Paper 62
`Entered: October 9, 2014
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`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
`Patent 6,108,704
`_______________
`
`
`
`Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`37 U.S.C. § 318(a); 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
`A. Background
`Sipnet EU S.R.O. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1-7 and 32-42 of U.S. Patent No. 6,108,704 (the “ ’704 patent”).
`Paper 1 (“Pet.”). Straight Path IP Group (“Patent Owner”) (formerly known as
`Innovative Communications Technologies, Inc.) filed a preliminary response.
`Paper 8 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted inter partes
`review on October 11, 2013, as to claims 1-7 and 32-42 of the ʼ704 patent on the
`following grounds of unpatentability: claims 1–7, 32, and 38–42 under 35 U.S.C.
`§ 102 as anticipated by NetBIOS;1 claims 1–7 and 32–42 under 35 U.S.C. § 102 as
`anticipated by WINS;2 and claims 33–37 under 35 U.S.C. § 103 as obvious over
`NetBIOS and WINS. Paper 11 (“Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 30, “PO
`Resp.”) and Petitioner filed a Reply (Paper 33, “Pet. Reply”). Oral hearing was
`held on July 11, 2014, and the hearing transcript has been entered in the record as
`Paper 61 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1-7 and 32-42 of the ʼ704 patent are
`unpatentable.
`
`
`1 THE OPEN GROUP, TECHNICAL STANDARD – PROTOCOLS FOR X/OPEN PC
`INTERWORKING/SMB, VERSION 2 (1992) (Ex. 1003) (“NetBIOS”).
`2 WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1004) (“WINS”).
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`B. Related Proceedings
`Petitioner identifies the following related district court proceedings
`involving the ’704 patent: Net2Phone, Inc. v. eBay Inc., Skype Inc., Civil Action
`No. 06-2469 (D.N.J.), filed June 1, 2006 (“the Skype Litigation”), and Innovative
`Communications Technologies, Inc. v. Stalker Software, Inc., Civil Action No.
`2:12-cv-00009-RGD-TEM (E.D. Va.), filed Jan. 4, 2012 (“the Stalker litigation”).
`Pet. 3.
`Petitioner also identifies the ’704 patent as the subject of Ex Parte
`Reexamination proceeding No. 90/010,416. Pet. 3.
`C. The ʼ704 Patent
`The ’704 patent (Ex. 1001) is titled “Point-to-Point Internet Protocol” and
`generally relates to establishing a point-to-point communication link. Ex. 1001,
`col. 2, ll. 53–57. The patent explains that a first processing unit automatically
`transmits its associated e-mail address, and its IP address, to a connection server.
`Id. at col. 5, ll. 25–38. The connection server stores the addresses in a database
`and, thus, the first processing unit is established as an active on-line party available
`for communication. Id. The first processing unit sends a query to the connection
`server, which searches the database to determine whether a second processing unit
`is active and on-line. Id. at col. 5, ll. 55–60. If the callee is active and on-line, the
`connection server sends the IP address of the callee from the database to the first
`processing unit, i.e., performs a point-to-point Internet protocol communication.
`Id. at col. 5, ll. 60–64. The first processing unit then directly establishes the point-
`to-point Internet communications with the callee using the retrieved IP address. Id.
`at col. 5, ll. 64–67.
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`Figure 1 of the ’704 patent is reproduced below:
`
`
`
`Figure 1 illustrates the architecture between first processing unit 12, second
`processing unit 22, and connection server 26. Id. at col. 5, ll. 15–29.
`Claim 1 illustrates the claimed subject matter and is reproduced below:
`1. A computer program product for use with a computer system, the
`computer system executing a first process and operatively connectable
`to a second process and a server over a computer network, the
`computer program product comprising:
`a computer usable medium having program code embodied in
`the medium, the program code comprising:
`program code for transmitting to the server a network protocol
`address received by the first process following connection to the
`computer network;
`program code for transmitting, to the server, a query as to
`whether the second process is connected to the computer network;
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`program code for receiving a network protocol address of the
`second process from the server, when the second process is connected
`to the computer network; and
`program code, responsive to the network protocol address of
`the second process, for establishing a point-to-point communication
`link between the first process and the second process over the
`computer network.
