`
`
`
`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. 6,009,469
`Case IPR No.: To Be Assigned
`_______________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`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 ............................................................................... 4
`
`A. Real Parties-in-Interest ............................................................................... 4
`
`B. Related Matters ........................................................................................... 4
`
`C. Counsel and Service Information ............................................................... 6
`
`III. NOTICE OF FEES PAID ................................................................................. 6
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING ................................... 7
`
`V.
`
`IDENTIFICATION OF CHALLENGE UNDER 37. C.F.R. § 42.104(B)
`AND RELIEF REQUESTED ........................................................................... 7
`
`A. Background of the ‘469 Patent ................................................................... 7
`
`1. The Disclosure of the ‘469 Patent ...................................................... 7
`
`2. Prosecution History of the ‘469 Patent ............................................... 9
`
`B. Prior Post-Grant Proceedings Involving the ‘469 Patent ........................... 9
`
`1. The Prior Ex Parte Reexamination ..................................................... 9
`
`2. Related Litigations ............................................................................ 10
`
`3. The Sipnet Inter Partes Review ....................................................... 10
`
`C. Patents and Printed Publications Relied Upon Herein ............................. 11
`
`1. Microsoft Windows NT™ Version 3.5 TCPIP.HLP (“Microsoft
`Manual”) (Ex. 1014) ......................................................................... 11
`
`2. U.S. Patent No. 5,375,068 (“Palmer”) (Ex. 1015) ........................... 11
`
`3. The VocalChat References (Exs. 1021-25) ...................................... 12
`
`4. U.S. Patent No. 5,533,110 (“Pinard”) (Ex. 1016) ............................ 12
`
`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) ........... 13
`
`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) ......................... 13
`
`7. Dynamic Host Configuration Protocol, RFC 1541 (Oct. 1993)
`(“RFC 1541”) (Ex. 1019) ................................................................. 13
`
`
`
`i
`
`

`

`
`
`8.
`
`Internet Protocol, RFC 791 (Sept. 1981) (“RFC 791”) (Ex.
`1020) ................................................................................................. 14
`
`D. Level of Ordinary Skill in the Art ............................................................ 14
`
`E. Statutory Grounds for Challenge .............................................................. 15
`
`F. Claim Construction ................................................................................... 16
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`“point-to-point communications” (Claim 1) / “point-to-point
`communication link” (Claims 2, 9, 10) ............................................ 16
`
`“computer readable code means” (Claim 1) ..................................... 17
`
`“network protocol address” (Claims 1, 9, 10) .................................. 17
`
`“unique identifier” (Claim 1) ............................................................ 18
`
`“program code for determining the currently assigned network
`protocol address of the first process upon connection to the
`computer network” (Claim 1) ........................................................... 18
`
`“connected to the computer network” (Claim 3) / “on-line”
`(Claim 9) ........................................................................................... 19
`
`“accessible” (Claim 9) ...................................................................... 20
`
`“transmitting, from the first process to the server process, a
`query as to whether the second process is connected to the
`computer network” (Claim 3) / “guerving [sic: querying] the
`server process to determine if the first callee process is
`accessible” (Claims 9, 10) ................................................................ 21
`
`9.
`
`“caller process” and “callee process” (Claims 9, 10) ....................... 23
`
`10. “associating the element representing the first callee process
`with the element representing the first communication line”
`(Claims 9, 10) ................................................................................... 25
`
`VI. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ............. 26
`
`VII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY OF CLAIMS 1-3, 9-10, AND 17-18 ........................ 26
`
`A. Ground 1: Claims 1-3, 9-10, and 17-18 are obvious under 35
`U.S.C. § 103 over the Microsoft Manual in view of Palmer. .................. 26
`
`B. Ground 2: Claims 9-10, and 17-18 are obvious under 35 U.S.C. §
`103 over the Microsoft Manual in view of Palmer and Pinard. ............... 35
`
`C. Ground 3: Claims 1-3, 9-10, and 17-18 are obvious under 35
`U.S.C. § 103 over the VocalChat References. ......................................... 37
`
`
`
`ii
`
`

