UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SIPNET EU S.R.O.
`Petitioner
`v.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, INC.
`(now STRAIGHT PATH IP GROUP, INC.)
`Patent Owner
`
`
`
`Patent No. 6,108,704
`
`Filing Date: September 25, 1995
`
`Issue Date: August 22, 2000
`
`Title: POINT-TO-POINT INTERNET PROTOCOL
`
`___________________________
`
`Inter Partes Review No. IPR2013-00246, Filing Date April 11, 2013
`
`
`DECLARATION OF KETAN MAYER-PATEL
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 1
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SIPNET EU S.R.O.
`Petitioner
`v.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, INC.
`(now STRAIGHT PATH IP GROUP, INC.)
`Patent Owner
`
`
`
`Patent No. 6,108,704
`
`Filing Date: September 25, 1995
`
`Issue Date: August 22, 2000
`
`Title: POINT-TO-POINT INTERNET PROTOCOL
`
`___________________________
`
`Inter Partes Review No. IPR2013-00246, Filing Date April 11, 2013
`
`
`DECLARATION OF KETAN MAYER-PATEL
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 1
`
`
`
`I.
`
`1.
`
`INTRODUCTION
`
`I have been retained as an independent expert witness by Straight Path
`
`IP Group, Inc. (“Patent Owner”) for evaluation of U.S. Patent 6,108,704 (the “’704
`
`Patent”) and the asserted references in IPR2013-00246 (the present “inter partes
`
`review”).
`
`2.
`
`I am an expert in the field of networking protocols, including
`
`networking protocols supporting multimedia streams.1
`
`3.
`
`I received Bachelors of Arts degrees in computer Science and
`
`Economics in 1992, a Masters of Science in 1997 from the Department of
`
`Electrical Engineering and Computer Science, and a Ph.D. in 1999 from the
`
`Department of Electrical Engineering and Computer Science, all from the
`
`University of California, Berkeley.
`
`4.
`
`I received the National Science Foundation CAREER Award in 2003
`
`while an Assistant Professor at the University of North Carolina, Chapel Hill.
`
`5.
`
`I have had extensive experience in both industry and academia as it
`
`relates to the technical fields relevant here. For example, I have been a
`
`programmer, a visiting researcher, and an Assistant and Associate Professor.
`
`
`1 See Curriculum Vitae, attached as Exhibit 2019.
`
`Page 1
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`Sony Corp. v. Straight Path IP Group, Inc.
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`PAGE 2
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`
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`6.
`
`I am a co-author of numerous articles that have appeared in a number
`
`of referenced publications and proceedings.
`
`7.
`
`Governmental agencies, such as the National Science Foundation and
`
`the Office of Naval Research, have provided funding for my research.
`
`II. RETENTION AND COMPENSATION
`
`8.
`
`I have been retained to offer an expert opinion on (1) “The Open
`
`Group, Technical Standard – Protocols for X/Open PC Internetworking/SMB,
`
`Version 2” (Exhibit 1003) (“NetBIOS”), and (2) “Windows NT 3.5, TCP/IP User
`
`Guide” (Exhibit 1004) (“WINS”) in relation to the claims of the ’704 Patent and
`
`the validity of the claims in the current inter partes review.2
`
`
`2 I was previously retained by Net2Phone, Inc., a previous assignee of the ’704
`
`Patent, to evaluate the patentability of the ’704 Patent in Reexamination Control
`
`No. 90/010,416. My previous expert declaration, issued on November 27, 2009,
`
`stated in part that the challenged claims of the ’704 Patent were not anticipated by
`
`the NetBIOS reference asserted by Petitioner in this inter partes review. I note that
`
`the Petition states, “The Patent Examiner agreed that NetBIOS provides the same
`
`address determining mechanism as described in the patent, but an expert
`
`declaration argued that ‘bringing dynamic addressing into a NetBIOS type system
`
`would create a new set of obstacles that would need to be solved that are not
`
`Page 2
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`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
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`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
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`PAGE 3
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`
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`9. My work on this case is being billed at a rate of $480 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent upon the
`
`outcome of the case.
