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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SIPNET EU S.R.O.
`Petitioner
`
`v.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, 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. Unassigned
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`
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`SONY EXHIBIT 1007- Page 1
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`I.
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`II.
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`
`Formalities ....................................................................................................... 2
`
`A.
`
`B.
`
`C.
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`Real Party in Interest ............................................................................. 2
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`Related Matters ...................................................................................... 3
`
`Fee ......................................................................................................... 3
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`D. Designation of Lead Counsel and Request for
`Authorization ......................................................................................... 3
`
`E.
`
`F.
`
`G.
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`Service Information ............................................................................... 4
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`Power of Attorney ................................................................................. 4
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`Standing ................................................................................................. 4
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`III.
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`Statement of Relief Requested ........................................................................ 4
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`IV. Claim Construction .......................................................................................... 5
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`V.
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`Full Statement of the Reasons for the Relief Requested ................................. 8
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`VI. Claim Charts .................................................................................................. 33
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`VII. Conclusion ..................................................................................................... 59
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`
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`
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`65352612V.1
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`i
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`SONY EXHIBIT 1007- Page 2
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`LIST OF EXHIBITS
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`Exhibit 1001: U.S. Patent No. 6,108,704 (“the ‘704 patent”)
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`Exhibit 1002: Form PTO-SB/42 (“IDS”)
`
`Exhibit 1003: NetBIOS “Technical Standard – Protocols for X/Open PC
`
`Interworking: SMB, Version 2” [includes Appendix F “RFC1001, Protocol
`
`Standard for a NetBIOS Service on a TCP/UDP Transport: Concepts and
`
`Methods” & Appendix G “RFC1002, Protocol Standard for a NETBIOS Service
`
`on a TCP/UDP Transport: Detailed Specifications.”] (“NetBIOS”)
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`
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`Exhibit 1004: Windows NT 3.5 "TCP/IP User Guide, September 21, 1994
`
`(“WINS”)
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`
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`Exhibit 1005: http://en.wikipedia.org/wiki/Windows_NT_3.5 [Wikipedia
`
`entry establishing Sept. 21, 1994 as release date of Windows NT 3.5] (“WINS
`
`Release Date”)
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`
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`Exhibit 1006: Susan Thomson, et al., DNS Dynamic Updates, IETF
`
`DNSIND Working Group (Jul. 14, 1994) (DNS 1)
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`
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`Exhibit 1007: Susan Thomson, Yakov Rekhter, et al., DNS Dynamic Updates,
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`Foils (July 1994) (DNS 2)
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`ii
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`SONY EXHIBIT 1007- Page 3
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`Exhibit 1008: Claim Construction Order in ICT v. Vivox and Stalker (“Claim
`
`Construction Order”)
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`
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`Exhibit 1009: Joint Claim Construction Chart in Net2Phone Inc. v. eBay Inc.,
`
`Skype Technologies, et al. (“Claim Construction Chart”)
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`
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`Exhibit 1010: Digital Equipment Corporation Patent 5,483,652 , filed Jan 24,
`
`1994 (“DEC ‘652”)
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`
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`
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`Exhibit 1011: Ryan, “LAN Manager 2.0," 1990 (“Messenger - Ryan”)
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`Exhibit 1012: Robert Cowart, et al. “Windows NT Unleashed”, March 1994
`
`(“Messenger - NT Unleashed”) [Exhibits 1011 & 1012 together are “Messenger”].
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`
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`Exhibit 1013: P. Mockapetris, “RFC1034. DOMAIN NAMES - CONCEPTS
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`AND FACILITIES” (“DNSOrig”).
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`
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`Exhibit 1014: “VocalTec ware lets users make voice calls over ‘Net,”
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`Network World, Feb. 13, 1995 (“VocalTec”).
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`Exhibit 1015: Taligent Patent 5,566,278 (“Taligent ‘278”).
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`iii
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`SONY EXHIBIT 1007- Page 4
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`Introduction
`Petition Eligibility. Through counsel, real party in interest Sipnet EU
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`S.R.O. (“Petitioner”) hereby petitions for initiation of inter partes review of U.S.
