Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 29
`Entered: December 16, 2013
`
`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.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 29
`Entered: December 16, 2013
`
`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.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2013-00246
`Patent 6,108,704
`
`
`I.
`
`INTRODUCTION
`Patent Owner, Straight Path IP Group, Inc., filed a request for rehearing
`(Paper 13) of the Board’s decision, dated October 11, 2013, which instituted inter
`partes review of claims 1-7 and 32-42 of U.S. Patent 6,108,704. Patent Owner
`contends that the Board should not have instituted review of claims 1-7, 32, and
`38-42 as anticipated by NetBIOS, claims 1-7 and 32-42 as anticipated by WINS,
`and claims 33-37 as obvious over NetBIOS and WINS. Rehearing Req. 2. For the
`reasons stated below, Patent Owner’s request is denied.
`
`II.
`
`STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)
`(citations omitted). The request must identify, specifically, all matters the party
`believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`III. DISCUSSION
`Patent Owner contends that the Board misapprehended or overlooked the
`following:
`A. Patent Owner’s argument that Petitioner’s reliance on inherency was
`improper;
`B. Patent Owner’s argument that Petitioner failed to conduct a proper
`analysis of the obviousness of claims 33-37 over NetBIOS and WINS;
`C. Patent Owner’s argument that NetBIOS and WINS fail to disclose each
`and every claim limitation exactly as arranged and combined in the claims; and
`
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`IPR2013-00246
`Patent 6,108,704
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`D. Patent Owner’s argument that the Messenger (Exs. 1011-1012) and DNS
`(Exs. 1006, 1007, 1013) references should be dismissed, and that the alleged
`grounds, submitted by Petitioner, should not be treated as redundant.
`Rehearing Req. 1.
`A. Petitioner’s reliance on inherency was improper
`Patent Owner first argues that the Board misapprehended or overlooked
`Patent Owner’s argument that Petitioner’s reliance on inherency was improper
`legally because Petitioner failed to provide extrinsic evidence in support of
`inherency. Rehearing Req. 5-7. Patent Owner specifically argues that Petitioner
`states “[i]t is inherent, and understood by those of skill in the art, that NetBIOS
`Name server and the WINS server include a memory for the referenced name
`database,” and Petitioner “provides no extrinsic evidence to support this claim.”
`Rehearing Req. 6 (quoting Pet. 41). Patent Owner’s argument, however, that
`Petitioner failed to provide extrinsic evidence to support this claim was not raised
`until this request for rehearing. Accordingly, we did not misapprehend or overlook
`this argument because it was not previously presented. Although 37 C.F.R. §
`42.71(d) permits a party to file a request for rehearing, it is not an opportunity to
`submit new arguments.
`We are, in any event, not persuaded that Petitioner’s reliance on inherency
`was “improper.” Dec. 9, 13. In fact, NetBIOS and WINS expressly disclose the
`features that Petitioner has argued are inherent. In one example, Petitioner argued
`that a “computer medium is inherent, one of skill in the art would understand an
`application has to be on a medium,” and it is, therefore, inherent to have a
`computer medium from the description of mapping of references to programs, as
`per claim 1. Pet. 34-35. NetBIOS discloses that NetBIOS can be executed on
`computers and includes a program interface to the name and session services in
`
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`IPR2013-00246
`Patent 6,108,704
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`NetBIOS. (Ex. 1003, 359-361). WINS also describes WINS servers that includes
`name-to-IP address mapping for name resolution. (Ex. 1004, 50).
`In another example, Petitioner argued “[i]t is inherent, and understood by
`those of skill in the art that NetBIOS name server and WINS server include a
`processor” and “[i]t is inherent, and understood by those of skill in the art, that the
`NetBIOS Name Server and the WINS server include a memory for the referenced
`name databases,” as per claim 2. Pet. 40-41. NetBIOS explicitly discloses that the
`NetBIOS service can be implemented in a multi-processor system. (Ex. 1003,
`411). WINS also further describes that a WINS server can have more than one
`processor and memory used for reference mappings. (Ex. 1004, 145, 152).
`In sum, we are not persuaded that the Board overlooked or misapprehended
`Patent Owner’s argument because this argument was not presented until this
`rehearing request, and we further note that the prior art discloses the features that
`Petitioner argued were inherent.
`B. Petitioner failed to conduct a proper analysis for the obviousness of
`claims 33-37 over NetBIOS and WINS
`Patent Owner argues that the Board misapprehended or overlooked Patent
`Owner’s argument that Petitioner’s analysis of the obviousness of claims 33-37
`over NetBIOS and WINS was improper. Rehearing Req. 7-10. Patent Owner first
`argues that Petitioner has provided arguments in support of anticipation, but has
`failed to provide arguments in support of obviousness. Rehearing Req. 8. The
`Board, however, fully considered this argument but did not find it persuasive. As
`we noted in our Decision, Petitioner explicitly stated, with respect to its challenge
`of obviousness over NetBIOS and WINS, that WINS was relied on to describe
`dynamic addressing. Dec. 15; Pet. 26. Although our construction of the claim
`term “connected to the computer network,” as recited in claim 1, does not require
`
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`IPR2013-00246
`Patent 6,108,704
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`dynamic addressing, claim 33 explicitly recites “dynamically assigned network
`protocol addresses.” Dec. 5-6, 11-15. We were persuaded by Petitioner’s
`argument and determined that there is a reasonable likelihood that Petitioner will
`prevail in showing that claims 33-37 would have been obvious over NetBIOS
`combined with the dynamic addressing disclosed in WINS. See Dec. 15-16.