`
`
`obvious in view of the combination of references.’” I assume Petitioner is
`
`referring to my expert declaration, although that quotation does not appear in my
`
`previous declaration. Beyond misquoting my declaration, it appears that Petitioner
`
`does not understand the technical distinctions that were explained in my
`
`declaration, and were confirmed by the Examiner at the conclusion of the
`
`Reexamination. My declaration did not “agree” that “NetBIOS provides the same
`
`address determining mechanism as described in the patent.” My declaration
`
`instead explained that the “address determining mechanism” of NetBIOS was not
`
`equivalent to the determination of on-line status as required by the ’704 Patent.
`
`(For example, I stated, “While NetBIOS uses name entries with ‘active’ statuses as
`
`part of its name management process, an analysis of how that ‘active’ status is used
`
`shows that ‘an active name’ is not synonymous with an ‘on-line status with respect
`
`to the computer network.’”) My position regarding NetBIOS remains unchanged,
`
`as explained in detail throughout this Declaration.
`
`Page 3
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`PAGE 4
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`
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`III. BASIS OF MY OPINION AND MATERIALS
`CONSIDERED
`
`10.
`
`In preparation for this report, I have considered and relied on data or
`
`other documents identified in this report, including (1) Paper No. 1, “Petition for
`
`Inter Partes Review” (“Petition”); (2) Paper No. 11, “Decision: Institution of Inter
`
`Partes Review” (“Decision”); (3) NetBIOS; (4) WINS; and (5) the ’704 Patent.
`
`11.
`
`I have familiarized myself with the state of the art at the time the ’704
`
`Patent was filed by reviewing both patent and non-patent references from prior to
`
`the filing date of the application that became the ’704 Patent.
`
`12. My opinions are also based upon my education, training, research,
`
`knowledge, and experience in this technical field.
`
`IV. SUMMARY OF MY OPINIONS
`
`13. Based on my prior experience in the field of computer systems and
`
`networking, including network communication protocols, and based on my review
`
`of the documents relating to the pending inter partes review, I have developed an
`
`understanding of the ’704 Patent and the claimed inventions.
`
`14.
`
`I have been asked to compare the instituted claims of the ’704 Patent
`
`to the NetBIOS and WINS references applied in the pending inter partes review.
`
`The results of my comparisons are provided below. In general, it is my opinion
`
`that all of the claims subject to the current inter partes review (i.e., claims 1-7 and
`
`32-42) are patentable over NetBIOS, WINS, and NetBIOS in view of WINS. As is
`
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`Case No. IPR2014-00230
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`PAGE 5
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`
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`discussed in more detail below, the asserted references do not teach a query or
`
`determination as to whether a process is connected to a network, but instead
`
`merely determine whether a computer has been initially registered with the
`
`NetBIOS or WINS system.
`
`V. LEGAL STANDARDS
`
`15.
`
`It is my understanding that a claim is invalid by anticipation when a
`
`single prior art reference (as defined by 35 U.S.C. § 102) existed prior to the
`
`claim’s priority date and teaches every element of the claim. (Verizon Servs. Corp.
`
`v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). I also
`
`understand that under 35 U.S.C. § 103, the combined teachings of more than one
`
`prior art reference can be used to demonstrate that all of the elements of a claim
`
`were known at the time of the invention. I understand this is often referred to as
`
`“obviousness,” and such obviousness must be assessed at the time the invention
`
`was made. (Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1073 (Fed. Cir.
`
`2012)). I understand that, under 35 U.S.C. § 103, a patent cannot be obtained “if
`
`the differences between the subject matter to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art.” (35 U.S.C. § 103).
`
`16.
`
`It is my understanding that claim terms are to be given their broadest
`
`reasonable interpretation in light of the patent specification in an inter partes
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`PAGE 6
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`review. (In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). It is
`
`also my understanding that this interpretation should be from the viewpoint of one
`
`of ordinary skill in the art reading the patent specification. (In re Suitco, 603 F.3d
`
`at 1260).
