`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________________________________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`_____________________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,108,704
`Case IPR No.: To Be Assigned
`_______________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,108,704
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`_______________________________________________
`
`
`
`
`
`Filed on behalf of Petitioner
`
`By: Michael N. Rader, Reg. No. 52,146
`
`Edmund J. Walsh, Reg. No. 32,950
`
`Randy J. Pritzker, Reg. No. 35,986
`WOLF, GREENFIELD & SACKS, P.C.
`600 ATLANTIC AVE.
`BOSTON, MA 02210
`(617) 646-8000
`
`
`
`

`

`
`
`I.
`
`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................ 1
`
`II. MANDATORY NOTICES ............................................................................... 5
`
`A. Real Parties-in-Interest ............................................................................... 5
`
`B. Related Matters ........................................................................................... 5
`
`C. Counsel and Service Information ............................................................... 7
`
`III. NOTICE OF FEES PAID ................................................................................. 7
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING ................................... 8
`
`V.
`
`IDENTIFICATION OF CHALLENGE UNDER 37. C.F.R. § 42.104(B)
`AND RELIEF REQUESTED ........................................................................... 8
`
`A. Background of the ‘704 Patent ................................................................... 8
`
`1. The Disclosure of the ‘704 Patent ...................................................... 8
`
`2. Prosecution History of the ‘704 Patent ............................................. 10
`
`B. Prior Post-Grant Proceedings Involving the ‘704 Patent ......................... 11
`
`1. The Prior Ex Parte Reexamination ................................................... 11
`
`2. Related Litigations ............................................................................ 11
`
`3. The Sipnet Inter Partes Review ....................................................... 12
`
`C. Patents and Printed Publications Relied Upon Herein ............................. 13
`
`1. Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”) (Ex. 1014) ..................................................... 13
`
`2. U.S. Patent No. 5,375,068 (“Palmer”) (Ex. 1015) ........................... 13
`
`3. The VocalChat References (Exs. 1021-25) ...................................... 14
`
`4. U.S. Patent No. 5,533,110 (“Pinard”) (Ex. 1016) ............................ 14
`
`5. Little et al., “Client-Server Metadata Management for the
`Delivery of Movies in a Video-On-Demand System,” 1st Intl.
`Workshop on Services in Distributed & Networked
`Environments, June 27-28, 1994 (“Little-1994”) (Ex. 1017) ........... 15
`
`6. Little et al., “A Digital On-Demand Video Service Supporting
`Content-Based Queries,” Proc. 1st ACM Intl. Conf. on
`Multimedia, Aug. 1993 (“Little-1993”) (Ex. 1018) ......................... 15
`
`7. Dynamic Host Configuration Protocol, RFC 1541 (Oct. 1993)
`(“RFC 1541”) (Ex. 1019) ................................................................. 15
`
`
`
`- i -
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`

`

`
`
`8.
`
`Internet Protocol, RFC 791 (Sept. 1981) (“RFC 791”) (Ex.
`1020) ................................................................................................. 16
`
`D. Level of Ordinary Skill in the Art ............................................................ 16
`
`E. Statutory Grounds for Challenge .............................................................. 17
`
`F. Claim Construction ................................................................................... 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`“point-to-point communication link” (Claims 1, 11 and 22) ........... 18
`
`“program code for transmitting to the server a network protocol
`address received by the first process following connection to
`the computer network” (Claim 1) ..................................................... 18
`
`“network protocol address” (Claims 1, 11 and 22) .......................... 19
`
`“connected to the computer network” (Claim 1) / “on-line”
`(Claims 11 and 22) ............................................................................ 20
`
`“caller process” and “callee process” (Claims 11 and 22) ............... 21
`
`“transmitting, to the server, a query as to whether the second
`process is connected to the computer network” (Claim 1) /
`“querying the server as to the on-line status of the first called
`[sic: callee] process” (Claims 11 and 22) ......................................... 22
`
`“associating the element representing the first callee process
`with the element representing the first communication line”
`(Claims 11 and 22) ............................................................................ 24
`
`VI. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW .............. 26
`
`VII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1, 11-12, 19, 22-23, AND 30 ............. 26
`
`A. Ground 1: Claim 1 is anticipated under 35 U.S.C. § 102 by the
`Microsoft Manual. .................................................................................... 26
`
`B. Ground 2: Claims 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over the Microsoft Manual in view of Palmer. .................. 29
`
`C. Ground 3: Claims 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over the Microsoft Manual in view of Palmer and
`Pinard. ....................................................................................................... 35
`
`D. Ground 4: Claims 1, 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over the VocalChat References. ......................................... 37
`
`E. Ground 5: Claim 1 is obvious under 35 U.S.C. § 103 over the
`VocalChat References in view of RFC 1541. .......................................... 46
`
`
`
`- ii -
`
`

