UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SONY CORPORATION
`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. IPR2014-00230, Filing Date December 5, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SONY CORPORATION
`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. IPR2014-00230, Filing Date December 5, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... 1
`
`I.
`
`
`THE ’704 PATENT ......................................................................................... 2
`
`II.
`
`
`THE ’704 PATENT EX PARTE REEXAMINATION ................................... 3
`
`III.
`
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW ....................... 6
`
`
`
` LEGAL STANDARD ..................................................................................... 8 IV.
`
`ARGUMENT ...........................................................................................................10
`
`I.
`
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’704 PATENT .....................................................10
`
`A.
`
`Each Challenged Claim Requires a Query into the On-Line
`Status of a Second Process, Rather than a Query into Whether a
`Process Has Registered with a Server .................................................11
`
`1.
`
`2.
`
`Petitioner’s Suggestion That “On-Line” Means
`“Registered with a Server” Has No Basis in the Claims or
`Specification ..............................................................................15
`
`Petitioner’s Alternative Constructions for “Query” Have
`No Basis in the Claims or Specification ...................................23
`
`B.
`
`Petitioner’s Construction for “A Network Protocol Address
`Received [] Following Connection to the Computer Network”
`Eliminates Claim 1’s Dynamic Addressing Requirement ..................26
`
`II.
`
`
`PETITIONER HAS FAILED TO DEMONSTRATE THAT EACH
`LIMITATION OF THE CHALLENGED CLAIMS IS FOUND IN
`THE ASSERTED PRIOR ART ....................................................................29
`
`A.
`
`The Challenged Claims Require a Query Into On-Line Status,
`and Are Therefore Patentable over the Microsoft Manual,
`Alone or in Combination with Palmer or Pinard ................................31
`
`
`
` Page i
`
`
`
`
`
`
`
`1.
`
`2.
`
`The Microsoft Manual Does Not Teach a Query into On-
`Line Status of a Process and Therefore Does Not
`Anticipate Claim 1 ....................................................................32
`
`The Microsoft Manual in Combination with Either
`Palmer or Pinard Does Not Teach a Query into On-Line
`Status of a Process and Therefore Does Not Render
`Obvious Claims 11-12, 19, 22-23, or 30 ...................................37
`
`B.
`
`The Claims Require a Query into On-Line Status or Dynamic
`Addressing, and are Therefore Patentable over VocalChat,
`Alone or in Combination with Pinard or RFC 1541 ...........................39
`
`1.
`
`The Asserted References Do Not Disclose a Query into
`the On-Line Status of a Process ................................................39
`
`a.
`
`b.
`
`VocalChat Does Not Teach the Required Query
`into the On-Line Status of a Process ..............................40
`
`VocalChat in Combination with Pinard Does Not
`Render Obvious the Required Query into On-Line
`Status of Claims 11-12, 19, 22-23, or 30 ........................46
`
`2.
`
`The Asserted References Do Not Render Obvious the
`Dynamic Address Allocation of Claim 1 ..................................47
`
`a.
`
`b.
`
`VocalChat Does Not Disclose Dynamic
`Addressing ......................................................................47
`
`Petitioner Has Not Established the Obviousness of
`Combining VocalChat with RFC 1541 ..........................48
`
`C.
`
`Little-1994 in Combination with RFC 791, RFC 1541, Little-
`1993, or Pinard Does Not Teach the Required Point-to-Point
`Communication with a Second Process ..............................................51
`
`1.
`
`2.
`
`Petitioner Has Admitted that Little-1994 Should Not Be
`Considered by the Board ...........................................................52
`
`The Asserted References Do Not Teach the Required
`Connection Between Two Processes, Receiving the
`Network Protocol Address of the Second Process, or
`
` Page ii
`
`
`
`
`
`Establishing Communication Responsive to the Network
`Protocol Address .......................................................................53
`
`a.
`
`b.
`
`Little-1994 Does Not Teach a Point-to-Point
`Communication with a Second Process .........................53
`
`Little-1994 in Combination with RFC 791, Little-
`1993, Pinard, or RFC 1541 Do Not Disclose a
`Connection Between Two Processes ..............................57
`
`3.