`
`Patent No. 6,108,704 (“the ‘704 Patent”), with an assignment from the previous
`
`owners to Innovative Communications Technologies, Inc. (all owners collectively
`
`referred to as “Patent Owner”), recorded in the U.S. Patent Office Database. The
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`‘704 Patent issued on August 22, 2000, more than nine months prior to the filing of
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`this petition. The ‘704 Patent is currently asserted in a co-pending litigation,
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`against third parties not affiliated with petitioner. See Exhibit 1006. Petitioner has
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`not been served with a complaint alleging infringement of the ‘704 Patent. Thus,
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`the ‘704 Patent is eligible for inter partes review.
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`Summary. The ‘704 Patent claims are directed to computers registering an
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`internet address with a name server over a network (e.g., Internet) so they can
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`initiate point-to-point communication (e.g., text messaging).
`
` In previous
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`prosecution, Patent Owner acknowledged that such registration and point-to-point
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`communication is in the prior art, but claimed that determining that the computers
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`are online is new, by providing dynamic addressing that tracks new addresses for
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`the same computer each time it connects to the network. In particular, the
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`NetBIOS prior art submitted in the ex-parte reexamination was argued to not have
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`dynamic addressing.
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`1
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`SONY EXHIBIT 1007- Page 5
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`The WINS prior art (not previously considered) was designed EXPLICITLY
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`to provide a NetBIOS "name server" function in a DHCP (dynamic addressing)
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`environment, and thus teaches what is claimed, alone or in combination with
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`NetBIOS.
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`Patent Owner has previously argued that prior art only shows addresses
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`being registered, not “dynamically” determining that a process (program) is
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`“online.” However, the only way taught in the ‘704 Patent to determine if a
`
`process is online is if it has provided an address to the name server. Patent Owner
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`has also argued that prior art shows registering a computer, not a process
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`(program) on that computer. However, NetBIOS and WINS contemplated
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`registering processes, and the submitted Messenger prior art is an example of such
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`a process.
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`In addition, other combinations of prior art teach the invention, with its
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`dynamic nature, as described below.
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`
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`Formalities
`A. Real Party in Interest
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`The real party in interest, Sipnet EU S.R.O. is a limited liability Czech
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`company with its headquarters and principal business address at T. G. Masaryka,
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`859/18, 360 01 Karlovy Vary, Česká republika.
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`
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`2
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`SONY EXHIBIT 1007- Page 6
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`B. Related Matters
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`The ‘704 Patent has been involved in ex-parte reexamination No.
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`90/010,416 and the following lawsuits:
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`Net2Phone, Inc. v. eBay Inc., Skype Inc., et al., Civil Action No. 06-2469
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`(D. New Jersey, filed 6-1-2006) [the “Skype litigation”]
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`Innovative Communications Technologies, Inc. v. Stalker Software, Inc.,
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`etc. U.S. District Court, Docket No. 2:12-cv-00009-RGD-TEM; v. ooVoo, LLC,
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`Docket No. 2:12-cv-00008-RGD-DEM; and v. Vivox, Inc., Docket No. 2:12-cv-
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`00007-RGD-LRL (all E.D. Virginia, all filed 1-4-2012) [collectively the “Stalker
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`litigation”]
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`
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`C.
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`Fee
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`This petition for inter partes review is accompanied by a payment of
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`$24,200 and requests review of claims 1-7 and 32-42 of the ’704 patent. See 37
`
`C.F.R. § 42.15. Thus, this petition meets the fee requirements under 35 U.S.C.
`
`§ 312(a)(1).
`
`D. Designation of Lead Counsel and Request for Authorization
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`Lead Counsel for Petitioner is Paul C. Haughey, U.S. Patent and Trademark
`
`Office Registration # 31,836, of Kilpatrick Townsend & Stockton LLP. Back-up
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`3
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`SONY EXHIBIT 1007- Page 7
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`counsel for Petitioner is Michael T. Morlock Registration # 62,245 of Kilpatrick
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`Townsend & Stockton LLP.
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`E.
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`Service Information
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`As identified in the attached Certificate of Service, a copy of the present
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`petition, in its entirety, is being served to the address of the attorney or agent of
`
`record. Sipnet EU S.R.O. may be served at its counsel, Kilpatrick Townsend &
`
`Stockton LLP, Two Embarcadero Center, Eighth Floor, San Francisco, CA 94111-
`
`3834.