`

`
`
`F. Ground 6: Claims 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over the VocalChat References in view of Pinard. ............ 47
`
`G. Ground 7: Claim 1 is obvious under 35 U.S.C. § 103 over Little-
`1994 in view of RFC 791. ........................................................................ 48
`
`H. Ground 8: Claim 1 is obvious under 35 U.S.C. § 103 over Little-
`1994 in view of RFC 791 and RFC 1541. ................................................ 54
`
`I. Ground 9: Claims 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over Little-1994 in view of Little-1993. ............................. 55
`
`J. Ground 10: Claims 11-12, 19, 22-23, and 30 are obvious under 35
`U.S.C. § 103 over Little-1994 in view of Pinard. .................................... 60
`
`VIII. CONCLUSION ............................................................................................... 60
`
`
`
`
`
`
`
`- iii -
`
`

`

`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ePlus Inc.,
`Appeal No. 2010-007804, 2011 WL 1918594, *7 (B.P.A.I. May 18, 2011) .......14
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .............................................................................................36
`
`
`
`
`
`
`
`- iv -
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`

`

`
`
`TABLE OF EXHIBITS
`
`
`EXHIBIT
`
`DESCRIPTION
`
`1001 U.S. Patent No. 6,108,704
`
`1002
`
`File History for U.S. Patent No. 6,108,704
`
`1003
`
`File History for Reexamination Control No. 90/010,416
`
`1004 Declaration of Professor Mark E. Crovella
`
`1005 Declaration of Lior Haramaty
`
`1006
`
`1007
`
`1008
`
`Institution Decision in Sipnet EU S.R.O. v. Straight Path IP Group, Inc.,
`IPR No. 2013-00246 (P.T.A.B. Oct. 11, 2013)
`
`Petition for Inter Partes Review of U.S. Patent No. 6,108,704 filed by
`Sipnet EU S.R.O.
`
`Markman Order, Innovative Communications Technologies, Inc.
`(“ICTI”) v. Stalker Software, Inc., 2:12-cv-00009-RGD-TEM, ECF No.
`48 (E.D. Va. Oct. 26, 2012)
`
`1009 U.S. Patent No. 6,009,469
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Joint Claim Construction Chart, Net2Phone, Inc. v. Skype Inc., 06-cv-
`2469-KSH-PS, ECF No. 347 (D.N.J. Feb. 26, 2009)
`
`September 10, 2007, Deposition Transcript of Shane Mattaway in
`Net2Phone, Inc. v. Skype Inc., 06-cv-2469-KSH-PS (D. N. J.)
`
`Complaint, In re Certain Point-to-Point Network Communication
`Devices and Products Containing Same, Inv. No. 337-TA-892 (filed
`Aug. 1, 2013)
`
`ICTI Markman Brief, ICTI v. Stalker Software, Inc., 2:12-cv-00009-
`RGD-TEM, ECF No. 36 (E.D. Va. Sept. 14, 2012)
`
`Microsoft Windows NT™ Version 3.5 TCPIP.HLP (“Microsoft
`Manual”)
`
`1015 U.S. Patent No. 5,375,068 to Palmer et al.
`
`1016 U.S. Patent No. 5,533,110 to Pinard et al.
`
`
`
`- v -
`
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`
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`