`Patent Owner further argues that Petitioner did not provide any “coherent”
`arguments for obviousness over NetBIOS and WINS in the relevant section in the
`Petition. Rehearing Req. 8-9. This argument, however, is raised first in this
`request for rehearing, and accordingly we did not misapprehend or overlook this
`argument. Although 37 C.F.R. § 42.71(d) permits a party to file a request for
`rehearing, it is not an opportunity to submit new arguments. Furthermore, we do
`not agree with Patent Owner that the location of the Petitioner’s arguments within
`its Petition are of any consequence in determining whether there is a reasonable
`likelihood that Petitioner will prevail in showing the obviousness of claims 33-37.
`Rehearing Req. 9. Petitioner provided an analysis for combining NetBIOS and
`WINS, in addition to providing an analysis of combining NetBIOS, WINS, and
`Messenger. Pet. 21-22. Therefore, we determine that the Petitioner’s analysis of
`obviousness over NetBIOS and WINS is sufficient to demonstrate a reasonable
`likelihood that Petitioner will prevail.
`Patent Owner also argues that the Board misapprehended or overlooked
`Patent Owner’s argument that Petitioner did not provide a proper Graham analysis,
`and the Board erred by “faulting” Patent Owner for failing to rebut Petitioner’s
`conclusion of obviousness. Id. at 9-10. We, however, fully considered Patent
`Owner’s arguments but did not find them persuasive. The Board determined there
`is a reasonable likelihood that Petitioner will prevail in showing claims 33-37
`would have been obvious over NetBIOS and WINS. Dec. 16. This determination
`
` 5
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`IPR2013-00246
`Patent 6,108,704
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`was based on the obviousness arguments presented by Petitioner. Id. Accordingly,
`the Board did not “fault” or misplace the burden on Patent Owner for failing to
`rebut Petitioner’s assertion, but rather did not find Patent Owner’s arguments
`persuasive. Therefore, we did not overlook or misapprehend these arguments.
`C. NetBIOS and WINS fail to discloses each and every claim limitation
`exactly as arranged and combined in the claims
`Patent Owner also argues that the Board misapprehended or overlooked
`Patent Owner’s argument that NetBIOS and WINS fail to disclose each and every
`claim limitation exactly as arranged and combined in the claims. Rehearing Req.
`10-13; Prelim. Resp. 17, 29-30. We, however, fully considered this argument and
`were not persuaded. The Board’s analysis of anticipation sets forth that NetBIOS
`and WINS discloses each and every claim limitation exactly as arranged and
`combined in the claims. See Decision 7-14. Therefore, the Board did not
`misapprehend or overlook this argument, but rather found this argument
`unpersuasive.
`D. Messenger and DNS references should be dismissed and the alleged
`grounds, submitted by Petitioner, should not be treated as redundant
`Patent Owner additionally argues that the Board misapprehended or
`overlooked Patent Owner’s argument that the Messenger (Exs. 1011-1012) and
`DNS (Ex. 1006, 1007, 1013) references should be “dismissed.” Rehearing Req.
`13-15. Patent Owner specifically argues that Petitioner has relied improperly upon
`several references to demonstrate anticipation. Id. Patent Owner argues that
`Petitioner has not demonstrated that these references qualify as prior art. Id;
`Prelim. Resp. 15-16.
`The Board determined that Petitioner’s arguments for anticipation of the
`claims based on the DNS references and Messenger references are redundant.
`
` 6
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`IPR2013-00246
`Patent 6,108,704
`
`Dec. 18-19. Accordingly, Patent Owner’s arguments directed to these references
`are moot. Furthermore, as the argument to “dismiss” these references was not
`presented previously, it is improper to raise this argument for the first time in this
`request for rehearing.
`
`IV. ORDER
`Accordingly, it is hereby
`ORDERED that Patent Owner’s request for rehearing is denied.
`
`
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`cu
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`IPR2013-00246
`Patent 6,108,704
`
`For PETITIONER:
`
`Paul C. Haughey
`Michael T. Morlock
`KILPATRICK TOWNSEND & STOCKTON, LLP
`Phaughey@kilpatricktownsend.com
`mmorlock@kilpatricktownsend.com
`
`For PATENT OWNER:
`
`Patrick J. Lee
`Alan M. Fisch
`FISCH HOFFMAN SIGLER, LLP
`Patrick.lee@fischllp.com
`Alan.fisch@fischllp.com
`
`
`
`
`
`
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