`
`VI. THE ’704 CLAIMS REQUIRE (1) A QUERY OR
`DETERMINATION OF ON-LINE STATUS AND (2)
`DYNAMIC ADDRESSING
`
`17. One of the objectives of the ’704 Patent is to provide a connection
`
`between two on-line processes so that the processes may establish a point-to-point
`
`communication over the network. To achieve this objective, the ’704 Patent
`
`teaches tracking the on-line status of registered processes, rather than simply
`
`maintaining a database of these processes. The’704 Patent and each challenged
`
`claim determines the on-line status of the requested process prior to providing an
`
`address to the requestor. For example, claim 4 requires that “receiving a query
`
`from the first process to determine the on-line status of the second process,” and
`
`then “determining the on-line status of the second process” before “transmitting an
`
`indication of the on-line status of the second process to the first process.” (U.S.
`
`Patent No. 6,108,704 (“ ’704 Patent”) at 11:54-59). One illustrative way of
`
`determining this on-line status is by use of an ongoing timestamp application, with
`
`which the system actively checks whether a process is still connected to the
`
`network. (’704 Patent at 5:39-40). By the plain language of these claim
`
`Page 6
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`PAGE 7
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`limitations, as well as numerous disclosures of the specification, one of ordinary
`
`skill in the art would understand that the ’704 Patent requires a system that actively
`
`determines whether its processes are on-line with respect to the network. The
`
`Abstract of the ’704 Patent summarizes its invention as the following:
`
`A point-to-point Internet protocol includes the steps of (a) storing in a
`
`database a respective IP address of a set of processing units that have
`
`an on-line status with respect to the Internet; (b) transmitting a
`
`query from a first processing unit to a connection server to
`
`determine the on-line status of a second processing unit; and (c)
`
`retrieving the IP address of the second unit from the database using
`
`the connection server, in response to the determination of a positive
`
`on-line status of the second processing unit, for establishing a point-
`
`to-point communication link between the first and second
`
`processing units through the Internet. (’704 Patent at Abstract
`
`(emphasis added)).
`
`The “query [] to determine the on-line status” of a process clearly indicates that the
`
`’704 Patent teaches determining whether a process is connected to the network. As
`
`the patent’s objective is to enable point-to-point communications between two on-
`
`line processes, a system that simply maintains a log of registered network
`
`addresses cannot achieve the objective and claimed inventions of the ’704 Patent.
`
`18.
`
`In addition to the Abstract’s summary of its claimed invention, the
`
`Figures of the ’704 Patent demonstrate that the claimed query and subsequent
`
`determination is to whether the requested process is active on the network. For
`
`Page 7
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`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. (’704
`
`Patent at FIG. 2). Figure 8 additionally states that the system will “receive [a]
`
`query from first unit whether a specified second unit is logged-in,” and then
`
`“retrieve IP address from database if the second unit is logged-in.” (’704 Patent at
`
`FIG. 8).
`
`19. The Summary of the Invention again states that the Patent covers a
`
`protocol
`
`which includes the steps of (a) storing in a database a respective IP
`
`address of a set of processing units that have an on-line status with
`
`respect to the Internet; (b) transmitting a query from a first processing
`
`unit to a connection server to determine the on-line status of a second
`
`processing unit, and (c) retrieving the IP address of the second unit
`
`from the database using the connection server, in response to the
`
`determination of a positive on-line status of the second processing
`
`unit, for establishing a point-to-point communication link between
`
`the first and second processing units. (’704 Patent at 1:63-2:9
`
`(emphasis added)).
`
`The Description of the Preferred Embodiments again emphasizes this active
`
`connection of the processing units with respect to the network:
`
` 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
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`PAGE 9
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`protocol. Similarly, a second user operating the second processing
`
`unit, upon connection to the Internet through a connection service
`
`provider, is processed by the connection server to be established in
`
`the database as an active on-line party. (’704 Patent at 5:31-38).
`
` 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 any stored information corresponding to the
`
`callee’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. (’704 Patent
`
`at 5:55-62).