`

`
`
`
`
`1017
`
`1018
`
`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, T.D.C., et al., “A Digital On-Demand Video Service Supporting
`Content-Based Queries,” Proc. 1st ACM International Conference on
`Multimedia, August 1993
`
`1019
`
`Droms, R., Dynamic Host Configuration Protocol, RFC 1541 (Oct.
`1993)
`
`1020
`
`Postel, J., Internet Protocol, RFC 791 (Sept. 1981)
`
`1021 VocalChat Version 2.0 trouble.hlp (“Troubleshooting”)
`
`1022 VocalChat Version 2.0 readme.txt (“Read Me”)
`
`1023 VocalChat Version 2.0 User’s Guide (“User Guide”)
`
`1024 VocalChat Version 2.0 info.hlp (“Info.”)
`
`1025 VocalChat Version 2.0 voclchat.hlp (“Help File”)
`
`1026
`
`Exhibit 27 to Complaint, In re Certain Point-to-Point Network
`Communication Devices and Products Containing Same, Inv. No. 337-
`TA-892 (filed Aug. 1, 2013)
`
`1027
`
`File History for U.S. Patent No. 6,009,469
`
`1028 Curriculum Vitae of Prof. Mark E. Crovella
`1029 November 13, 2013, Screenshot of VocalChat software
`1030 November 13, 2013, Screenshot of VocalChat software
`1031 November 13, 2013, Screenshot of VocalChat software
`1032
`Straight Path’s Notice of Patent Priority Dates, In re Certain Point-to-
`Point Network Communication Devices and Products Containing Same,
`Inv. No. 337-TA-892 (filed Nov. 8, 2013)
`Images of Unopened VocalChat Version 2.0 Box
`1033
`Images of Opened VocalChat Version 2.0 Box
`1034
`1035 Chain-of-Custody Document Related to VocalChat Version 2.0 Box
`1036
`Image of VocalChat 2.0 Disk
`1037
`Screenshot Showing High-Level Contents of VocalChat 2.0 Disk
`1038
`“Networking roundup,” Washington Post: Newsweek Interactive
`Section (June 10, 1994)
`
`- vi -
`
`

`

`
`
`
`
`1039
`1040
`
`1041
`
`“Pipeline,” InfoWorld, Vol. 16, No. 24 (June 13, 1994)
`“Leave your message on my PC after the beep,” PC Week, Vol. 11 No.
`40 (Oct. 3, 1994)
`“Communications Connectivity Networking,” Miller Freeman
`Supplement to Microsoft Systems Journal (Jan. 1995)
`“Microsoft set to ship NT 3.5,” Info World (Sept. 19, 1994)
`“NT finally becomes what it out to be: Version 3.5 is a big leap from
`3.1,” Info World, Vol. 16, No. 40 (Oct. 3, 1994)
`“Microsoft to Introduce New Windows NT,” N.Y. Times: Company
`News Section (Sept. 17, 1994)
`“Windows Networking: Beta users wowed by Daytona’s speed,”
`Network World (May 16, 1994)
`1046 Declaration of Robert Cowart
`
`1042
`1043
`
`1044
`
`1045
`
`- vii -
`
`

`

`
`
`
`
`Sony Corporation (“Sony”) requests inter partes review of claims 1, 11-12,
`
`19, 22-23, and 30 of U.S. Patent No. 6,108,704 (“the ‘704 patent”) (Ex. 1001)
`
`pursuant to 35 U.S.C. §§ 311-19 and 37 C.F.R. § 42.1 et seq.
`
`I.
`
`
`
`INTRODUCTION
`
`The challenged ‘704 patent claims recite a method (and, in claims 1, 22, 23
`
`and 30, a “computer program product” for performing such a method) of
`
`establishing a “point-to-point communication link” between two processes over a
`
`computer network. The inventors concede that point-to-point communication was
`
`“known in the art” (Ex. 1001 at 1:48-52, 7:62-64, 8:18-22), but have argued to the
`
`Patent Office that their invention is novel because it provides a “dedicated server
`
`which acts as a network address/information directory,” from which one process
`
`can determine the network protocol address of another process (Ex. 1002 at
`
`FH_00226). Such a “server” is referenced in every challenged claim. According
`
`to the inventors, the ability of a first process to query the directory server (or
`
`“connection server”) for the network protocol address of a second process allows
`
`for the establishment of a point-to-point communication link even if the processes
`
`do not know one another’s addresses in advance. (Ex. 1002 at FH_00225-26.)
`
`
`
`This simple “lookup” technology, however, was known in the prior art long
`
`before the inventors filed their patent. Indeed, as one ‘704 patent inventor
`
`conceded, the idea “goes back through antiquity.” (Ex. 1011 at 196:6-11.)
`
`
`
`- 1 -
`
`