`
`Petitioner Has Not Established the Obviousness of
`Combining Little-1994 with RFC 1541 to Utilize
`Dynamically Assigned Addresses ............................................58
`
`CONCLUSION ........................................................................................................60
`
`
`
`
`
`
`
`
`
`
`
` Page iii
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`713 F.3d 1369 (Fed. Cir. 2013) .............................................................................. 9
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................................. 9
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ..............................................................................10
`
`In re Robertson, 169 F.3d 743
`(Fed. Cir. 1999) ....................................................................................................44
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 9, 50, 59
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`602 F.3d 1325 (Fed. Cir. 2010) .............................................................................. 9
`
`Statutes
`35 U.S.C. § 314(a) .................................................................................................2, 8
`
`Regulations
`37 C.F.R. § 42.100(b) ..............................................................................................10
`
`
`
`
`
`
`
`
` Page iv
`
`
`
`
`
`
`
`Straight Path IP Group, Inc., formerly Innovative Communications
`
`Technologies, Inc. (“Patent Owner”), respectfully submits this Preliminary
`
`Response opposing the Petition for Inter Partes Review filed by Sony Corporation
`
`(“Petitioner” or “Sony”) concerning U.S. Patent No. 6,108,704 (“the ’704 Patent”).
`
`INTRODUCTION
`
`The ’704 Patent relates to point-to-point communication between two on-
`
`line processes, in which a first process queries a server to determine the on-line
`
`status of a second process before establishing this point-to-point
`
`communication. A 2010 ex parte reexamination confirmed the claims of the ’704
`
`Patent. Notwithstanding this confirmation, Petitioner now challenges claims 1, 11-
`
`12, 19, 22-23, and 30 of the ’704 Patent on the basis of three primary references:
`
`(1) the Microsoft Manual; (2) VocalChat; and (3) Little-1994. None of these
`
`references, whether alone or in combination with Sony’s other cited references,
`
`anticipate or render obvious these claims.
`
`The Microsoft Manual only teaches a query into the address of a computer,
`
`rather than the claimed query into the on-line status of a process running on that
`
`computer. Likewise, Sony itself has admitted that VocalChat does not disclose a
`
`query into the on-line status of a process, and that it does not disclose the dynamic
`
`addressing requirement of the challenged claims. And Little-1994 does not teach a
`
`communication between a first and second process at all, as further required by the
`
`
`
` Page 1
`
`
`
`
`
`claims. Moreover, Petitioner has admitted that Little-1994 should not be
`
`considered by the Board, as its invalidity contentions relating to Little-1994 require
`
`the adoption of an unsupported claim construction. Ultimately, Petitioner’s
`
`conclusory arguments rest on hindsight, fail to account for the fact that the cited
`
`references do not disclose all the challenged claims’ requirements (even in
`
`combination), and ignore the difficulties that these references otherwise describe in
`
`combining the claimed features.
`
`Therefore, Petitioner has not established a reasonable likelihood of
`
`prevailing on its invalidity contentions as to any challenged claim, as required by
`
`35 U.S.C. § 314(a). Accordingly, Patent Owner respectfully submits that
`
`Petitioner’s Request for Inter Partes Review be denied, for the reasons explained
`
`more fully below.
`
`
`I.
`
`THE ’704 PATENT
`
`The ’704 Patent is entitled “Point-to-point internet protocol,” and was filed
`
`September 25, 1995 and issued on August 22, 2000. As stated in the Abstract of
`
`the ’704 Patent, the claimed invention relates generally to “[a] point-to-point
`
`Internet protocol [that] exchanges Internet Protocol (IP) addresses between
`
`processing units to establish a point-to-point communication link between the
`
`processing units through the Internet.”1
`
`
`1 U.S. Patent No. 6,108,704 (“’704 Patent) at Abstract.
`
`
`
` Page 2
`
`
`
`
`
`To achieve the objective of facilitating a point-to-point communication link
`
`between the two processes, the ’704 Patent teaches that a first process queries a
`
`server to determine the current on-line status and network protocol address of a
`
`second process. If the server determines that the second process is on-line, it will
`
`provide the requesting process with the network protocol address of the requested
`
`process in order to establish a point-to-point communication link between the two
`
`processes. Significantly, the invention of the ’704 Patent was explicitly created to
`
`facilitate this point-to-point communication in the context of dynamically assigned
`
`addresses.2
`
`
`II.
`
`THE ’704 PATENT EX PARTE REEXAMINATION
`
`The ’704 Patent was previously the subject of a third-party request for ex
`
`parte reexamination initiated on February 17, 2009 (Control No. 90/010,416).
`
`That request “assert[ed] that claims 1-7 and 10-44 of the ’704 Patent are
`
`unpatentable over prior art references not before the Patent and Trademark Office
`
`(PTO) during prosecution of the ’704 Patent.”3 Several references were asserted
`
`during those proceedings, including the VocalChat references and Pinard.