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`F.
`
`Power of Attorney
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`A power of attorney is being filed with the designation of counsel in
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`accordance with 37 C.F.R. § 42.10(b).
`
`G.
`
`Standing
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`The Petitioner certifies that the ‘704 patent is available for inter partes
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`review and that the Petitioner is not barred or estopped from requesting an inter
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`partes review challenging the patent claims on the grounds identified in this
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`petition.
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`
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 311, this petition requests cancellation of claims 1-7
`
`and 32-42 as being anticipated under 35 U.S.C. § 102(b) by each of the following
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`references:
`
`
`
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`4
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`SONY EXHIBIT 1007- Page 8
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`• Messenger
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`• NetBIOS
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`• WINS
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`• DNS (DNS 1, 2, Orig.)
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`In addition, this petition requests cancellation of claims 1, 2 and 4-6 as being
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`anticipated under 35 U.S.C. § 102(b) by DEC ‘652.
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`In the alternative, this petition requests cancellation of claims 1-7 and 32-42
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`as being obvious under 35 U.S.C. § 103 over the combination of Messenger and
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`NetBIOS or WINS, NetBIOS and WINS, DNS Orig., DNS1 and DNS 2, or DNS
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`(Orig, 1, 2) and any one of VocalTec, Taligent ‘278, ‘704 Patent admitted prior art
`
`and DEC ‘652.
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`Claim Construction
`In inter partes review, claim terms are interpreted under a “broadest
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`reasonable construction” standard. See 37 C.F.R. § 42.100(b). In compliance with
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`37 C.F.R. § 1.42.104(b)(4) and for the purposes of this proceeding, Petitioner
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`states that in general the claim terms are presumed to take on their ordinary and
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`customary meaning.
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`“Connected to the computer network”/”online.” This was not construed by
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`the court in any of the litigations. Ex. 1007 is the Joint Claim Construction Chart of
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`5
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`SONY EXHIBIT 1007- Page 9
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`the parties in the Skype litigation, showing the side-by-side proposed claim
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`constructions of
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`the parties.
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` The plaintiff’s proposed construction of
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`“connected/online” is simply “online.”
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`Claim terms are generally given their ordinary and customary meaning, as
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`modified by extrinsic evidence (the patent and file history) and extrinsic evidence.
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`Dictionary definitions of “online” merely say “connected to a network” (see, e.g.,
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`http://www.merriam-webster.com/dictionary/online), which
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`is consistent with
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`Patent Owner’s proposed interpretation, which treats “connected” and “online” as
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`equivalent. As described in the ‘704 patent, this is determined by examining
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`whether a computer has registered with the name server (see Col. 5, lines 24-33:
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`“Upon the first user initiating the point-to-point Internet protocol when the first
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`user is logged on to Internet 24, the first processing unit 12 automatically
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`transmits its associated E-mail address and its dynamically allocated IP address to
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`the connection server 26. The connection server 26 then stores these addresses in
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`the database 34 and timestamps the stored addresses using timer 32. The first user
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`operating the first processing unit 12 is thus established in the database 34 as an
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`active on-line party available for communication using the disclosed point-to-point
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`Internet protocol.”).
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`6
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`SONY EXHIBIT 1007- Page 10
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`“Identifier of a process.” This was not construed by the court in any of the
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`litigations. Patent Owner, in its claim construction brief in the Skype litigation,
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`said it was an email address or other distinguishing name.
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`The following terms were construed as set forth in the Claim Construction
`
`Order of Ex. 1006 from the Stalker litigation:
`
`“Process” is “a running instance of a computer program or application.”
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`“Point to point” is “communications between two processes over a computer
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`network that are not intermediated by a connection server.”
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`“Dynamically assigned network protocol address” is “a network protocol
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`address assigned to a host for a limited period of time (or until the host explicitly
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`relinquishes the address).”
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`Means plus function elements.
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`The only “means plus function” element in the contested claims is the
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`following element of claim 2:
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`means, responsive to a query from the first process, for determining the on-
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`line status of the second process and for transmitting a network protocol address
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`of the second process to the first process in response to a positive determination of
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`the on-line status of the second process.