`

`
`
`
`
`The idea of querying a central repository for another party’s contact
`
`information, as a prerequisite to direct communication between the parties, has
`
`been applied in the telecommunications field for decades. By the 1950s, when
`
`telephone networks were widespread, a directory assistance operator, when
`
`queried, would provide users with the telephone numbers of others on the network.
`
`
`
`The inventors have argued that their server technique was particularly useful
`
`in modern networking due to the “dynamic nature of temporary IP addresses.”
`
`(Ex. 1001 at 1:53). However, the claimed invention operates identically whether
`
`the addresses of the processes are permanent or temporary. For example, the
`
`“program code” for transmitting an address of a first process to the server (recited,
`
`for example, in challenged claim 1) and for “receiving” from the server an address
`
`of another process (recited in every challenged apparatus claim) is the same
`
`regardless of how those addresses are assigned. (Crovella Decl. ¶¶ 155, 188, 226.)
`
`
`
`Moreover, the use of a connection server (i.e., directory) to facilitate point-
`
`to-point communication was known even in environments featuring dynamically-
`
`assigned addresses. For example, a TCP/IP guide published by Microsoft in 1994
`
`(“Microsoft Manual”) described using “Windows Internet Name Service” (WINS)
`
`directory servers that provided one process having a dynamically-assigned network
`
`address with the dynamically-assigned network address of another process to
`
`enable point-to-point communication between the two. (Ex. 1014 at 11, 66.)
`
`
`
`- 2 -
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`

`

`
`
`
`
`The ‘704 patent describes using this directory technique in the context of
`
`Voice over IP (“VoIP”) applications – though, as discussed below, the Patent
`
`Owner is now attempting in pending litigation to stretch its claims to cover an
`
`entirely new technology (video streaming), despite previously having characterized
`
`the ‘704 patent as a “VoIP” patent, the “crux” of which is “facilitating ... user-to-
`
`user communication.” (Ex. 1013 at 3.)1
`
`
`
`The directory technique was known even in the particular context of VoIP.
`
`User manuals for a prior art VoIP product, VocalChat, describe client processes
`
`obtaining other client processes’ addresses from a directory server, then launching
`
`point-to-point communication links – precisely as recited in the challenged claims.
`
`
`
`Moreover, prior art from the video streaming field, of the type now accused
`
`by the Patent Owner of infringement, also invalidates the challenged claims. A
`
`prior art paper (Little-1994, Ex. 1017) taught the use of a directory server to
`
`provide a client with the network address of another computer that maintained
`
`video data. The client would then directly connect to the video computer, which
`
`would stream the video over a point-to-point connection. This same functionality
`
`is now accused, by the Patent Owner, of infringing the challenged claims.
`
`
`
`In sum, all of the challenged claims should be canceled because connection
`
`servers for establishing point-to-point communications were known in the prior art.
`
`
`1 Herein, emphasis in bold and italics is added; all other emphasis is original.
`
`
`
`- 3 -
`
`