`
`
`2 ’704 Patent at 1:53-56. (“Due to the dynamic nature of temporary IP addresses of
`
`some devices accessing the Internet, point-to-point communications in realtime of
`
`voice and video have been generally difficult to attain.”).
`
`3 Ex. 2002, Request for Ex Parte Reexamination at 1.
`
`
`
` Page 3
`
`
`
`
`
`Although the Microsoft Manual was not asserted during that reexamination, the
`
`protocol implemented within the Microsoft Manual (“NetBIOS”) was asserted. On
`
`March 11, 2009, the Patent Office granted the request for ex parte reexamination
`
`for all requested claims. On October 26, 2010, the Patent Office issued a
`
`Reexamination Certificate confirming the patentability of claims 1-7 and 32-42.4
`
`In the reexamination proceedings, Patent Owner demonstrated that the
`
`limitation of a network protocol address received “following connection to the
`
`computer network” established a dynamic element that was not present in the
`
`submitted prior art.5 Further, Patent Owner pointed out that an “active” limitation
`
`of NetBIOS “is not synonymous with an ‘on-line status with respect to the
`
`
`4 Ex. 2003, ’416 Reexamination Certificate at 16. The reexamination certificate
`
`also indicates that claims 10, 21, 43, and 44 were canceled during reexamination,
`
`claims 8-9 were not reexamined, and that the remaining claims were patentable as
`
`amended during reexamination.
`
`5 See Ex. 2004, Response to Non-Final Rejection in a Re-Examination at 7.
`
`(“NetBIOS does not provide dynamic addressing or on-line status…[T]he claim
`
`mapping does not allege, much less prove, that NetBIOS teaches ‘the network
`
`protocol address of each respective process forwarded to the database following
`
`connection to the computer network.’”) (emphasis in original).
`
`
`
` Page 4
`
`
`
`
`
`computer network.’”6 As the Patent Owner noted, “[a]n active name [in NetBIOS]
`
`simply refers to a name that has been registered and that has not yet been de-
`
`registered, independent of whether the associated computer is or is not on-line.”7
`
`The Patent Office agreed with the Patent Owner on these points, and confirmed the
`
`patentability of the claims under reexamination. The Office explained that the
`
`prior art did not teach or disclose various limitations required by the claims:
`
`[P]rior 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),…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),…in combination with the
`
`remaining elements or features of the claimed invention.8
`
`The ex parte reexamination thus established that the submitted prior art
`
`failed to disclose limitations of the challenged claims. The Examiner also
`
`
`6 Ex. 2004, Response to Non-Final Rejection at 11.
`
`7 Ex. 2004, Response to Non-Final Rejection at 11.
`
`8 Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 4-5.
`
`
`
` Page 5
`
`
`
`
`
`ultimately dismissed the VocalChat references from consideration because the
`
`requestor had failed to establish the public availability of the references.9
`
`The ’704 Patent is also currently the subject of Inter Partes Review No.
`
`IPR2013-00246. The only overlapping claim at issue is claim 1.10
`
`
`III.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW
`
`Sony’s Petition requests cancellation of claims 1, 11-12, 19, 22-23, and 30
`
`as anticipated and/or obvious in view of the following prior art references.
`
`Notably, Petitioner has asserted an obviousness argument for all but one of its
`
`bases of invalidity, although the Petition is devoid of any significant obviousness
`
`analysis. For ease of reference, Sony’s invalidity grounds are summarized below:
`
`
`
`
`9 Ex. 2006, Final Rejection at 6 (“PO’s arguments questioning the declaration as
`
`well as whether printed publication status has been established as set forth under
`
`statute are found persuasive. Examiner therefore withdraws all rejections utilizing
`
`the VocalChat references.”).
`
`10 See Ex. 2007, IPR2013-00246 Paper No. 11, Decision to Institute. Patent Owner
`
`is currently challenging whether the pending inter partes review should have been
`
`instituted due to a real party-in-interest conflict and is seeking sanctions from the
`
`petitioner in that proceeding.
