EXHIBIT 1023
`
`EXHIBIT 1023
`
`
`
`
`
`
`
`
`

`

`Electronic Acknowledgement Receipt
`
`6532617
`
`Confirmation Number:
`
`Title of Invention:
`
`Point-to-Point Internet Protocol
`
`
`
`
`
`First Named Inventor/Applicant Name:
`
`6108704
`
`——
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`2655—0188
`
`16:58:34
`Time Stamp:
`
`
`
`
`Application Type: Reexam (I'hird Party)
`
`Payment information:
`
`Document
`Number
`
`Document Descri
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`
`p
`
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 001
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 001
`
`

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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 002
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 002
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 003
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 003
`
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 004
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 004
`
`

`

`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)—(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DOIEOI903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`Ifa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 005
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`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 005
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`

`

`Exhibit 1
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 006
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 006
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re PATENT APPLICATION OF :
`
`Attorney Docket:
`
`2655-0188
`
`Net2Phone, Inc. (Patent No. 6,108,704)
`
`Group Art Unit:
`
`3992
`
`Control No.:
`
`90/010,416
`
`Examiner: KOSOWSKI, Alexander
`
`Issue Date: August 22, 2000
`Title: POINT-TO-POINT INTERNET
`PROTOCOL
`
`Confirmation No.2
`
`1061
`
`DECLARATION OF KETAN MAYER-PATEL UNDER 37 C.F.R. 1.132
`
`Hon. Commissioner of Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`I. INTRODUCTION
`
`1.
`
`I haveilgeien retained as an independent expert witness by Net2Phone, Inc, the assignee of 7
`
`the patent presently undergoing re-examination (i.e., US. Patent No. 6,108,704 (hereinafter “the
`
`‘704 patent”)).
`
`2.
`
`I am an expert in the field of networking protocols including networking protocols
`
`supporting multimedia streams including digital audio data. See Curriculum Vitae attached as
`
`Exhibit 1.
`
`3.
`
`I received Bachelors of Arts degrees in Computer Science and Economics in 1992, a
`
`Masters of Science in 1997 from the Department of Electrical Engineering and Computer
`
`Science and a Ph.D. in 1999 from the Department of Electrical Engineering and Computer
`
`Science, all from the University of California, Berkeley.
`
`4.
`
`I received the National Science Foundation CAREER Award in 2003 while an Assistant
`
`Professor at the University of North Carolina, Chapel Hill.
`
`5.
`
`I have had extensive experience in both industry and academia as it relates to the
`
`technical fields relevant here. For example, I have been a programmer, a Visiting researcher, and
`
`an Assistant and Associate professor.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 007
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 007
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.3 90/010,424
`Filed:
`February 24, 2009
`Declaration of Kctan Mayer—Patel under 37 C.F.R. 1.132
`
`6.
`
`I am a co-author of numerous articles that have appeared in a number of refereed
`
`publications and proceedings.
`
`7.
`
`Governmental agencies, such as the National Science Foundation and the Office of Naval
`
`Research, have provided funding for my research.
`
`II. RETENTION AND COMPENSATION
`
`8.
`
`I have been retained to offer an expert opinion on the prior art relevant to the “704 patent
`
`(and other patents currently under re-examination) and the validity of the claims undergoing re—
`
`examination.
`
`9.
`
`My work on this case is being billed at a rate of $400 per hour, with reimbursement for
`
`actual expenses. My compensation is not contingent upon the outcome of the case.
`
`III. BASIS OF MY OPINION AND MATERIALS CONSIDERED
`
`10.
`
`In preparation for this report, I have considered and relied on data or other documents
`
`identified in this report. For example, I have reviewed the Office Action dated August 27, 2009
`
`as well as the Request for Re-examination that was filed for the ‘704 patent including the
`
`Exhibits to the Request for Re—examination.
`
`I have also reviewed the file history of the ‘704
`
`patent.
`
`11.
`
`I have familiarized myself with the state of the art at the time the ‘704 patent was filed by
`
`reviewing both patent and non—patent references from prior to the filing date of the application
`
`that became the ‘704 patent.
`
`12.
`
`My opinions are also based upon my education, training, research, knowledge, and
`
`experience in this technical field.
`
`IV. SUMJVIARY OF MY OPINIONS
`
`13.
`
`Based on my prior experience in the field of computer systems and networking, including
`
`network communication protocols, and based on my review of the documents relating to the
`
`2
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 008
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 008
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer—Patel under 37 CPR. 1.132
`
`pending re-examination proceeding, I have developed an understanding of the ‘704 patent and
`
`the claimed inventions.
`
`14.
`
`I have been asked to compare the claims of the ‘704 patent to the references applied in
`
`the outstanding Office Action. The results of my comparison are provided below.
`
`15.
`
`I understand that the assignee’s response includes the following amendments to the
`
`claims:
`
`10. (Canceled)
`
`1]. (Amended) In a computer system, a method for establishing a point-to-
`
`point communication link from a caller process to a callee process over a
`
`computer network, the caller process having a user interface and being operatively
`
`connectable to the callee process and a server over the computer network, the
`
`method comprising the steps of:
`
`A. providing a user interface element representing a first communication
`
`line;
`
`and
`
`
`B. providing a user interface element representing a first callcc process:
`
`C. establishing a point-to-point communication link from the caller
`
`process to the first callee process, in response to a user associating the element
`
`representing the first callee process with the element representing the first
`
`communication line, |The method of claim 10] wherein step C further comprises
`
`the steps of:
`
`0.1 querying the server as to the on—line status of the first callee [process]
`
`process; and
`
`c.2 receiving a network protocol address of the first callee process over the
`
`computer network from the server.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 009
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 009
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 C.F.R. 1.132
