 16 And let me next turn to the issue of obviousness
` 17 of claims 33 to 37 in view of NetBIOS and WINS. Independent
` 18 claim 33 recites dynamically assigned network protocol
` 19 addresses.
` 20 And let me take a minute to point out something
` 21 about the NetBIOS reference. It is a specification, which
` 22 means that its intended audience is programmers. Programmers
` 23 would use NetBIOS to develop software from it that will
` 24 comply with the NetBIOS spec.
` 25 And it is big. It is 516 pages. So it is not
` 14
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 easy to understand. And it took a computer program, such as
` 2 Petitioner's expert, Mr. -- computer programmer, such as
` 3 Petitioner's expert, Mr. Antonov, to clearly explain its
` 4 teachings.
` 5 And let me turn to slide 46.
` 6 Mr. Antonov testified that NetBIOS actually does
` 7 support dynamic addressing. You see here he states, the
` 8 RFC1001 document reads, "This RFC however, the NBNS" --
` 9 that's NetBIOS name server -- "to provide services provided
` 10 by the current domain name system. An attempt has been made
` 11 to coalesce all the additional systems which are required
` 12 into a set of transactions, which follow domain name system
` 13 styles of interaction and packet formats. Among the areas in
` 14 which the domain name service may be used as an NBNS are, for
` 15 example, dynamic addition of entries, dynamic update of entry
` 16 data."
` 17 And he further goes on to explain that the NetBIOS
` 18 name server database contains a process name and its
` 19 processing unit IP address, a requirement to support dynamic
` 20 update of entry data.
` 21 So the NetBIOS name server taught to one of
` 22 ordinary skill in the art, that it did support, it would
` 23 support dynamic addressing.
` 24 JUDGE DESHPANDE: Is this information presented in
` 25 the petition?
` 15
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 MR. PRASAD: I'm sorry, Your Honor?
` 2 JUDGE DESHPANDE: Was this information presented
` 3 in the petition?
` 4 MR. PRASAD: This specific information -- let me
` 5 see here. There was a reference to page 368 of the NetBIOS.
` 6 Down at the bottom on slide 51, this was -- I have
` 7 included the references to NetBIOS here, which were in the
` 8 claim charts. And so the excerpt at the bottom, there is two
` 9 excerpts in slide 51, the one at the bottom which shows at
` 10 page 368. I included the references to the actual document,
` 11 so when it says page 368, that's the document. In the
` 12 parenthesis is the exhibit, the reference to the exhibit
` 13 number.
` 14 And there is actually an error on that. So it
` 15 says 365. It is actually 386 of the exhibit. So I believe
` 16 that would have been in the claim chart.
` 17 Mr. Antonov also described in paragraph 56 on page
` 18 33 of his declaration, that's Exhibit 1023, how NetBIOS did
` 19 not use the term "dynamically assigned" because that term was
` 20 not in use in the '80s when the NetBIOS system was designed.
` 21 NetBIOS used something called Boot P, B-o-o-t P, which
` 22 implemented what later came to be called "dynamically
` 23 assigned IP addresses."
` 24 So his claims would be anticipated, but given that
` 25 the Board instituted this proceeding with respect to
` 16
`
`
`
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`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 obviousness, let me, let me address that because I think
` 2 that's -- that's an easy one.
` 3 There is no technological impediment here to one
` 4 of skill in the art to combine the -- modify the teachings of
` 5 NetBIOS in view of WINS. WINS is simply an implementation of
` 6 the NetBIOS specification.
` 7 So at the time of the invention, one skilled in
` 8 the art clearly would have been aware of the two. And they
` 9 clearly would have been aware of the teachings and of WINS
` 10 that would allow them to modify the teachings of NetBIOS to,
` 11 to meet the claim -- the terms of the specification. And
` 12 there would clearly be a motivation to do so. I think there
` 13 is no question about that.
` 14 So let me turn now to the issue of -- that Patent
` 15 Owners have raised of WINS as prior art. And specifically
` 16 this is an argument that the WINS document, Exhibit 1004, was
` 17 not publicly available.
` 18 Slide 15 shows on the left page 1 of the WINS
` 19 document, Exhibit 1004. And it shows up in the top, it shows
` 20 "for distribution only with a new PC." And what that
` 21 indicates is that it was Microsoft's business practice to
` 22 distribute this document with new PCs.
` 23 To the right, on the right side of the page on
` 24 page 3 of the WINS exhibit, it shows the copyright date, 1985
` 25 through 1994. So the WINS on its face would appear to be
` 17
`
`
`
`
`
` IPR2013-00246
` Patent 6,108,704
`
`
` 1 prior art simply because the business practice shown of
` 2 distribution with new PCs. But in response to Patent Owner's
` 3 concerns raised about the status of WINS as prior art, Patent
` 4 Owner -- Petitioners provided a bunch of other pieces of
` 5 evidence. And let me go through those in a fair amount of
` 6 detail.
` 7 So slide 16 shows the declaration, paragraph 6 and
` 8 7 of the declaration of Mr. Yuri Kolesnikov. And Mr.
` 9 Kolesnikov in the fall of 1994 was employed as a computer
` 10 systems consultant installing software along with database --
` 11 Windows software along with database software on machines.
` 12 He testified, "in the fall of 1994 I installed
` 13 multiple computer systems bundled with Windows NT 3.5 Server
` 14 for Decision Systems Plus clients." Decision Systems Plus
` 15 was his employer.
` 16 In paragraph 7 he testified, "some of the bundled
` 17 Windows NT 3.5 Server packages I saw in the fall of 1994
` 18 included a printed copy of Windows NT TCP/IP Guide." Which
` 19 is WINS.
` 20 So Mr. Kolesnikov's declaration alone in those two
` 21 paragraphs establishes WINS as prior art and publicly
` 22 available. Mr. Kolesnikov was not a Micro
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