`
`D. Claim Construction
`The Board will interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which they
`appear. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the context
`of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`
`1. “connected to the computer network”
`Petitioner, under the broadest reasonable construction, contends that
`“connected to the computer network” encompasses merely “being on-line.” Pet.
`5–6. Petitioner further contends that “connected to the computer network” simply
`requires being registered with the server, based on the usage of this phrase in the
`’704 patent specification. Id. at 13; see Ex. 1001 col. 5, ll. 31–38.
`Patent Owner agrees that “connected to the computer network” encompasses
`“being on-line,” but argues that registering an address does not satisfy the
`requirement of “being on-line.” PO Resp. 26. Patent Owner specifically argues
`that, although “a process may be on-line at the time of registration, it may
`subsequently go off-line.” Id. Patent Owner’s expert, Dr. Ketan Mayer-Patel,
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`testifies that, although “a processing unit is active and on-line at registration, it
`may subsequently go off-line and become inactive, but the process may maintain
`its registered status.” Ex. 2018 ¶ 22.
`We agree with Petitioner that “connected to the computer network”
`encompasses being “on-line,” which can be done by registering an address with the
`server. The ’704 patent specification and claims do not limit the scope of
`“connected to the computer network.” Furthermore, the ’704 patent specification
`discloses “the second processing unit 22, upon connection to the Internet 24
`through a connection service provider, is processed by the connection server 26 to
`be established in the database 34 as an active on-line party.” Ex. 1001, col. 5,
`ll. 35–38. Thus, the context of “connected to the computer network,” as disclosed
`in the specification, includes storing the processing unit address by the connection
`server database, and storing the address establishes the processing unit as active
`and on-line.
`This is consistent with the determination in our Initial Decision. Dec. 5–6.
`Patent Owner has not provided any evidence or rationale sufficient for us to disturb
`that claim construction. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel
`agree that a second processing unit is “active and on-line at registration.” PO
`Resp. 26; Ex. 2018 ¶ 22. Although Patent Owner argues that a process “being on-
`line” does not encompass registering an address because the process “may
`subsequently go off-line” (PO Resp. 26), Patent Owner has not provided any
`persuasive rationale or evidence to demonstrate that the limitation “connected to
`the computer network,” or any other claim limitation, requires a specified duration
`of time that a processing unit is “active and on-line.” Accordingly, we are not
`persuaded that the proper scope of the limitation “connected to the computer
`network” precludes a processing unit that is “active and on-line” but “may
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`subsequently go off-line.” Therefore, under the broadest reasonable construction,
`“connected to the computer network” encompasses a processing unit that is “active
`and on-line at registration.”
`2. “following connection to the network”
`Claim 1 recites, inter alia, program code for transmitting an address
`“following connection to the computer network.” Claims 2, 4, 32, and 38 recite
`similar limitations. Patent Owner argues that “[i]f a computer system is configured
`to utilize dynamic address allocation, the system is assigned a unique IP address
`from the server during network initialization” and “IP addresses received
`‘following connection to the computer network’ are inherently dynamically
`assigned protocol addresses.” PO Resp. 50. Patent Owner argues that the claims
`require that an address be assigned “following connection to the computer
`network,” and that by definition this is dynamic address allocation. PO Resp. 52
`(citing Ex. 2018 ¶¶ 24, 26). Patent Owner’s expert, Dr. Ketan Mayer-Patel, states
`that “[t]o one of ordinary skill in computer networking at the time of the ʼ704
`Patent invention, ‘a network protocol address received by a process following
`connection to the computer network’ unambiguously defines a dynamically
`allocated address.” Ex. 2018 ¶ 24. Petitioner counters that reading the term
`“dynamic” into the claims “amounts to an attempt to read a limitation into the
`claim,” because the claims do not include the word “dynamic.” Tr. 12:11–20.