`
`
`
` Page 6
`
`
`
`Asserted Reference(s)
`
`Claims
`
`
`
`Primary
`Reference
`
`Microsoft
`Manual
`
`
`
`
`VocalChat
`References
`
`
`
`
`
`Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”)
`(1) Microsoft Manual; and
`(2) U.S. Pat. No. 5,375,068 to Palmer et al. (“Palmer”)
`(1) Microsoft Manual;
`(2) Palmer; and
`(3) U.S. Pat. No. 5,533,110 to Pinard et al. (“Pinard”)
`
`(1) VocalChat Version 2.0 trouble.hlp;
`(2) VocalChat Version 2.0 readme.txt;
`(3) VocalChat Version 2.0 User’s Guide;
`(4) VocalChat Version 2.0 info.hlp; and
`(5) VocalChat Version 2.0 voclchat.hlp (collectively,
`“VocalChat References”)
`(1) VocalChat References; and
`(2) Droms, R., Dynamic Host Configuration Protocol,
`RFC 1541 (Oct. 1993) (“RFC 1541”)
`(1) VocalChat References; and
`(2) Pinard
`
`1
`
`11-12, 19,
`22-23, 30
`11-12, 19,
`22-23, 30
`
`1, 11-12,
`19, 22-23,
`30
`
`1
`
`11-12, 19,
`22-23, 30
`
`1
`
`1
`
`11-12, 19,
`22-23, 30
`
`11-12, 19,
`22-23, 30
`
`Little-1994 (1) Little, T.D.C., et al., “Client-Server Metadata
`Management for the Delivery of Movies in a Video-
`On-Demand System,” First International Workshop on
`Services in Distributed and Networked Environments,
`June 27-28, 1994 (“Little-1994”); and
`(2) Postel, J., Internet Protocol, RFC 791 (Sept. 1981)
`(“RFC 791”)
`(1) Little-1994;
`(2) RFC 1541; and (3) RFC 791
`(1) Little-1994; and
`(2) Little, T.D.C., et al., “A Digital On-Demand Video
`Service Supporting Content-Based Queries,” Proc. 1st
`ACM International Conference on Multimedia, August
`1993 (“Little-1993”)
`(1) Little-1994; and
`(2) Pinard
`
`
`
`
`
`
`
`
`
` Page 7
`
`
`
`
`
`
`
`As shown above, each invalidity contention is based on (1) the Microsoft
`
`Manual; (2) VocalChat; or (3) Little-1994. As more fully discussed below, these
`
`three references are missing significant limitations required by the’704 claims:
`
` The Microsoft Manual and VocalChat lack a query into the on-line status of
`
`a process. Each reference establishes connections with any computer or
`
`process that has previously been registered in its system, rather than
`
`determining whether that process is currently on-line. As will be shown
`
`below, a previous registration of a process does not indicate the current on-
`
`line status of that process.
`
` Petitioner has admitted that Little-1994 should not be considered, because its
`
`first proposed construction for query is unsupported, and the Board should
`
`not consider Little-1994 if it does not adopt this unsupported construction.
`
` Little-1994 only discloses communications between a single process and a
`
`server, as opposed to communications between the required first and second
`
`process.
`
` VocalChat and Little-1994 teach static addressing, and Petitioner has not
`
`established the obviousness of combining either reference with RFC 1541.
`
`Petitioner’s invalidity contentions are based in large part on flawed and
`
`unsupported claim construction proposals and a selective reading of the prior art,
`
`as described below.
`
`
`IV.
`
`LEGAL STANDARD
`
`The applicable standard for instituting an inter partes review is set forth at
`
`35 U.S.C. § 314(a), which provides in relevant part:
`
`
`
` Page 8
`
`
`
`
`
`THRESHOLD—The Director may not authorize an inter partes
`
`review to be instituted unless the Director determines that . . . there is
`
`a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.
`
`To anticipate a claim, the prior art reference “must disclose each and every
`
`limitation of the claimed invention.”11 To invalidate a claim by obviousness based
`
`on multiple references, the prior art still must disclose all the limitations of the
`
`claims.12 Moreover, “a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art ... [I]t can be important to identify a reason that would have prompted
`
`a person of ordinary skill in the relevant field to combine the elements in the way
`
`the claimed new invention does.”13
`
`
`11 Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed.
`
`Cir. 2010).
`
`12 See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`(supporting a finding of no obviousness when “no combination of the prior art,
`
`even if supported by a motivation to combine, would disclose all the limitations of
`
`the claims”); see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`
`713 F.3d 1369, 1375 (Fed. Cir. 2013).
`
`13 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`
`
` Page 9
`
`
`
`
`
`ARGUMENT
`
`
`I.