`

`
`
`D. Ground 4: Claims 1-3 are obvious under 35 U.S.C. § 103 over the
`VocalChat References in view of RFC 1541. .......................................... 45
`
`E. Ground 5: Claims 9-10 and 17-18 are obvious under 35 U.S.C. §
`103 over the VocalChat References in view of Pinard. ........................... 47
`
`F. Ground 6: Claims 1-2 are obvious under 35 U.S.C. § 103 over
`Little-1994 in view of RFC 791. .............................................................. 47
`
`G. Ground 7: Claim 3 is obvious under 35 U.S.C. § 103 over Little-
`1994 in view of RFC 791. ........................................................................ 52
`
`H. Ground 8: Claims 1-3 are obvious under 35 U.S.C. § 103 over
`Little-1994 in view of RFC 791 and RFC 1541. ...................................... 54
`
`I. Ground 9: Claims 9-10 and 17-18 are obvious under 35 U.S.C. §
`103 over Little-1994 in view of Little-1993 and RFC 791. ..................... 55
`
`J. Ground 10: Claims 9-10 and 17-18 are obvious under 35 U.S.C. §
`103 over Little-1994 in view of Pinard and RFC 791. ............................. 59
`
`VIII. CONCLUSION ............................................................................................... 60
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`Ex Parte ePlus Inc.,
`Appeal No. 2010-007804, 2011 WL 1918594 (B.P.A.I. May 18, 2011) .............12
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 36, 47, 60
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`TABLE OF EXHIBITS
`
`
`EXHIBIT
`
`DESCRIPTION
`
`1001 U.S. Patent No. 6,009,469
`
`1002
`
`File History for U.S. Patent No. 6,009,469
`
`1003
`
`File History for Reexamination Control No. 90/010422
`
`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. 6,108,704
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Joint Claim Construction Chart, Net2Phone, Inc. v. Skype Inc., 2:06-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.
`
`1017
`
`Little, T.D.C., et al., “Client-Server Metadata Management for the
`
`
`
`v
`
`

`

`
`
`
`
`Delivery of Movies in a Video-On-Demand System,” First International
`Workshop on Services in Distributed and Networked Environments,
`June 27-28, 1994
`
`1018
`
`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 16 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. 6,108,704
`
`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
`“Networking roundup,” Washington Post: Newsweek Interactive
`Section (June 10, 1994)
`“Pipeline,” InfoWorld, Vol. 16, No. 24 (June 13, 1994)
`
`1038
`
`1039
`
`vi
`
`

`

`
`
`
`
`1040
`
`1041
`
`1042
`1043
`
`“Leave your message on my PC after the beep,” PC Week, Vol. 11 No.
`40 (Oct. 3, 1994)
`“Communications Connectivity Networking,” Microsoft Systems
`Journal, Vol. 10, No. 1 (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
`
`1044
`
`1045
`
`vii
`
`

`

`
`
`
`
`
`Sony Corporation (“Sony”) requests inter partes review of claims 1-3, 9-10,
`
`and 17-18 of U.S. Patent No. 6,009,469 (“the ‘469 patent”) (Ex. 1001) pursuant to
`
`35 U.S.C. §§ 311-19 and 37 C.F.R. § 42.1 et seq.
`
`I.
`
`
`
`INTRODUCTION
`
`The challenged ‘469 patent claims recite a method (and, in claims 1-3, a
`
`“computer program product” for performing such a method) of establishing a
`
`“point-to-point communication link” between processes over a computer network.
`
`The inventors concede that point-to-point communication was “known in the art”
`
`(Ex. 1001 at 2:30-32, 9:53-57, 10:11-15), but argued when prosecuting parent U.S.
`
`Patent No. 6,108,704 (Ex. 1009) 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. 1027 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 server for the
`
`network protocol address of a second process allows for establishing a point-to-
`
`point communication link even if the processes do not know one another’s
`
`addresses in advance. (Id. at FH_00225-26; Ex. 1001 at 9:25-34.)
`
`
`
`This simple “lookup” technology, however, was known in the prior art long
`
`before the inventors filed their patent. Indeed, as one ‘469 inventor conceded, the
`
`idea “goes back through antiquity.” (Ex. 1011 at 196:6-11.)
`
`
`
`1
`
`

`

`
`
`
`
`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 2:34-35). However, the claimed invention operates identically
`
`whether the processes’ addresses are permanent or temporary. For example, the
`
`“program code” for forwarding an address of a process to the server (claim 1) and
`
`for “receiving” from the server an address of another process (claim 3) is the same
`
`regardless of how those addresses are assigned. (Crovella Decl. ¶¶ 157, 195, 242.)
`
`
`
`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” 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.)
`
`
`
`The ‘469 patent describes using this directory technique in the context of
`
`Voice over IP (“VoIP”) applications. As discussed below, the Patent Owner is
`
`now trying in litigation to stretch its claims to cover video streaming technology,
`
`despite previously having characterized the ‘469 patent as a “VoIP” patent, the
`
`“crux” of which is “facilitating ... user-to-user communication.” (Ex. 1013 at 3.)1
`
`
`1 Herein, emphasis in bold and italics is added; all other emphasis is original.
`
`
`
`2
`
`