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`The ‘704 Patent specification describes connection server 26 storing
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`addresses in database 34 as the elements which establish the on-line status (Col. 5,
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`7
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`SONY EXHIBIT 1007- Page 11
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`lines 25-37). The response to a query about online status by server 26 is described
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`in Col. 5, lines 55-67.
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`The interpretation and/or construction of the claims in the ‘704 patent
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`presented either implicitly or explicitly herein should not be viewed as
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`constituting, in whole or in part, Petitioner’s own interpretation and/or construction
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`of such claims, but instead should be viewed as constituting an interpretation
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`and/or construction of such claims as may be raised by Patent Owner or the Office
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`through a broadest reasonable claim construction. Petitioner does not agree with
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`Patent Owner’s own interpretation of the claims, and expressly reserves the right to
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`present other interpretations of any of the ‘704 patent claims at a later time, which
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`interpretation may differ, in whole or in part, from that presented herein.
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`
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`Full Statement of the Reasons for the Relief Requested
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`Summary
`
`The below chart summaries claim 1 of the ‘704 Patent. The other
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`independent claims are similar, and the dependent claims do not add any novel
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`features. As noted earlier, Patent Owner acknowledges that the prior art shows
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`registration and point-to-point communication, but asserts that determining online
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`status (dynamic addressing) is new.
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`“Permanent IP addresses of users and devices accessing the Internet readily
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`support point-to-point communications of voice and video signals over the
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`8
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`SONY EXHIBIT 1007- Page 12
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`Internet. For example, realtime video teleconferencing has been implemented
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`using dedicated IP addresses and mechanisms known as reflectors. Due to the
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`dynamic nature of temporary IP addresses of some devices accessing the Internet,
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`point-to-point communications in realtime of voice and video have been generally
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`difficult to attain.” (‘704 Patent, col. 1, lines 48-56).
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`Plain English Summary
`Software for point-to-point
`communication over the Internet
`or other network.
`
`Computer code.
`
`A 1st computer connects to the
`network (e.g., Internet), is
`assigned a network address, and
`provides that address to an
`address server.
`The 1st computer asks the
`address server whether a 2nd
`computer is online.
`The 2nd computer also provides
`its address to the address server
`when it connects to the network
`(Internet).
`The 1st and 2nd computers
`establish point-to-point
`communication using the address
`of the 2nd computer.
`
`Patent 6,108,704
`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.
`
`
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`9
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`SONY EXHIBIT 1007- Page 13
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`It is important to note that the only way described in the ‘704 Patent to
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`“dynamically” determine that a process (computer) is online is by determining if it
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`has provided an address to the name server. In previous proceedings, patent owner
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`has tried to obfuscate and shift the focus by arguing the prior art doesn’t show
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`anything more, but the ‘704 Patent also doesn’t show anything more. The prior art
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`can’t be held to a higher standard of enablement than the patent itself.
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`Overview of invalidity analysis
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`NetBIOS. NetBIOS (Network Basic Input/Output System) was originally
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`developed for IBM's PC-Network in the early 1980s. NetBIOS is a software
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`interface that allows applications on different computers to communicate within a
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`computer network, such as a local area network or the Internet. In general,
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`NetBIOS enables point-to-point communications between two or more "point-to-
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`point" nodes through a dedicated directory service provided by a "NetBIOS Name
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`Server."
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`The claims of the ‘704 Patent are directed to learning the network address of
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`another party for a point-to-point communication (e.g., video call). A network
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`name server keeps this data, and provides the numerical address in response to a
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`query for a party. In the ex-parte reexaminations, it was shown that the prior art
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`NetBIOS did this, but the Patent Owner argued that the invention was doing this
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`10
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`SONY EXHIBIT 1007- Page 14
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`for dynamic addresses (e.g., where a different address is assigned each time a node
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`goes “online”).
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`The Patent Examiner agreed that NetBIOS provides the same address
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`determining mechanism as described in the patent, but an expert declaration argued
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`that “bringing dynamic addressing into a NetBIOS type system would create a new
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`set of obstacles that would need to be solved that are not obvious in view of the
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`combination of references.” What the expert failed to mention was that the
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`obstacles had already been overcome, and they had nothing to do with registering
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`an address.