`
` If the callee is not on-line when the connection server determines
`
`the callee’s status, the connection server sends an OFF-LINE
`
`signal or message to the first processing unit. (’704 Patent at 6:1-
`
`4).
`
` When a user logs off or goes off-line from the Internet, the
`
`connection server updates the status of the user in the
`
`database…Accordingly, an off-line user is effectively disabled
`
`from making and/or receiving point-to-point Internet
`
`communications. (’704 Patent at 6:6-16).
`
` The first processing unit and the second processing unit are
`
`operatively connected to the Internet by communication devices
`
`and software known in the art. The processing units may be
`
`operatively interconnected through the Internet to a connection
`
`server. (’704 Patent at 3:11-13).
`
`Page 9
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`
` The processing units are capable of placing calls and connecting to
`
`other processing units connected to the Internet, for example, via
`
`dialup SLIP/PPP lines. (’704 Patent at 4:56-58).
`
` [T]he disclosed point-to-point Internet protocol and system is
`
`initiated at a first processing unit for point-to-point Internet
`
`communications by starting the point-to-point Internet
`
`protocol…by sending a query from the first processing unit to the
`
`connection server; determining if the connection server is operative
`
`to perform the point-to-point Internet protocol by receiving, at the
`
`first processing unit, and on-line status signal from the connection
`
`server. (’704 Patent at 10:4-11).
`
`20. The specification also confirms that the claimed process is a computer
`
`program, rather than the computer itself:
`
`The first processing unit 12 may operate the disclosed point-to-point
`
`Internet protocol by a computer program described hereinbelow in
`
`conjunction with FIG. 6, which may be implemented from compiled
`
`and/or interpreted source code in the C++ programming language and
`
`which may be downloaded to the first processing unit 12 from an
`
`external computer. The operating computer program may be stored
`
`in the memory 16, which may include about 8 MB RAM and/or a hard
`
`or fixed drive having about 8MB. (’704 Patent at 3:39-47 (emphasis
`
`added)).
`
`This disclosure corresponds with the common understanding of the term “process.”
`
`To one of ordinary skill in this art, the term “process” as used in the claims
`
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`conveys a process or computer program running on a computer, rather than the
`
`computer itself.
`
`21. The connection to the computer network required by the ’704 Patent
`
`is not perpetual once it is initially established; a process may be initially connected
`
`to the network and subsequently disconnected. A process or computer program
`
`that has been initially registered with the network is therefore not inherently
`
`connected to the network after that registration is first established.
`
`22.
`
`I note that the Board, in its Decision to Institute, stated that “merely
`
`registering the processing unit with a connection server encompasses a processing
`
`unit being active and on-line.” (Decision at 10). I cannot agree with this
`
`statement. While 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. As discussed in more detail below, both the NetBIOS and WINS
`
`references disclose instances in which a computer remains registered in its
`
`database but is no longer connected to the network. One of ordinary skill in the art
`
`would understand that a registered computer or computer program is not inherently
`
`connected to the network, and a “registered” status is not equivalent to “on-line”
`
`status or an active, current connection to the network. A query into whether a
`
`computer program or computer itself is registered on a database is therefore
`
`insufficient to determine the on-line status of the computer program or process.
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`23. Each of the challenged claims, as set forth below, require this ability
`
`to query into or determine the on-line status of the requested process:
`
`Claim 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
`query as to whether the second process is
`connected to the computer network;
`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 product, for establishing a
`point-to-point communication link between the
`first process and the second process over the
`computer network.
`
`
`Claim 2:3 An apparatus for enabling point-to-point communications
`between a first and second process over a computer
`network, the apparatus comprising:
`a processor;
`a network interface, operatively coupled to the processor,
`for connecting the apparatus to the computer network;
`a memory, operatively coupled to the processor, for
`storing a network protocol address for a selected of a
`plurality of processes, each network protocol address
`stored in the memory following connection of a
`respective process to the computer network;
`
`
`3 Claim 3 is dependent upon claim 2 and therefore incorporates the above
`
`limitations.