`

`
`
`
`
`The directory technique was known even in the particular context of VoIP.
`
`User manuals for a prior art VoIP product (Ex. 1021-25), 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 servers for
`
`establishing point-to-point communications were known in the prior art. 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.)
`
`
`
`3
`
`

`

`
`
`
`
`The ‘469 patent’s validity has never been tested against the prior art cited
`
`herein. Two of Sony’s primary references were not considered during original
`
`prosecution or reexamination. The third (the VocalChat References) led to
`
`reexamination rejections that were withdrawn due to a procedural technicality.
`
`(Ex. 1003 at ReexamFH_0171-72.) This Petition remedies that technicality.
`
`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 of U.S. Patent No. 6,131,121 and of the parent ‘704 patent. The
`
`‘121 and ‘469 patents are nearly identical and are continuations-in-part of the ‘704.
`
`All three were 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 (filed Aug. 1, 2013) and Straight Path IP
`
`Group, Inc. v. Sony Corp. et al., 13-cv-01071 (E.D. Va. filed Aug. 1, 2013).
`
`
`
`4
`
`

`

`
`
`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.
`
`
`
`(2) Pending applications and/or issued patents claiming the same effective
`
`filing date as the ‘469 patent: U.S. Patent Nos. 6,108,704; 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 ‘469 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
`Straight Path v. ZTE Corp., 6:13-cv-
`00607 (E.D. Tex., filed Aug. 23, 2013)
`Straight Path v. LG Elecs., et al., 1:13-
`cv-00933 (E.D. Va., filed Aug. 1, 2013)
`Straight Path v. Panasonic, 1:13-cv-
`00935 (E.D. Va., filed Aug. 1, 2013)
`Straight Path v. Toshiba Corp., 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)
`Net2Phone, Inc. v. Skype Inc., et al., 06-
`cv-2469 (D. N. J., filed June 1, 2006)
`
`ICTI v. ooVoo, LLC, 2:12-cv-00008-
`RGD (E.D. Va., filed Jan. 4, 2012) 3
`Straight Path v. Sharp Corp., 1:13-cv-
`00936 (E.D. Va., filed Aug. 1, 2013)
`Straight Path v. Vizio, Inc. et al.,1:13-
`cv-00934 (E.D. Va., filed Aug. 1, 2013)
`Straight Path v. Toshiba Corp., 1:13-cv-
`01070 (E.D. Va., filed Aug. 2, 2013)
`Straight Path v. BlackBerry, 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
`
`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.
`
`3 The 2012 E.D. Va. cases ICTI filed are collectively called “the Stalker litigation.”
`
`
`
`5
`
`

`

`
`
`
`
`(4) On October 11, 2013, the Board instituted an inter partes review of
`
`claims 1-7 and 33-42 of the parent ‘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”). 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.
`
`
`
`6
`
`