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`WINS. The WINS (Windows Internet Name Service) prior art (which was
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`not considered in the ex-parte reexaminations) is the Microsoft implementation of
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`a NetBIOS "Name Server". The WINS server was designed EXPLICITLY to
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`provide a NetBIOS "name server" function in a DHCP (dynamic addressing)
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`environment. Thus, it is clearly obvious to combine the dynamic addressing of
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`WINS with NetBIOS to produce the invention, and this was in fact done.
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`Messenger. OS/2 LAN Manager 2.0 released in 1990, and Microsoft
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`Windows NT (including Windows NT 3.5 released in 1994) came with the
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`Messenger Service (which was not considered in the ex-parte reexaminations).
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`Messenger was an application that allowed point-to-point communication using
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`NetBIOS and WINS. The Messenger Service process detects when the computer
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`11
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`SONY EXHIBIT 1007- Page 15
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`connects to the network ("gets online") and sends the NetBIOS name registration
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`request (sent to the WINS name server in a WINS environment). When a message
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`is to be exchanged, a query is sent to the WINS name server to find out if the
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`destination is online and to learn its network address. If the destination is online, a
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`message is sent to the retrieved network address. It is received with the
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`Messenger Service process on the receiving computer and displayed there in a pop-
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`up window. the claims of the ‘704 patent do not require two-way communication,
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`but even so, it would be obvious to enable a response, as received data packets
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`include the sender’s network protocol address.
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`Dynamic DNS. Dynamic DNS (Domain Name Service) is essentially the
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`same as WINS Name Server for NetBIOS, but for the standard Internet Domain
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`Name System. Dynamic DNS allows a client system to connect to the DNS server
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`and to update its DNS records, such as linking the system identifier (domain name)
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`with the assigned IP address. The Dynamic DNS drafts were submitted to the
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`Patent Office during the ex-parte reexamination, but were buried in the 100s of
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`submitted references and were never pointed out to the Examiner nor commented
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`on by the Examiner. It is clear the Examiner did not read it. Further, 37 CFR 1.2
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`requires that all Office business be transacted in writing. Thus, the Office cannot
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`presume that a prior art reference was previously relied upon or discussed in a
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`prior Office proceeding if there is no basis in the written record to so conclude
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`12
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`SONY EXHIBIT 1007- Page 16
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`other than the examiner’s initials or a check mark on a PTO 1449 form, or
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`equivalent, submitted with an information disclosure statement.
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`“Online” simply means registered. The showing of dynamic addressing by
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`WINS or DNS is sufficient to show determining when a process is online. While
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`claim 1 refers to “when the second process is connected to the network,” some of
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`the claims (e.g., claim 2) use the term "online." The only description in the ‘704
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`Patent of how it is determined that a process is online is that it has registered, since
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`the process must go online in order to get an assigned address and register it (i.e.
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`there is a record in the name server database and this record has not expired).
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`Thus, any argument that “online” means more than this would make the claims
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`invalid as not enabled. Thus, prior art (e.g., WINS, dynamic DNS), which shows a
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`registration that hasn’t been deleted, in fact shows determining the process is
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`online as described in the ‘704 Patent.
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`Per the ‘704 Patent, the process is presumed to stay online until it is de-
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`registered. The patent does describe de-registering when a process logs off, but
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`this simply shows when a process is offline, not online. The ‘704 Patent teaches
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`that client processes may send an "off-line message" to the connection or name
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`server upon logout, which results in the client's directory entry being deleted from
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`the server's database or being flagged as off-line ('704 patent, col. 6:6-16). The
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`patent also describes a time-stamp, but this simply says when it registered and was
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`13
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`SONY EXHIBIT 1007- Page 17
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`
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`online, not whether it continues to be online. Dependent claims 3 and 7 add the
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`time stamp and off-line status limitations, thus these clearly aren’t required for the
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`connection or online status of the independent claims. Also, this is consistent with
`
`Patent Owner’s proposed claim construction, as well as comments in the ‘704
`
`Patent and file history, e.g.:
`
` “…when the first user is logged on to Internet … transmits its …
`
`dynamically allocated IP address…. The connection server 26 then stores these
`
`addresses in the database 34 and timestamps the stored addresses…. The first user
`
`… is thus established in the database 34 as an active on-line party available for
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`communication using the disclosed point-to-point Internet protocol.” (Col. 5, lines
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`24-33 – full quote under claim construction above)
`
`“As discussed previously, the reporting or “logging-in” of a client process
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`with an address directory to provide the server with the current network protocol
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`address at which the process can be located is not shown in the prior art.” [March
`
`4, 1999 amendment, p. 16, lines 7-10].