`

`
`
`Some of the claims also recite “user interface elements,” but such elements are
`
`shown in two of the primary references herein and would have been obvious to use
`
`with the third. Indeed, the prior art noted: “The ability to … invoke commands by
`
`dragging an icon to another has long been known” and it “would be within the
`
`expected skill of a person skilled in the art” to create user interface elements to
`
`control “the set-up, take down or modification of a call.” (Ex. 1016 at 3:15-36.)
`
`
`
`Finally, while the Patent Owner likely will note that the ‘704 patent was
`
`previously asserted in several litigations and underwent ex parte reexamination, its
`
`validity has never been tested against the prior art cited herein. First, each of the
`
`prior litigations settled before the question of validity was presented to a judge or
`
`jury. Second, the prior art references (and expert declaration) submitted with this
`
`Petition provide a more complete picture of the prior art than was available to the
`
`Examiner during the ex parte reexamination. Two of the primary references cited
`
`herein were not considered during either original prosecution or reexamination.
`
`The third (the VocalChat References) led to reexamination rejections that were
`
`only withdrawn due to a procedural technicality. (Ex. 1003 at ReexamFH_01771.)
`
`This Petition remedies that technicality. In addition, the Board recently held that,
`
`during reexamination, the Examiner construed a key claim limitation too narrowly,
`
`and thus found a reasonable likelihood that even one of the previously-overcome
`
`references (not at issue in this Petition) anticipates claim 1. (Ex. 1006 at 7-11.)
`
`
`
`- 4 -
`
`

`

`
`
`II. MANDATORY NOTICES
`
`A. Real Parties-in-Interest
`
`
`
`Sony Corporation, Sony Corporation of America, Sony Electronics Inc.,
`
`Sony Mobile Communications AB, Sony Mobile Communications (USA) Inc.,
`
`Sony Computer Entertainment, Inc., and Sony Computer Entertainment America
`
`LLC are the real parties-in-interest. Sony Corporation is the Petitioner.
`
`B. Related Matters
`
`
`
`The following would affect or be affected by a decision in this proceeding:
`
`(1) Two additional inter partes review petitions, filed concurrently by Sony,
`
`address claims 6 and 13 of U.S. Patent No. 6,131,121 (“the ‘121 patent”) and
`
`claims 1-3, 9-10, and 17-18 of U.S. Patent No. 6,009,469 (“the ‘469 patent”). The
`
`‘121 and ‘469 patents are continuations-in-part of the ‘704 patent. The ‘121, ‘469
`
`and ‘704 patents were each asserted by Straight Path IP Group, Inc. (“Straight
`
`Path”) against Sony in Certain Point-to-Point Network Communication Devices
`
`and Products Containing Same, Inv. No. 337-TA-892 (U.S.I.T.C., filed Aug. 1,
`
`2013) (“ITC Investigation”) and Straight Path IP Group, Inc. v. Sony Corp. et al.,
`
`1:13-cv-01071-AJT (E.D. Va., filed Aug. 1, 2013) (“District Court Litigation”).
`
`Because the ‘121, ‘469 and ‘704 patents are substantively similar, Sony
`
`requests that for efficiency and consistency, the Board assign a single panel to
`
`address Sony’s inter partes review petitions for the ‘121, ‘469 and ‘704 patents.
`
`
`
`- 5 -
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`