`We agree with Petitioner that the address received “following connection to
`the network” encompasses any type of assignment of address. Consistent with our
`Institution Decision, initially we determined that claims 1–7, 32, and 38–42 do not
`require the “dynamic” assignment of addresses, whereas claims 33–37 positively
`recite a method “for locating processes having dynamically assigned network
`protocol addresses.” Dec. 10–11, 15 (quoting claim 33 (emphasis added)). Also,
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`we initially determined that independent claims 1, 2, 4, 32, and 38 do not limit how
`network addresses are received, stored, or assigned. Independent claim 33, on the
`other hand, limits how network addresses are received, stored, or assigned because
`independent claim 33 positively recites that addresses are “dynamically assigned.”
`Id. Patent Owner has not provided any argument or evidence in response to our
`claim construction in our Institution Decision. Patent Owner has not addressed the
`distinction we identified between independent claim 33 and independent claims 1,
`2, 4, 32, and 38.
`Our construction of the limitation “following connection to the computer
`network” is also consistent with the ʼ704 patent. The ʼ704 patent explains that the
`primary point-to-point protocol operates when a “callee processing unit does not
`have a fixed or predetermined IP address.” Ex. 1001, col. 5, ll. 15–17. The ʼ704
`patent further explains an alternative, secondary point-to-point protocol that
`utilizes an E-mail that includes the current IP address, where the current IP address
`can be either a temporary or permanent IP address. Id. at col. 6, ll. 17-36. The
`ʼ704 patent explains that:
`Realtime point-to-point communication of audio signals over the
`Internet 24, as well as video and voicemail, may thus be established
`and supported without requiring permanent IP addresses to be
`assigned to either of the users or processing units 12, 22. For the
`duration of the realtime point-to-point link, the relative permanence of
`the current IP addresses of the processing units 12,22 is sufficient,
`whether the current IP addresses were permanent (i.e. predetermined
`or preassigned) or temporary (i.e. assigned upon initiation of the
`point-to-point communication).
`Id. at col. 7, ll. 32–41 (emphasis added). Accordingly, the ʼ704 patent
`contemplates addresses that are predetermined, pre-assigned, fixed, or static, and
`contrasts these static addresses with temporary or dynamic addresses. Based on
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`these descriptions of both static and dynamic addressing in the ʼ704 patent, Patent
`Owner has not persuaded us to limit the scope of “following connection to the
`computer network” to only “dynamic address allocation.”
`3. “point-to-point communication link”
`Petitioner contends that “point-to-point communication link,” under the
`broadest reasonable interpretation, encompasses “communications between two
`processes over a computer network that are not intermediated by a connection
`server.” Pet. 7. Although Patent Owner argues that Petitioner has not set forth
`proper claim constructions to be applied, Patent Owner has not provided any
`persuasive evidence or rationale to dispute Petitioner’s construction of “point-to-
`point communication link.” See Prelim. Resp. 5–6, 9.
`We agree with Petitioner’s construction of “point-to-point communication
`link.” The ’704 patent specification and claims do not provide for a specific
`definition of “point-to-point communication link.” The plain and ordinary
`meaning of “point-to-point” means a first point directly linked to a second point.3
`The plain and ordinary meaning of “communication link” includes any software or
`hardware that allows for communication.4 Accordingly, we construe “point-to-
`point communication link” to include direct communications between two
`processes over a computer network that are not intermediated by a server.
`
`
`3 See point-to-point, DICTIONARY OF COMPUTING (2008)(available at
`http://search.credoreference.com/content/entry/acbcomp/point_to_point/0)(“A
`direct link between two devices.”).
`4 See communication link, WILEY DICTIONARY OF COMMUNICATIONS TECHNOLOGY
`(1998)(available at
`http://search.credoreference.com/content/entry/wileycommtech/communication_lin
`k/0)(“The software and hardware, to include cables, connectors, converters, etc.,
`required for two devices such as a computer and terminal to communication.”).