`

`
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`
`
`
`Sony certifies pursuant to 37 C.F.R. § 42.104(a) that the ‘469 patent is
`
`available for inter partes review and that Sony is not barred or estopped from
`
`requesting inter partes review as to the ‘469 patent claims identified herein.
`
`V.
`
`
`
`
`
`IDENTIFICATION OF CHALLENGE UNDER 37. C.F.R. § 42.104(B)
`AND RELIEF REQUESTED
`
`Sony requests cancellation of ‘469 patent claims 1-3, 9-10, and 17-18.
`
`A. Background of the ‘469 Patent
`
`1.
`
`The Disclosure of the ‘469 Patent
`
`The ‘469 patent is a continuation-in-part of the ‘704 patent, which is also
`
`assigned to Straight Path and has been asserted by Straight Path against Sony in the
`
`ITC Investigation. The common disclosure of both patents explains that “point-to-
`
`point communications of voice and video signals over the Internet” were “readily
`
`support[ed]” using dedicated IP addresses, but the “dynamic nature of temporary
`
`IP addresses” made “point-to-point communications in realtime of voice and video
`
`... generally difficult to attain” for devices with “temporary” IP addresses. (Ex.
`
`1001 at 2:30-38.)
`
`
`
`To solve this problem, the inventors turned to a server, labeled a “connection
`
`server,” acting as a directory. Referring to Figure 1 of the patents, the directory is
`
`held by the connection server (26), which is connected to a first processing unit
`
`(12) and a second processing unit (22) on a network (24). (Ex. 1001 at 4:51-62.)
`
`
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`7
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`As each processing unit connects to the network, it transmits its current address to
`
`the connection server. (6:66-7:13.) The connection server maintains the network
`
`addresses for the various processing units in a database (34). (7:3-5.) When the
`
`first processing unit wishes to communicate with the second processing unit, it
`
`queries the connection server for the second processing unit’s network address.
`
`(7:31-40.) The connection server retrieves the network address from the database
`
`and sends it to the first processing unit, which then uses it to establish a point-to-
`
`point communication link to the second processing unit. (7:36-43.)
`
`
`
`In addition to a connection server, the ‘469 patent discloses a user interface
`
`in which icons “represent … lines available to the caller” (10:63-64) and a user
`
`may move calls from one line to another by “clicking and dragging” an icon
`
`representing a callee to one of the line icons. (11:27-31.)
`
`
`
`The ‘469 patent includes new matter beginning at column 12, line 48, and
`
`shown in new Figures 10 to 20D. This new matter re-emphasizes the disclosures
`
`found in the parent ‘704 patent specification. For example, it reiterates that the
`
`“connection server” provides “a one-to-one mapping between an identifier of a
`
`WebPhone client process, such as a [sic] E-mail address, and the current IP
`
`address, dynamic or fixed, associated with that WebPhone client process.” (18:33-
`
`37.)
`
`
`
`8
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`
`
`2.
`
`Prosecution History of the ‘469 Patent
`
`During original prosecution, all claims of the ‘469 patent were rejected in an
`
`initial Office Action over a single reference, VocalTec’s Internet Phone. (Ex. 1002
`
`at FH_00106-16.) Sony does not rely on Internet Phone in this Petition, though it
`
`does rely on documents describing a different VocalTec product, VocalChat.4
`
`B.
`
`Prior Post-Grant Proceedings Involving the ‘469 Patent
`
`1.
`
`The Prior Ex Parte Reexamination
`
`
`
`On February 23, 2009, a third party requested ex parte reexamination of the
`
`‘469 patent based on certain prior art references, including two references relied
`
`upon in this Petition, U.S. Patent No. 5,533,110 (“Pinard”) and certain VocalChat
`
`documents. (Ex. 1003 at ReexamFH_0001108-1226.) This Petition also presents
`
`several additional references that were not cited in the reexamination.
`
`
`
`The Examiner rejected all of the reexamined claims based on VocalChat
`
`documents (id. at ReexamFH_00962-69) but later withdrew the rejections because
`
`the declaration regarding the VocalChat documents’ prior art status did not comply
`
`with 37 C.F.R. § 1.68. (Id. at ReexamFH_00171-72.) Sony submits a compliant
`
`declaration establishing the VocalChat documents as prior art. (Ex. 1005.)
`
`
`4 Straight Path argued that Internet Phone did not anticipate in part because it used
`
`the Internet Relay Chat protocol. (Ex. 1002 at FH_00100.) That distinction is
`
`irrelevant to this Petition because VocalChat does not rely upon the IRC protocol.
`
`
`
`9
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`
`
`2.
`
`Related Litigations
`
`In the Stalker and Skype Litigations, Straight Path asserted the ‘469 patent
`
`against VoIP products – the same technology described in the ‘469 patent. Straight
`
`Path stated that “[t]he crux of the invention [was] facilitating ... user-to-user
`
`communication.” (Ex. 1013 at 3.) Both litigations settled prior to trial, but the
`
`Stalker Litigation court issued a Markman opinion prior to settlement. (Ex. 1008.)
`
`
`
`In August 2013, Straight Path filed the ITC Investigation, in which the
`
`accused technology does not involve the “user-to-user communication” that
`
`Straight Path earlier said was the crux of the invention. (Ex. 1026.) Straight
`
`Path’s new infringement theory depends on the Board adopting broad claim
`
`constructions. If those constructions are found reasonable in light of the ‘469
`
`patent specification, then the challenged claims will encompass previously
`
`unconsidered prior art such as Little-1994, which relates to content delivery
`
`technology. (Ex. 1017 at § 2.) Other prior art invalidates the challenged claims
`
`even if the Board adopts narrower constructions.
`
`3.
`
`The Sipnet Inter Partes Review
`
`
`
`On April 11, 2013, Sipnet EU S.R.O. (“Sipnet”) filed an inter partes review
`
`seeking cancellation of certain claims in the parent ‘704 patent based on, among
`
`other prior art, a printed version of the Microsoft Manual cited herein.5 (Ex. 1007.)
`
`
`5 The two references contain the same disclosures regarding the WINS server.
`
`
`
`10
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`