`

`
`
`
`
`(2) Pending applications and/or issued patents claiming the same effective
`
`filing date as the ‘704 patent: U.S. Patent Nos. 6,009,469; 6,131,121; 6,185,184;
`
`6,226,678; 6,513,066; 6,701,365; 6,687,738; 6,829,645; and 7,149,208.
`
`
`
`(3) The ‘704 patent has been asserted in the following additional litigations:
`
`ICTI v. Vivox, Inc., 2:12-cv-00007-RGD
`(E.D. Va., filed Jan. 4, 2012)2
`
`ICTI v. Stalker Software, Inc., 2:12-cv-
`00009-RGD (E.D. Va., filed Jan. 4,
`2012)3
`Straight Path v. ZTE Corp. et al., 6:13-
`cv-00607 (E.D. Tex., filed Aug. 23,
`2013)
`Straight Path v. Vizio, Inc. et al.,1:13-
`cv-00934 (E.D. Va., filed Aug. 1, 2013)
`
`Net2Phone, Inc. v. eBay Inc., Skype Inc.,
`et al., 06-cv-2469 (D. N. J., filed June 1,
`2006) (“the Skype Litigation”)
`Straight Path v. LG Elecs., Inc. et al.,
`1:13-cv-00933 (E.D. Va., filed Aug. 1,
`2013)
`Straight Path v. Panasonic Corp. N.
`Am. et al., 1:13-cv-00935 (E.D. Va.,
`filed Aug. 1, 2013)
`Straight Path v. Toshiba Corp. et al.,
`1:13-cv-01070 (E.D. Va., filed Aug. 2,
`2013)
`Straight Path v. BlackBerry Ltd. et al.,
`6:13-cv-00604 (E.D. Tex., filed Aug.
`23, 2013)
`Straight Path v. Samsung Elecs. Co.,
`Ltd. et al., 6:13-cv-00606 (E.D. Tex.,
`filed Aug. 23, 2013)
`
`2 Innovative Communications Technologies, Inc. (“ICTI”) was divested and
`
`Straight Path v. Sharp Corp. et al.,
`1:13-cv-00936 (E.D. Va., filed Aug. 1,
`2013)
`Straight Path v. Toshiba Corp. et al.,
`3:13-cv-00503 (E.D. Va., filed Aug. 2,
`2013)
`Straight Path v. Huawei Inv. & Holding
`Co., Ltd. et al., 6:13-cv-00605 (E.D.
`Tex., filed Aug. 23, 2013)
`
`
`renamed as Straight Path IP Group in May 2013. (Ex. 1012 ¶ 9.) For ease of
`
`reference, this Petition refers to the current Patent Owner, Straight Path, and its
`
`predecessors-in-interest, collectively as Straight Path or Patent Owner.
`
`3 The 2012 E.D. Va. cases ICTI filed are collectively called “the Stalker litigation.”
`
`
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`- 6 -
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`

`

`
`
`
`
`(4) On October 11, 2013, the Board instituted an inter partes review of
`
`claims 1-7 and 33-42 of the ‘704 patent. The pending inter partes review
`
`proceeding is: Sipnet EU S.R.O. v. Straight Path IP Group, IPR No. 2013-00246
`
`(“the Sipnet IPR”). The only overlap between the claims challenged in this
`
`Petition and those being reviewed in the Sipnet IPR is claim 1. Nevertheless, for
`
`the sake of efficiency and consistency, Sony requests that the Board assign the
`
`Sipnet panel to address this Petition.
`
`C. Counsel and Service Information
`
`Lead Counsel
`
`Michael N. Rader (Registration No. 52,146)
`
`Backup Counsel
`
`Edmund J. Walsh (Registration No. 32,950)
`Randy J. Pritzker (Registration No. 35,986)
`
`Service Information Email:
`
`MRader-PTAB@wolfgreenfield.com
`EWalsh-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`
`Post and hand delivery: Wolf Greenfield & Sacks, P.C.
`
`
`
`
`600 Atlantic Avenue
`
`
`
`
`Boston, MA 02210-2206
`Telephone: 617-646-8000
`Facsimile: 617-646-8646
`
`
`
`Powers of attorney are submitted with this petition. Counsel for Sony
`
`consents to service of all documents via electronic mail.
`
`III. NOTICE OF FEES PAID
`
`
`
`Fees are submitted herewith. If any additional fees are due at any time
`
`during the inter partes review proceedings, the undersigned authorizes the Office
`
`to charge such fees to Deposit Account No. 23/2825.
`
`
`
`- 7 -
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`