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`II. ANALYSIS
`A. Real Party-in-Interest
`Patent Owner argues that Petitioner is estopped from initiating this
`proceeding because Petitioner failed to identify Stalker Software, Inc. (“Stalker
`Software”) as a real party-in-interest. PO Resp. 8–16. Patent Owner asserts that
`Stalker Software is estopped from initiating an inter partes review under 37 C.F.R.
`§ 42.101. Id. Patent Owner argues that its predecessor in interest, Innovative
`Communication Technologies, Inc., served a complaint on Stalker Software
`charging infringement of the ʼ704 patent on February 21, 2012, and therefore,
`Stalker Software is estopped from seeking inter partes review of the ʼ704 patent as
`of February 21, 2013. Id. at 8–9. The Petition for this proceeding was filed on
`April 11, 2013, over one year after Stalker Software was served with a complaint.
`Id.
`
`Patent Owner argues that Stalker Software is a real party-in-interest because
`Petitioner is a reseller of Stalker Software’s CommuniGate Pro software, and
`because Stalker Software provided Petitioner with WINS relied upon in the
`Petition. PO Resp. 9–11. Patent Owner suggests that In re Guan5 controls and
`establishes that a real party-in-interest “cannot do any of the following and not
`identify the other entity as real party in interest: . . . 3). Allow another entity to
`control or control the content, (e.g. provide prior patents/publications on which the
`reexam is to be based).” PO Resp. 10 (quoting In re Guan at 8); see Office Patent
`Trial Practice Guide, 77 Fed. Reg. at 48,759. Patent Owner further submits the
`following “circumstantial evidence” to demonstrate Stalker Software exercised
`
`
`5 In re Guan, Inter Partes Reexamination Proceeding, Control No. 95/001,045,
`Decision Vacating Filing Date (Aug. 25, 2008).
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`control, or could have exercised control, of this proceeding: (1) Petitioner relies on
`the testimony of two evidentiary witnesses regarding the WINS reference that
`allegedly have connections to Stalker Software that were not disclosed by
`Petitioner, and (2) Petitioner maintains no presence in the United States and has
`refused Patent Owner’s offer of a license of the ʼ704 patent to expand in to the
`U.S. market. PO Resp. 12–14. Patent Owner further requests that sanctions be
`imposed on Petitioner for misrepresenting the real party-in-interest. Id. at 14–16.
`Petitioner argues that In re Guan is not controlling on this issue. Pet. Reply
`1–2. Petitioner argues that it initiated contact with Stalker Software only to obtain
`a copy of the WINS reference, and denies that Stalker Software controls
`Petitioner’s participation in this proceeding. Id; Tr. 27:2-6, 27:17-22. Petitioner
`further argues that the vendor-reseller relationship characterized by Patent Owner
`and the “circumstantial evidence” provided by Patent Owner fail to demonstrate,
`alone or in combination, any control of this proceeding by Stalker Software. Pet.
`Reply 2–4.
`We are not persuaded by Patent Owner that Stalker Software is a real party-
`in-interest. Whether a non-party is a “real party-in-interest” or “privy” for
`purposes of an inter partes review proceeding is a “highly fact-dependent
`question” that takes into account how courts generally have used the terms to
`“describe relationships and considerations sufficient to justify applying
`conventional principles of estoppel and preclusion.” Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,759. Whether parties are real parties-in-interest or in
`privity, for instance, depends on whether the relationship between the party and its
`alleged real party-in-interest or privy is “sufficiently close such that both should be
`bound by the trial outcome and related estoppels.” Id. A number of factors may
`be relevant to the analysis, including whether the non-party “exercised or could
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`have exercised control over a party’s participation in a proceeding,” and whether
`the non-party is responsible for funding and directing the proceeding. Id. “The
`concept of control generally means that ‘it should be enough that the nonparty has
`the actual measure of control or opportunity to control that might reasonably be
`expected between two formal coparties.’” Id. (quoting 18A C. Wright, A. Miller &
`E. Cooper, Federal Practice & Procedure § 4451 (2d ed. 2011)).