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’704 PATENT
`
`In an inter partes review, claims are to be given their broadest reasonable
`
`interpretation in light of the specification.14 This broadest reasonable interpretation
`
`of the claims must be “consistent with the specification.”15 A claim construction
`
`may be “unreasonably broad” if it is not “read in light of the specification and
`
`teachings in the underlying patent.”16
`
`Given this standard, Petitioner has proposed a number of flawed claim
`
`constructions. For purposes of this Preliminary Response and as further described
`
`below, Patent Owner focuses on two key limitations, which are most relevant to
`
`the prior art asserted by Petitioner. First, Petitioner has proposed incorrect
`
`constructions for “transmitting to the server, a query as to whether the second
`
`process is connected to the computer network” / “querying the server as to the on-
`
`line status of the first called process.” Moreover, Petitioner has proposed an
`
`improper construction for “connected to the computer network” / “on-line,” which
`
`
`14 37 C.F.R. § 42.100(b).
`
`15 In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (quoting In re
`
`Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
`
`16 In re Suitco, 603 F.3d at 1260.
`
`
`
` Page 10
`
`
`
`
`
`is part of the above limitations. Petitioner has improperly argued that “connected
`
`to the computer network” may be established by previous registration of a process,
`
`and effectively construed the above limitations as a query into registration rather
`
`than the required query into on-line status of a process. Second, Petitioner’s
`
`proposed construction for “program code for transmitting to the server a network
`
`protocol address received by the first process following connection to the computer
`
`network” eliminates the dynamic addressing requirement of the limitation.
`
`A. Each Challenged Claim Requires a Query into the On-Line
`Status of a Second Process, Rather than a Query into
`Whether a Process Has Registered with a Server
`
`At issue in the Petition are claims 1, 11-12, 19, 22-23, and 30. The three
`
`independent claims – claims 1, 11, and 22 – require a query into the on-line status
`
`of a second process, not just a query into whether a computer or process is
`
`registered with a server. As identified below, the claim language of the
`
`independent claims requires “transmitting, to the server, a query as to whether the
`
`second process is connected to the computer network,” “querying the server as to
`
`the on-line status of the first called process,” or “querying the server as to the on-
`
`line status of the first callee process.”17 Therefore, each claim requires a query
`
`
`17 ’704 Patent at 11:12-14; Ex. 2003, ’416 Reexamination Certificate at 16 (1:46-
`
`47, 2:37-38).
`
`
`
` Page 11
`
`
`
`
`
`whether the computer program is on-line, and not merely whether the network
`
`address of the computer program, or the computer itself, is registered in a server.
`
`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 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;
`
`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.
`
`
`Independent claim 1 requires “a query as to whether the second process is
`
`connected” and receiving a response to the query “when the second process is
`
`connected” for the purpose of “establishing a point-to-point communication link”
`
`between the two processes. Claim 1 also identifies that the process is a computer
`
`program (“A computer program product for use with a computer system, the
`
`computer system executing a first process”).
`
`
`
` Page 12
`
`
`
`
`
`Claim 1118 In a computer system, a method for establishing a point-to-point
`communication link from a caller process to a callee process over a
`computer network, the caller process having a user interface and
`being operatively connectable to the callee process and a server over
`the computer network, the method comprising the steps of:
`A. providing a user interface element representing a first
`communication line;
`B. providing a user interface element representing a first callee
`process; and
`C. establishing a point-to-point communication link from the
`caller process to the first callee process, in response to a user
`associating the element representing the first callee process with the
`element representing the first communication line, wherein step C
`further comprises the steps of:
`
`c.1 querying the server as to the on-line status of the
`first callee process; and
`
`c.2 receiving a network protocol address of the first
`callee process over the computer network from the server.
`
`
`Independent claim 11 requires “querying the server as to the on-line status of
`
`the first callee process,” for the purpose of “establishing a point-to-point
`
`communication link from the caller process to the first callee process.”
`
`
`
`
`18 Challenged claims 12 and 19 depend from claim 11 and thus include the
`
`limitation of “querying the server as to the on-line status of the first called
`
`process.” See Ex. 2003, ’416 Reexamination Certificate at 16 (1:49-52, 2:14-16).
`
`
`
` Page 13
`
`
`
`
`
`Claim 2219 A computer program product for use with a computer system
`comprising:
`a computer usable medium having program code embodied in
`the medium for establishing a point-to-point communication link
`from a caller process to a callee process over a computer network,
`the caller process having a user interface and being operatively
`connectable to the callee process and a server over the computer
`network, the medium further comprising:
`program code for generating an element representing a
`first communication line;
`program code for generating an element representing a
`first callee process;
`program code, responsive to a user associating the
`element representing the first callee process with the element
`representing the first communication line, for establishing a point-
`to-point communication link from the caller process to the first
`callee process, wherein the program code for establishing a point-to-
`point communication link further comprises:
`program code for querying the server as to the
`on-line status of the first callee process; and
`
`
`program code for receiving a network protocol
`address of the first callee process over the computer network from
`the server.