`

`
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`
`
`
`Sony certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘704 patent is
`
`available for inter partes review and that Sony is not barred or estopped from
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`requesting inter partes review as to the ‘704 patent claims identified herein.
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`V.
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`
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`IDENTIFICATION OF CHALLENGE UNDER 37. C.F.R. § 42.104(B)
`AND RELIEF REQUESTED
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`Sony requests cancellation of ‘704 patent claims 1, 11-12, 19, 22-23, and 30.
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`A. Background of the ‘704 Patent
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`1.
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`The Disclosure of the ‘704 Patent
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`The ‘704 patent states that “point-to-point communications of voice and
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`video signals over the Internet” were “readily support[ed]” using dedicated IP
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`addresses, but the “dynamic nature of temporary IP addresses” made “point-to-
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`point communications in realtime of voice and video ... generally difficult to
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`attain” for devices with “temporary” IP addresses. (Ex. 1001 at 1:48-56.)
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`
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`To solve this problem, the inventors turned to a server, which the
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`specification labels a “connection server,” acting as a directory. Referring to
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`Figure 1, the directory is held by the connection server (26), which is connected to
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`a first processing unit (12) and a second processing unit (22) on a network (24).
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`(3:11-22.) As each processing unit connects to the network, it transmits its current
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`address to the connection server. (5:24-38.) The connection server maintains the
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`network addresses for the various processing units in a database (34). (5:29-31.)
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`When the first processing unit wishes to communicate with the second processing
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`unit, it queries the connection server for the second processing unit’s network
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`address. (5:55-64.) The connection server retrieves the network address from the
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`database and sends it to the first processing unit, which then uses it to establish a
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`point-to-point communication link to the second processing unit. (5:60-67.)
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`In addition to a connection server, the ‘704 patent discloses a user interface
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`
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`that includes “activation areas or icons for actuating commands or entering data.”
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`(8:51-52.) The icons can be “configured to substantially simulate a telephone
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`handset or a cellular telephone interface.” (8:58-60.) Figures 5 and 6 depict a user
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`interface and show that “[i]cons L1-L4 may represent each of 4 lines available to
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`the caller.” (9:3-4.) A user may move calls from one line to another by “clicking
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`and dragging” a “reduced icon 46” representing a callee “to any one of line icons
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`L1-L4.” (9:36-39.)
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`2.
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`Prosecution History of the ‘704 Patent
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`During original prosecution of the ‘704 patent, all pending (non-withdrawn)
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`claims were rejected twice. (Ex. 1002 at FH_00435-44, FH_00162-70.) None of
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`the references that Sony relies upon in this Petition were cited in either rejection.
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`
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`In response to the second rejection, the inventors argued that the cited prior
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`art lacked “a process … which forwards its network protocol address received
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`upon connection to the computer network to a server.” (Id. at FH_00154.)
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`
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`Transmission of network protocol addresses was, however, ubiquitous in the
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`prior art under the approach that Straight Path has taken in litigation. Long before
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`the ‘704 patent was filed, computers communicating in a TCP/IP environment
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`exchanged header files that included the sending computer’s current network
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`address (whether permanent or dynamically assigned). (Crovella Decl. ¶¶ 38-41,
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`202-204.) Straight Path now alleges that such headers satisfy the “transmitting to
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`the server a network protocol address” limitation of challenged claim 1. (Ex. 1026
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`at 4-6 (illustrating that the “Sony console” transmits in the IP header of a TCP/IP
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`“SYN” data packet its IP address 192.168.2.49).) Transmission of a network
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`protocol address to a connection server in particular was likewise well-known,
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`including in VoIP applications like VocalChat that updated a directory (on a
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`server) with their network protocol addresses. (Crovella Decl. ¶¶ 24-29, 52.)
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`Nevertheless, lacking the prior art references and expert testimony in this
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`Petition, the original Examiner allowed the claims. (Ex. 1002 at FH_00130-33.)
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`B.
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`Prior Post-Grant Proceedings Involving the ‘704 Patent
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`1.
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`The Prior Ex Parte Reexamination
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`
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`On February 17, 2009, a third party requested ex parte reexamination of the
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`‘704 patent based on six prior art references, including two references relied upon
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`in this Petition, U.S. Patent No. 5,533,110 (“Pinard”) and certain VocalChat
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`documents. (Ex. 1003 at ReexamFH_00014-26.) This Petition also presents
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`several additional references that were not cited in the reexamination.
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`
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`The Examiner initially rejected all reexamined claims over combinations