`Patent Owner has not demonstrated that Stalker Software exercised or could
`have exercised control over Petitioner’s participation in this proceeding. The
`evidence of record establishes only that Stalker Software provided the WINS
`reference, at the request of Petitioner. Pet. Reply 1; Tr. 28:3-9. This alone is
`insufficient to demonstrate that Stalker Software exercised, or could have
`exercised, control over Petitioner’s participation in this proceeding. Patent
`Owner’s evidence of the existence of a vendor-reseller relationship between
`Stalker Software does not demonstrate Stalker Software exercised, or could have
`exercised, any control. When a patent holder sues a dealer, seller, or distributor of
`an accused product, the mere payment of counsel fees and minor participation by
`the vendor in the trial are insufficient to establish privity between the vendor and
`reseller. Bros, Inc. v. W.E. Grace Mfg. Co., 261 F.2d 428, 430 (5th Cir. 1958); See
`generally Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, Case IPR2013-
`00601, slip op. at 7, 8 (PTAB Jan. 24, 2014) (Paper 23). Patent Owner’s assertions
`regarding witnesses with connections to both Stalker Software and Petitioner, and
`Petitioner’s alleged lack of presence in the U.S. market, are statements of counsel
`unsupported by any record evidence, and, in any event, are not indicative of any
`control of this proceeding by Stalker Software. Considering the lack of probative
`evidence submitted by Patent Owner, we are not persuaded that the record
`establishes that Stalker Software is a real party-in-interest. Accordingly, we are
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`not persuaded that Petitioner is barred from initiating this proceeding, or that
`sanctions should be imposed on Petitioner.
`B. Anticipation of claims 1-7, 32, and 38-42 by NetBIOS
`Petitioner contends that claims 1–7, 32, and 38–42 are anticipated by
`NetBIOS. Pet. 27. Patent Owner argues against Petitioner’s challenge based on
`NetBIOS on multiple grounds. PO Resp. 16–54.
`1. Overview of NetBIOS (Ex. 1003)
`NetBIOS (“Network Basic Input/Output System”) is a software interface
`that allows applications on different computers to communicate within a computer
`network, such as a local area network or the Internet, and was originally designed
`for IBM’s PC-Network. Ex. 1003, 359. 6 NetBIOS applications employ
`mechanisms to locate resources, establish connections, send and receive data with
`an application peer, and terminate connections. Id. at 359. A NetBIOS session is
`the exchange of messages between a pair of NetBIOS applications. Id. at 361.
`The NetBIOS name service is the collection of procedures through which
`nodes of a network acquire, defend, and locate the holders of NetBIOS names. Id.
`at 376. A node registers a name with the NetBIOS Name Server, which stores the
`registered name in a database. Id. at 384–85, 394. A name query transaction can
`be initiated by an end-node in an attempt to obtain the IP address associated with a
`NetBIOS name. Id. at 388–89. If the NetBIOS Name Server has information
`regarding a queried node, the NetBIOS Name Server transmits a positive response.
`Id. at 389–90. If the NetBIOS Name Server does not have information regarding a
`queried node, the NetBIOS Name Server transmits a negative response. Id. Once
`
`6 Ex. 1003 includes page numbers indicated by the publication itself, and different
`page numbers provided by Petitioner. Our references are to the page numbers
`printed on the publication itself.
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`the IP addresses have been found for a target name, a NetBIOS session service
`begins. Id. at 397. The NetBIOS session service involves directed (point-to-point)
`communications. Id.