`
`Patent Owner has argued that the prior art doesn’t show more than the ‘704
`
`Patent about how to determine a process is online. Throughout the ex-parte
`
`reexamination and the various litigations, Patent Owner has adopted a strategy of
`
`trying to divert attention and make things seem more complex than they are. The
`
`declaration of expert Ketan Mayer-Patel, for example, says the NetBIOS prior art
`
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`14
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`SONY EXHIBIT 1007- Page 18
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`“active” status doesn’t mean it is online, and that the NetBIOS LISTEN doesn’t
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`mean a process is online. These extra steps are irrelevant, since the ‘704 patent
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`doesn’t teach anything beyond registration as indicating online status. What is
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`sufficient for enablement of the ‘704 Patent is sufficient for the prior art.
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`Other Patent Owner arguments. The Patent Owner has made a series of
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`other arguments in the prior reexamination and the litigations. None of the
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`litigations has proceeded to judgment, and thus no judge or jury has agreed with
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`any of these arguments. The common thread is an argument that the prior art
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`doesn’t show more than the ‘704 Patent itself claims or shows. In particular:
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`1. NetBIOS and Dynamic DNS are protocols/interfaces, not applications.
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`True but irrelevant. Both are clearly directed to enabling dynamic addressing and
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`point to point communications, and describe the use by applications, thus enabling
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`applications. The only description in the ‘704 Patent claims is how the application
`
`uses such a protocol/interface, not other aspects of an application. Also,
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`Messenger clearly is such an application.
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`2. NetBIOS and Dynamic DNS register a computer, not an application
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`running on the computer. This is just what the ‘704 Patent does. The claims don’t
`
`describe anything more than registering the computer. There is no recitation of
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`any lower level address information. The claims refer to registering a “network
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`15
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`SONY EXHIBIT 1007- Page 19
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`protocol address.” As noted above under claim construction, the one court to
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`construe terms said this was the address of the host, not an application on the host.
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`The ‘704 Patent does variously describe a session number and sockets,
`
`which could correspond to an application, as opposed to a process. However, this
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`is information exchanged between applications, not registered with the network
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`address. As noted in the ‘704 Patent, this was a standard technique in the prior art:
`
`After the initiation of either the primary or the secondary point-to-point
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`Internet protocols described above in conjunction with FIGS. 1-2, the point-to-
`
`point communication link over the Internet 24 may be established as shown in
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`FIGS. 3-4 in a manner known in the art. (Col. 7, lines 60-64).
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`The Windows Messenger service registers both the computer name (such as
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`"Joe's Desktop"), and the user name (such as "Joe T-Rex Smith"), and can register
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`any other unique name using NetBIOS name server such as WINS.
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`While the DNS "A-records" are originally designed to name hosts, there is
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`no requirement to do so, and there are special domains which are designed for a
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`particular application. For example,
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`there can be a DNS A-record
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`"joe.company.com" which is a generic A-record for Joe's computer. At the same
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`time, the DNS name "joe-trex-smith.voipcompany.com" name can be registered by
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`a VoIP application (manufactured by some VoIPCompany, Inc.) on the
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`"voipcompany.dom."
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`16
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`SONY EXHIBIT 1007- Page 20
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`With respect to Messenger, it clearly is a registered application, not a
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`computer.
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`3. NetBIOS was limited to a LAN, and only later expanded to a WAN with
`
`limited success. There is no limitation on the size of the network in the ‘704 Patent
`
`claims.