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`including VocalChat documents and/or Pinard. (Id. at ReexamFH_01028-45.)
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`The Examiner later withdrew the rejections over VocalChat documents because the
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`declaration submitted by the third party to support their prior art status failed to
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`comply with 37 C.F.R. § 1.68. (Id. at ReexamFH_01771.) Sony submits herewith
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`a compliant declaration establishing VocalChat documents as prior art. (Ex. 1005.)
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`2.
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`Related Litigations
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`
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`In the Stalker and Skype Litigations, Straight Path asserted the ‘704 patent
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`against VoIP products – the same technology described in the ‘704 patent. Straight
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`Path characterized the ‘704 as a “VoIP” patent and represented that “[t]he crux of
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`the invention [was] facilitating ... user-to-user communication.” (Ex. 1013 at 3.)
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`Although both litigations settled prior to trial, the district court in the Stalker
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`Litigation issued a Markman opinion prior to settlement. (Ex. 1008.)
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`
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`In August 2013, Straight Path filed the ITC Investigation, in which the
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`accused technology does not involve the “user-to-user communication” that
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`Straight Path earlier said was the crux of the invention. (Ex. 1026.) Straight
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`Path’s new infringement theory depends on broad claim constructions. If those
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`constructions are found reasonable in light of the ‘704 patent specification, then the
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`challenged claims will encompass previously unconsidered prior art such as Little-
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`1994, which relates to content delivery. (Ex. 1017 at § 2.) Other prior art
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`invalidates the challenged claims even if the Board adopts narrower constructions.
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`3.
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`The Sipnet Inter Partes Review
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`
`
`On April 11, 2013, Sipnet EU S.R.O. (“Sipnet”) filed an inter partes review
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`seeking cancellation of certain ‘704 patent claims4 based on, among other prior art,
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`a printed version of the Microsoft Manual cited herein.5 (Ex. 1007.) On October
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`11, 2013, the Board instituted inter partes review of all challenged claims. (Ex.
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`1006.) The Board found a reasonable likelihood that claim 1 was anticipated by
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`the Microsoft Manual. (Id. at 11-14.) Sony relies on the Microsoft Manual, but
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`not on any reference that the Sipnet Board found redundant or non-anticipatory.
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`4 The only overlap between the Sipnet petition and this Petition is claim 1.
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`5 The two references contain the same disclosures regarding the WINS server.
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`This Petition also presents the Board with its first opportunity to assess the
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`patentability of the ‘704 patent claims having a user interface limitation (i.e.,
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`claims 11-12, 19, 22-23, and 30).
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`C.
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`Patents and Printed Publications Relied Upon Herein
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`1. Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”) (Ex. 1014)
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`
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`The Microsoft Manual describes a directory server that provides a process
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`with the network address of another process in a context involving dynamically
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`assigned addresses. It was not cited during original prosecution or reexamination
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`of the ‘704 patent. The Sipnet Board found a reasonable likelihood that the printed
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`Microsoft Manual anticipates claim 1. (Ex. 1006 at 11-14.) Published by
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`September 1994, the Microsoft Manual relied upon herein is prior art under at least
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`§ 102(a). See Declaration of Robert Cowart (Ex. 1046.)
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`2.
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`U.S. Patent No. 5,375,068 (“Palmer”) (Ex. 1015)
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`
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`Palmer discloses a video teleconferencing application designed to run on a
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`Windows NT computer connected to a TCP/IP network – the network described in
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`the Microsoft Manual. The Palmer application includes a user interface with the
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`attributes recited in the challenged claims. Palmer was not cited in either the
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`original prosecution or the reexamination of the ‘704 patent. Filed on June 3,
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`1992, and issued on December 20, 1994, Palmer is prior art under §§ 102(a), (e).
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`3.
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`The VocalChat References (Exs. 1021-25)
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`The VocalChat References disclose a directory server in a system for
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`transmitting real-time voice across a network. They consist of five documents that
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`were distributed together to customers of VocalTec’s VocalChat software, Version
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`2.0, by June 1994. (Ex. 1005 ¶¶ 4-36.) They are thus § 102(b) prior art. Ex Parte
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`ePlus Inc., Appeal No. 2010-007804, 2011 WL 1918594, *7 (B.P.A.I. May 18,
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`2011) (software manual was prior art where “any member of the public was able to
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`purchase the software, and obtain access to the publications”).
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`
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`One of skill in the art would have had a reason to combine the VocalChat
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`References because they describe the same software and came in the same box.6
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`
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`4.
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`U.S. Patent No. 5,533,110 (“Pinard”) (Ex. 1016)
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`
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`Pinard discloses a graphical interface for “any system in which a telephony
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`applicati