`2. Analysis
`a. Claims 1-4, 32, and 38-42
`Claim 1 recites, inter alia, “a query as to whether the second process is
`connected to the computer network,” and claim 2 similarly recites, inter alia,
`“responsive to a query from the first process, for determining the on-line status of
`the second process.” Independent claims 4, 32, 33, and 38 recite similar
`limitations. PO Resp. 22–25. Patent Owner argues that NetBIOS fails to disclose
`“a query or determination as to the on-line status of a process.” Id. at 31–39.
`Patent Owner specifically argues that “[n]ames are registered in the NetBIOS
`system when a computer is first connected to the NetBIOS server, but the name
`may remain registered even after the computer that registered it is later
`disconnected from the network,” and therefore, a query into the registration status
`of a name is not the same as a “query or determination as to whether a computer is
`on-line.” PO Resp. 33. Petitioner argues that the Board’s claim construction was
`correct because the ʼ704 patent only describes registering the computer with the
`network as satisfying online status, and therefore, NetBIOS discloses “a query or a
`determination as to the on-line status of a process” based on the Board’s claim
`construction. Pet. Reply 4–9.
`Patent Owner’s argument that “the name may remain registered even after
`the computer that registered it is later disconnected from the network” is not
`persuasive because the scope of the claims does not require any specific time
`“later” that the second process must be “on-line and active.” As discussed above
`our claim construction of “connected to the computer network” encompasses a
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`second process that is “on-line” by registering an address with the server. As also
`discussed above, such constructions for “connected to the computer network” and
`“determining the on-line status of the second process” are consistent with the ʼ704
`patent, which specifies that “the second processing unit 22, upon connection to the
`Internet 24 through a connection service provider, is processed by the connection
`server 26 to be established in the database 34 as an active on-line party.” Ex. 1001,
`col. 5, ll. 35–38. Furthermore, Patent Owner and Dr. Ketan Mayer-Patel agree that
`a second processing unit is “active and on-line at registration.” PO Resp. 26; Ex.
`2018 ¶ 22. In other words, Patent Owner and Dr. Ketan Mayer-Patel agree that
`NetBIOS discloses, at one point in time, a query or determination for a second
`processes’ address is the same as a query or determination as to whether the second
`process is “active and on-line.” See PO Resp. 26; Ex. 2018 ¶ 22. NetBIOS
`describes that at the time of registration, a query or determination for a second
`processing unit’s address indicates a second processing unit is “active and on-line.”
`Patent Owner also argues that NetBIOS fails to teach “dynamic address
`allocation,” as required by the claims. PO Resp. 50–54. As discussed above,
`Patent Owner argues that the claims require that an address be assigned “following
`connection to the computer network” and, by definition, this is dynamic address
`allocation. Id. at 52 (citing Ex. 2018 ¶¶ 24, 26). Petitioner argues that “dynamic
`address allocation” is anticipated by NetBIOS, and Patent Owner does not dispute
`that WINS anticipates dynamic address assignment to computers, as discussed
`below. Pet. Reply 12. We are not persuaded by Patent Owner’s argument. As
`discussed above in our claim construction of “following connection to the
`computer network,” we do not construe the claims 1–4, 32, and 38–42 as requiring
`“dynamic address allocation.” Accordingly, Patent Owner’s argument that
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`NetBIOS fails to teach “dynamic address allocation” does not persuade us that
`NetBIOS fails to anticipate claims 1–4, 32, and 38–42.
`Patent Owner also argued, during Oral Hearing, that the prior art teaches a
`“transport layer construct” whereas the ʼ704 patent “is an application layer piece of
`software.” Tr. 40:16–19, 44:12–18. Petitioner responded that the claims do not
`include such limitations. Tr. 70:7–12. Petitioner also responded that this is not
`presented in the ʼ704 specification. Tr. 70:13–15.
`We are not persuaded by Patent Owner’s argument that the claims require
`application layer software. First, the argument that the prior art describes
`“transport layer construct” whereas the claims require “application layer software”
`was first presented during Oral Hearing and was not presented in Patent Owner’s
`Response or Preliminary Response. Tr. 40:16-19. Patent Owner contends that this
`is not a new argument and has been briefed, addressed, and discussed by both
`parties. Tr. 55:20–23. We are, however, unable to find a discussion of the
`argument on the record. Therefore, we determine that this argument is untimely.