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`means, responsive to a query from the first process,
`for determining the on-line status of the second process
`and for transmitting a network protocol address of the
`second process to the first process in response to a
`positive determination of the on-line status of the
`second process.
`
`
`Claim 4:4 A method for enabling point-to-point communication
`between a first process and a second process over a
`computer network, the method comprising the steps of:
`A. receiving and storing into a computer memory a
`respective network protocol address for a selected of a
`plurality of processes that have an on-line status with
`respect to the computer network, each of the network
`protocol addresses received following connection of the
`respective process to the computer network;
`B. receiving a query from the first process to
`determine the on-line status of the second process;
`C. determining the on-line status of the second
`
`
`
`
`process; and
`
`D. transmitting an indication of the on-line status of
`the second process to the first process over the computer
`network.
`
`
`Claim 32: A method of locating a process over a computer network
`comprising the steps of:
`a. maintaining an Internet accessible list having a
`plurality of selected entries, each entry comprising an
`identifier and a corresponding Internet protocol address
`of a process currently connected to the Internet, the
`Internet protocol address added to the list following
`connection of the process to the computer network;
`b. in response to identification of one of the list entries
`by a requesting process, providing one of the identifier
`
`
`4 Claims 5, 6, and 7 are each dependent upon the method of claim 4 and therefore
`
`incorporate the above limitations.
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`and the corresponding Internet protocol address of the
`identified entry to the requesting process.
`
`
`Claim 33:5 A method for locating processes having dynamically assigned
`network protocol addresses over a computer network, the
`method comprising the steps of:
`a. maintaining, in a computer memory, a network-
`accessible compilation of entries, selected of the entries
`comprising a network protocol address and a
`corresponding identifier of a process connected to the
`computer network; and
`b. in response to identification of one of the entries by
`a requesting process providing one of the identifier and
`the network protocol address to the requesting process.
`
`
`Claim 38:6 A computer program product for use with a computer system
`having a memory and being operatively connectable over a
`computer network to one or more computer processes, the
`computer program product comprising a computer usable
`medium having program code embodied in the medium, the
`program code comprising:
`a. program code configured to maintain, in the computer
`memory, a network accessible compilation of entries,
`selected of the entries comprising a network protocol
`address and a corresponding identifier of a process
`connected to the network; and
`
`
`5 Claim 34 is dependent upon claim 33, claims 35 and 37 are dependent upon claim
`
`34, and claim 36 is dependent upon claim 35. Each of these dependent claims
`
`therefore incorporate the limitations of claim 33.
`
`6 Claims 39 and 42 are dependent upon claim 38, claim 40 is dependent upon claim
`
`39, and claim 41 is dependent upon claim 40. Each of these dependent claims
`
`therefore incorporate the limitations of claim 38.
`
`Page 14
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 15
`
`
`
`b. program code responsive to identification of one of
`the entries by a requesting process and configured to
`provide one of the identifier and the network protocol
`address to the requesting process. (’704 Patent at 11:2-
`39; 11:44-60; 14:58-15:15; and 15:30-47 (emphases
`added)).
`
`
`As identified above, the claim language requires either “a query as to whether the
`
`second process is connected to the computer network,” “determining the on-line
`
`status” of a process, or issuing a “response” when a process “is connected to the
`
`network.” Independent claims 32, 33, and 38 do not explicitly require a “query” or
`
`“determination” into the on-line status of a process. However, claims 32, 33, and
`
`38 each require an “identification” of an entry from a compilation of entries that
`
`are connected to the network. A determination of the on-line status necessarily
`
`occurs upon this identification of an entry on the list of processes connected to the
`
`network. Each independent claim therefore requires a query or determination into
`
`the on-line status of a process. Claims 32, 33, and 38 each additionally require
`
`maintaining a list of entries, wherein each entry comprises “a process connected to
`
`the computer network.” This limitation further emphasizes that the processes of
`
`the ’704 Patent have an on-line status with respect to the network, to achieve the
`
`claimed objective of enabling a point-to-point communication between two
`
`processes over the network.