`
`
`On October 11, 2013, the Board instituted inter partes review of all challenged
`
`claims and found a reasonable likelihood that claim 1 is anticipated by the
`
`Microsoft Manual. (Ex. 1006 at 11-14.) Sony relies on the Microsoft Manual in
`
`this Petition, but does not rely on any reference that the Sipnet Board found to be
`
`either redundant or non-anticipatory.
`
`C.
`
`Patents and Printed Publications Relied Upon Herein
`
`1. Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”) (Ex. 1014)
`
`
`
`The Microsoft Manual describes a directory server that provides a process
`
`with the network address of another process in a context involving dynamically
`
`assigned addresses. It was not cited during original prosecution or reexamination
`
`of the ‘469 patent. Published by September 1994, the Microsoft Manual is prior
`
`art under at least § 102(a). See Declaration of Robert Cowart (Ex. 1046.)
`
`2.
`
`U.S. Patent No. 5,375,068 (“Palmer”) (Ex. 1015)
`
`
`
`Palmer discloses a video teleconferencing application designed to run on a
`
`Windows NT computer connected to a TCP/IP network – the network described in
`
`the Microsoft Manual. The Palmer application includes a user interface with the
`
`attributes recited in the challenged claims. Palmer was not cited in either the
`
`original prosecution or the reexamination of the ‘469 patent. Filed on June 3,
`
`1992, and issued on December 20, 1994, Palmer is prior art under §§ 102(a), (e).
`
`
`
`11
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`

`
`
`
`
`3.
`
`The VocalChat References (Exs. 1021-25)
`
`The VocalChat References disclose a directory server in a system for
`
`transmitting real-time voice across a network. They consist of five documents that
`
`were distributed together to customers of VocalTec’s VocalChat software, Version
`
`2.0, by June 1994. (Ex. 1005 ¶¶ 4-36.) They are § 102(b) prior art. Ex Parte
`
`ePlus Inc., Appeal No. 2010-007804, 2011 WL 1918594, *7 (B.P.A.I. May 18,
`
`2011) (software manual was prior art where “any member of the public was able to
`
`purchase the software, and obtain access to the publications”).
`
`
`
`One of skill in the art would have had a reason to combine the VocalChat
`
`References because they describe the same software and came in the same box.6
`
`
`
`4.
`
`U.S. Patent No. 5,533,110 (“Pinard”) (Ex. 1016)
`
`
`
`Pinard discloses a graphical interface for “any system in which a telephony
`
`application on a personal computer … in conjunction with a server operates.”
`
`(Ex. 1016 at 2:44-46.) Pinard was cited but not considered during original
`
`prosecution. (Ex. 1003 at ReexamFH_01071.) In the reexamination, rejections
`
`involving Pinard were withdrawn for reasons unrelated to Pinard, including a
`
`procedural technicality related to VocalChat. (Id. at ReexamFH_00171-72.) Filed
`
`on November 29, 1994, Pinard is § 102(e) prior art.
`
`
`6 The reexamination Examiner agreed. (Ex. 1003 at ReexamFH_00963.)
`
`
`
`12
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`
`
`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)
`
`Little-1994 discloses a client-server system including a directory server for
`
`the “location, identification, and delivery of continuous media ... in the context of a
`
`distributed system.” (Ex. 1017 at Abstract.) The client has a graphical user
`
`interface, and Little-1994 cites screenshots of the interface that were included in an
`
`earlier paper by the same authors (Little-1993). Little-1994 was not cited in either
`
`the original prosecution or ex parte reexamination of the ‘469 patent. Published in
`
`June 1994, and received at the Linda Hall Library in Kansas City, Missouri on
`
`August 8, 1994, Little-1994 is § 102(b) prior art. (Id. at Cover Page.)
`
`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)
`
`
`
`Little-1993 depicts the graphical user interface noted above. Little-1993 was
`
`not cited in either the original prosecution or ex parte reexamination of the ‘469
`
`patent. Published in August 1993, Little-1993 is § 102(b) prior art.
`
`7.
`
`Dynamic Host Configuration Protocol, RFC 1541 (Oct.
`1993) (“RFC 1541”) (Ex. 1019)
`
`
`
`RFC 1541 is a publication of the Internet Engineering Task Force (“IETF”),
`
`the principal Internet standards-setting organization. (Crovella Decl. ¶¶ 190-92.)
`
`It describes the Dynamic Host Configuration Protocol (“DHCP”) that allows a
`
`server to provide dynamic network addresses to clients on a network. (Ex. 1019 at
`
`
`
`13
`
`

`

`
`
`2-3.) A DHCP server assigns unique network addresses to devices, then releases
`
`them as devices leave the network or fail to renew within a set time period. (Id. at
`
`11; Crovella Decl. ¶ 191.) It was not relied on in either the original prosecution or
`
`the reexamination of the ‘469 patent, but the ree