`“A party may rely upon evidence that has been previously submitted in the
`proceeding and may only present arguments relied upon in the papers previously
`submitted. No new evidence or arguments may be presented at the oral argument.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.
`Second, we also agree with Petitioner that the claims do not require any
`distinction between a “transport layer construct” and “application layer software.”
`Tr. 70:7–12. Patent Owner argues that “[i]t is all over the claims because we
`talked about the process, first process and second process, not first node and
`second node.” Tr. 56:4–9. Patent Owner, however, fails to provide persuasive
`argument or evidence to illustrate why the term “process” necessarily incorporates
`the limitations distinguishing “application layer software” from a “transport layer
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`construct.” We find nothing, on this record, which limits the scope of the claims to
`“application layer software.” Even further, NetBIOS discloses “[a]n application,
`representing a resource, registers one or more names,” and, therefore, NetBIOS
`anticipates the claims even if the claims were construed to require “application
`layer software.” Ex. 1003, 360. NetBIOS further discloses that applications
`request names, and a session is a reliable message exchange between a pair of
`NetBIOS applications. Id. at 360–361. Patent Owner agrees that “[i]t is possible
`in some instances for something in the transport layer to reach up to an
`application” and “[i]t may be possible from an application to reach all the way
`down, send something to the transport layer and send it back up.” Tr. 59:10-17.
`Patent Owner, however, fails to provide persuasive evidence or rationale to
`distinguish the claims from the prior art based on a “transport layer construct” and
`“application layer software.” Accordingly, we are not persuaded by Patent
`Owner’s argument.
`We agree with Petitioner that claims 1–4, 32, and 38–42 are anticipated by
`NetBIOS. See Pet. 27, 33–52, 56–58. For example, with respect to claim 1,
`NetBIOS discloses a software interface that allows applications on different
`computers to communicate within a computer network. Ex. 1003, 359. A name
`registration request connects a process to a network by registering the process with
`the network, and a name query, from a process, discovers the addresses of
`processes connected to the network. Id. at 359, 376–377, 385, 397. NetBIOS
`further discloses that once an address has been found through a name query, a
`point-to-point communication session is established between the processes. Id.
`We agree with Petitioner that this disclosure of NetBIOS meets the limitations of
`claim 1. See Pet. 27, 33–40. We similarly agree with Petitioner that NetBIOS
`discloses the limitations of claims 2–4, 32, and 38–42. See Pet. 27, 40–52, 56–58.
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`For the foregoing reasons and the reasons discussed in our Decision to
`Institute inter partes review of the ʼ704 patent, we conclude that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–4, 32, and 38–42
`are anticipated by NetBIOS. See Dec. 7–11; See Pet. 27, 33–38.
`b. Claims 5-7
`Patent Owner contends that claims 5–7 are not anticipated by NetBIOS
`because, as argued in support of claims 1–4, 32, and 38–42, NetBIOS fails to
`disclose determining the on-line status of a process and accordingly cannot meet
`the limitations recited by claims 5–7. PO Resp. 46–49. However, as discussed
`above in our analysis of the anticipation of claim 1 by NetBIOS, we are not
`persuaded by Patent Owner’s argument that NetBIOS fails to disclose determining
`the on-line status of a process and therefore we are not persuaded that NetBIOS
`fails to anticipate claims 5–7 for this reason.
`Furthermore, claim 5 recites, inter alia, “retrieving a network protocol
`address of the second process in response to a positive determination of the on-line
`status of the second process.” Claim 6 similarly recites, inter alia, “transmitting
`the network protocol address of the second process to the first process when the
`second process is determined in step C to have a positive on-line status with
`respect to the computer network.” We agree with Petitioner that NetBIOS
`di