`
`4. All addresses may not be available in NetBIOS or Dynamic DNS. Patent
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`Owner has variously argued that NetBIOS allows different “scopes” where a
`
`computer on a different scope may not be discoverable. There is nothing in the
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`‘704 Patent claims specifying any requirement that all computers be reachable, or
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`any speed requirement, or any mechanism for accomplishing that.
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`In any event, in the '704 Patent, if there are several groups of applications
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`with separate "connection servers", there is no teaching of how the applications in
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`different groups can locate each other. In contrast, both NetBIOS and Dynamic
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`DNS provide means for the processes employing the same or different Name
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`Servers to locate each other.
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`5. The Patent Owner argued that DNS database changes may not be
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`propagated fast enough. However, there is no requirement under patent law for
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`prior art to work all the time, or in any contemplated situation. Also, DNS
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`propagation takes place only when so called “secondary” or “caching” DNS
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`servers are involved. When all registration information is stored with a single name
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`17
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`SONY EXHIBIT 1007- Page 21
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`server (as described in the ‘704 Patent and its preferred embodiments), no DNS
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`change propagation takes place, and all changes are effective immediately.
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`A. Claims 1-7 and 32-42 should be cancelled under 35 U.S.C. § 102 as
`anticipated by Messenger (Exhibits 1011 & 1012) or obvious from
`Messenger
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`Claim 1
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`A computer program product for use with a computer system, the computer
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`system executing a first process and operatively connectable to a second process
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`and a server over a computer network, the computer program product comprising:
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`Messenger Service discloses a computer program product for use with a
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`computer system. The Messenger Service is used to send a real-time message to
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`other users, computers, or messaging names on the network. If the message is sent
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`to a username, that user must be logged on and running the Messenger Service to
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`receive the message ("Messenger -NT Unleashed”, p. 678”)
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`a computer usable medium having program code embodied in the medium,
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`the program code comprising:
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`When started, the Messenger Service code (as any other executable
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`computer program code) is loaded into random access memory, which is a
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`computer usable medium, and executed by a computer processor.
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`program code for transmitting to the server a network protocol address
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`received by the first process following connection to the computer network;
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`18
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`SONY EXHIBIT 1007- Page 22
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`The Messenger Service application includes a program code which detects
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`when the computer connects to the network ("gets online") and sends the NetBIOS
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`name registration request (in the WINS environment, the name registration request
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`is sent to the WINS name server).
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`These name registration requests contain an identifier, and the service type
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`0x03 - "Messenger service", registering that process (as opposed to the entire
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`computer) with the NetBIOS Name Server (WINS), which plays the role of the
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`'704 "connection server".
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`program code for transmitting, to the server, a query as to whether the
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`second process is connected to the computer network;
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`The Messenger Service application includes program code which sends a
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`request to the NetBIOS Name Server (WINS), for the specified username and the
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`required service type (0x03 - messenger service).
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`program code for receiving a network protocol address of the second
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`process from the server, when the second process is connected to the computer
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`network;
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`If the NetBIOS server returns a positive response, that response contains the
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`address of the "service process."
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`19
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`SONY EXHIBIT 1007- Page 23
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`program code, responsive to the network protocol address of the second
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`process, for establishing a point-to-point communication link between the first
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`process and the second process over the computer network.
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`The Messenger Service application contains the "net send" program code
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`that uses NetBIOS to perform point-to-point communication with that process by
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`sending the specified message text data to that address.
`
`Claims 2-7 and 32-42 The corresponding and additional elements of these
`
`claims, are shown similarly to claim 1 above. Due to the page limit, these are not
`
`all set forth in the claim charts below to avoid repetition and save space.
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`B. Claims 1-7 and 32-42 should be cancelled under 35 U.S.C. § 103 as
`obvious over NetBIOS (Exhibit 1003) or WINS (Exhibit 1004) in
`view of Messenger (Exhibits 1011 & 1012)
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`Messenger shows the process (application) that connects to the Internet, and
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`either NetBIOS or WINS shows the name server. The claim charts indicate these
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`elements in all the claims.
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`Claim 1
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`Refer to the claim charts below for the claim language and corresponding
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`teachings of the prior art. As summarized in the chart above, claim 1 sets fort
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