`
`
`Independent claim 22 requires “querying the server as to the on-line status of
`
`the first callee process,” for the purpose of “establishing a point-to-point
`
`communication link from the caller process to the first callee process.”
`
`As identified above, each challenged independent claim therefore requires a
`
`query into whether the computer program is on-line, not merely whether the
`
`
`19 Challenged claims 23 and 30 depend from claim 22 and thus include the
`
`limitation of “querying the server as to the on-line status of the first callee
`
`process.” See Ex. 2003, ’416 Reexamination Certificate at 16 (2:42-44, 2:63-65).
`
`
`
` Page 14
`
`
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`
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`network address of the computer program, or the computer itself, is registered in
`
`the database.
`
`1.
`
`Petitioner’s Suggestion That “On-Line” Means
`“Registered with a Server” Has No Basis in the
`Claims or Specification
`
`Petitioner acknowledged that the “broadest reasonable construction” is the
`
`proper standard to apply in an inter partes review, and that under such a standard,
`
`“connected to the computer network” and “on-line” should be construed as “on-
`
`line, e.g., registered with a server.”20 This definition is not based upon the
`
`specification, but instead misconstrues a prior Board Decision to Institute in the
`
`pending inter partes review involving the ’704 Patent.
`
`In the pending inter partes review, the Board agreed, for at least the
`
`purposes of its Decision to Institute, that the ’704 Patent specification supports a
`
`construction of “connected to the computer network” as “being on-line.”21 Patent
`
`Owner agrees that the claims require and the specification confirms that
`
`“connected to the computer network” requires that a process “is on-line.” The
`
`Board, however, then stated that “being ‘on-line,’ [] can be done by registering an
`
`address with the server.”22
`
` Patent Owner respectfully disagrees with the Board’s
`
`
`20 Petition at 20.
`
`21 Ex. 2007, IPR2013-00246, Paper No. 11, Decision to Institute at 5-6.
`
`22 Ex. 2007, IPR2013-00246, Paper No. 11, Decision to Institute at 6.
`
`
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` Page 15
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`
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`
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`conclusion that registration of a process can satisfy the ’704 Patent’s on-line
`
`requirement. As will be demonstrated below, the ’704 Patent does not teach that
`
`previous registration of a process is an indication of the current on-line status of
`
`that process. Therefore, the Board erred in determining that past registration of a
`
`process can be used in determining whether or not a process is currently on-line or
`
`connected to the computer network.
`
`Petitioner has adopted this same flawed construction, proposing that “on-
`
`line” be construed as “on-line, e.g., registered with a server.” The reason for
`
`Petitioner’s construction is that the cited prior art only teaches initial registration,
`
`but does not teach determination of on-line status. In fact, the asserted prior art
`
`demonstrates that registration is a one-time, initial enrollment of a process or
`
`computer within a system. Specifically, the Microsoft Manual states that a
`
`computer “registers its name and IP address on the network during system
`
`startup.”23 Similarly, VocalChat specifies that its “Address Book contains the
`
`names of all the network users who have VocalChat installed,” and that “[t]his
`
`information is set during installation.”24
`
`In both references, the server only relies upon this previous registration to
`
`establish connections to a second computer or process. In the Microsoft Manual,
`
`
`23 Ex. 1014, Microsoft Manual at 62 (emphasis added).
`
`24 Ex. 1023, User Guide at 28 (emphasis added).
`
`
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` Page 16
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`
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`“[a]ny name-to-IP address mapping registered with a WINS server can be
`
`provided reliably as a response to a name query.”25 In VocalChat, “users can open
`
`the Address Book…and access any of the users listed.”26 Because these
`
`connections are based on initial registration, rather than current on-line status, each
`
`reference cautions that the requested computer or process may not be connected to
`
`the network at the time of the query. Specifically, in the Microsoft Manual, “a
`
`mapping in the database does not ensure that the related device is currently
`
`running,”27 and in VocalChat, calls are made “even when the user is away and his
`
`system is not working.”28 Registration in a system thus does not indicate whether
`
`a process is currently on-line, and a response based on the previous registration of
`
`a process does not convey information regarding whether that process is on-line at
`
`the time of the query.
`
`The ’704 Patent, in contrast to the references mentioned above, require
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