`
`24. The claims also each require dynamic address allocation, as covered
`
`by the various limitations that recite “a network protocol address received by [a]
`
`Page 15
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 16
`
`
`
`process following connection to the computer network.” (See, e.g., ’704 Patent at
`
`11:9-11). If a system is configured to utilize dynamic address allocation, each
`
`process is assigned a unique IP address from the server during network
`
`initialization. Protocol addresses received “following connection to the network”
`
`are inherently dynamically assigned protocol addresses. To one of ordinary skill in
`
`computer networking at the time of the ’704 Patent invention, “a network protocol
`
`address received by a process following connection to the computer network”
`
`unambiguously defines a dynamically allocated address.
`
`25. The Examiner in Reexamination Control No. 90/010,416 (the
`
`“Reexamination”) found that the language “a network protocol address received by
`
`[a process] following connection to the computer network” corresponded to a
`
`dynamic element in the claims. For example, the Examiner stated in its Notice of
`
`Intent to Issue Ex Parte Reexamination Certificate that certain amended claims
`
`“now require the dynamic addressing aspects of the other claims 1-7 and 10-42.”
`
`(Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 2-3).
`
`The Examiner stated that “reasons for confirmation for the claims discussed above
`
`[1-7 and 10-42] will following a subsequent office action,” and the following
`
`Page 16
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 17
`
`
`
`Office Action recited the “following connection of [a process] to the computer
`
`network” limitation in each of the confirmed claims.7
`
`
`7 The Office Action stated, “The following is an examiner’s statement of reasons
`
`for confirmation of the claims found patentable in this reexamination proceeding:
`
`Referring to claims 1, 2, 4, 11, 22, 32, 33, 35, the claims are patentable and/or
`
`confirmed over the prior art that was explained in the request and determined to
`
`raise a substantial new question of patentability in the order granting reexamination
`
`and over the prior art that was applied and discussed by the examiner in the present
`
`reexamination proceeding because that prior art does not explicitly teach program
`
`code for transmitting to the server a network protocol address received by the first
`
`process following connection to the computer network (claim 1), each network
`
`protocol address stored in the memory following connection of a respective
`
`process to the computer network (claim 2), each of the network protocol addresses
`
`received following connection of the respective process to the computer network
`
`(claim 4), receiving a network protocol address of the first callee process over the
`
`computer network from the server (claim 11), program code for receiving a
`
`network protocol address of the first callee process over the computer network
`
`from the server (claim 22), the Internet Protocol address added to the list following
`
`connection of the process to the computer network (claim 32), the network
`
`Page 17
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 18
`
`
`
`26.
`
`In the current inter partes review, the Board stated that “the limitation
`
`‘connection to the computer network’ was given the narrow construction to require
`
`a dynamic element” in the reexamination proceedings, and then determined that
`
`the claims did not require dynamic addressing (Decision at 9-10). I do not agree
`
`with this statement and decision, for the dynamic element is incorporated into the
`
`‘704 claims via the language “following connection to the computer network.”
`
`(See Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 2-3
`
`(emphasis added)). The fact that a network protocol address is assigned to a
`
`process upon its connection to the network is, by definition, dynamic address
`
`allocation. The Examiner in the Reexamination recognized this, and noted that
`
`dynamic addressing was inherently required in claims that recited, as a whole, “a
`
`network protocol address received by the first process following connection to the
`
`
`protocol address of the corresponding process assigned to the process upon
`
`connection to the computer network (claim 33), the network protocol address of
`
`the corresponding process assigned to the process upon connection to the computer
`
`network (claim 38), in combination with the remaining elements or features of the
`
`claimed invention.” (Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination
`
`Certificate at 2-3).
`
`Page 18
`
`Straight Path Ex. 2018
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`Straight Path Ex. 2008
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00230
`
`PAGE 19
`
`
`
`computer network.” (Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination
`
`Certificate at 2-3).
`
`27. The specification also explicitly incorporates dynamic addressing into
`
`the claimed system. The Background of the patent explains a problem in the prior
`
`art as the following:
`
`Permanent IP addresses [i.e., ‘static’ address
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