`
`12. (Amended) The method of claim [10] fl further comprising the step
`
`D. providing an element representing a second communication line.
`
`14. (Amended) The method of claim [10] 1_l_ further comprising the steps
`
`D. providing a user interface element representing a second callee process;
`
`of:
`
`of:
`
`and
`
`E. establishing a conference point-to-point communication link between
`
`the caller process and the first and second callee process, in response to the user
`
`associating the element representing the second callee process with the element
`
`representing the first communication line.
`
`15. (Amended) The method of claim [10] Q further comprising the step
`
`of:
`
`F. removing the second callee process from the conference point-to-point
`
`communication link in response to the user disassociating the element
`
`representing the second callee process from the element representing the first
`
`communication line.
`
`16. (Amended) The method of claim [10] 1_l_ further comprising the steps
`
`of:
`
`D. providing a user interface element representing a communication line
`
`having a temporarily disabled status; and
`
`E. temporarily disabling a point—to—point communication link between the
`
`caller process and the first callee process, in response to the user associating the
`
`element representing the first callee process with the element representing the
`
`communication line having a temporarily disabled status.
`
`4
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 010
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 010
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration ofKetan Mayer-Patel under 37 C.F.R. 1.132
`
`19. (Amended) The method of claim [10] l_l_ wherein the caller process
`
`further comprises a visual display and the user interface comprises a graphic user
`
`interface.
`
`21. (Canceled)
`
`22. (Amended) A computer program product for use with a computer
`
`system comprising:
`
`a computer usable medium having program code embodied in the medium
`
`for establishing a point-to-point communication link from a caller process to a
`
`callee process over a computer network, the caller process having a user interface
`
`and being operativelyconnectable to the callee process and a server over the
`
`computer network, the medium further comprising:
`
`program code for generating an element representing a first
`
`communication line’
`
`program code for generating an element representing a first callee process;
`
`program code, responsive to a user associating the element representing
`
`the first callee process with the element representi_ng_the first communication line
`
`for establishing a point-to—point communication link from the caller process to the
`
`first callee process, [The computer program product of claim 21] wherein the
`
`program code for establishing a point-to-point communication link further
`
`comprises:
`
`program code for querying the server as to the on-line status of the first
`
`callee process; and
`
`program code for receiving a network protocol address of the first callee
`
`process over the computer network from the server.
`
`5
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 011
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 011
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 CPR. 1.132
`
`23. (Amended) A computer program product of claim [21] _2__2_ further
`
`comprising:
`
`program code for generating an element representing a second
`
`communication line.
`
`25. (Amended) The computer program product of claim [21] _2_2 further
`
`comprising:
`
`program code for generating an element representing a second callee
`
`process; and
`
`program code means, responsive to the user associating the element
`
`representing the second callee process with the element representing the first
`
`communication line: for establishing a conference communication link between
`
`the caller process and the first and second callee process.
`
`27. (Amended) The computer program product of claim [21] 2 fiirther
`
`comprising:
`
`program code for generating an element representing a communication
`
`line having a temporarily disabled status; and
`
`program code, responsive association of the element representing the first
`
`callee process with the element representing the communication line having a
`
`temporarily disabled status, for temporarily disabling the point-to-point
`
`communication link between the caller process and the first callee process.
`
`30. (Amended) A computer program product of claim [21] 22 wherein the
`
`computer system further comprises a Visual display and the user interface
`
`comprises a graphic user interface.
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 012
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 012
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 C.F.R. 1.132
`
`16.
`
`In general, it is my opinion that all of the pending claims undergoing re-examination (i.e.,
`
`claims 1-7, 11-20 and 22-44) are patentable over the applied references for at least the reasons
`
`set forth below.
`
`The rejection of the claims over NetBIOS. either alone or in combination with at least one other
`
`reference
`
`17.
`
`Claims 43 and 44 were rejected under 35 U.S.C. § 102 as being anticipated by Protocols
`
`for X/Open PC Interworking SMB, Version 2, The Open Group (1992) (hereinafter “NetBIOS”).
`
`18.
`
`I understand that a claim is rejected under 35 U.S.C. § 102(b) when an examiner believes
`
`that each and every limitation of the claim is taught by the applied reference.
`
`Pending claims 1-7, 11-20 and 22-42 were rejected under 35 U.S.C. § 103(a) as being
`19.
`
`obvious ovenNetBlOS in combination with at least one other reference.
`
`20.
`
`I understand that a rejection under 35 U.S.C. § 103(a) means that an examiner believes
`
`that although no single reference includes all of the claimed limitations, nonetheless the
`
`combination of references made by the examiner would have been obvious to one of ordinary
`
`skill in the art at the time the invention was made.
`
`The Rejection of Claims 43 and 44 over NetBIOS
`
`21.
`
`Claim 43 recites “a. program code configured to access a directory database, the database
`
`having a network protocol address for a selected plurality of processes having on—line status with
`
`respect to the computer network, the network protocol address of each respective process
`
`forwarded to the database following connection to the computer network.” This limitation is not
`
`taught by the NetBIOS reference as NetBIOS does not provide dynamic addressing or on-line
`
`status.
`
`22.
`
`In rejecting claim 43, the Office Action adopts the positions of the third-party requester
`
`and states “Sec claim mapping chart in Exhibit M, pages 36—40, incorporated by reference.”
`
`7
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 013
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 013
`
`

`

`Re—Examination of Patent No. 6,131,121
`Control No: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 CPR. 1.132
`
`With respect to this limitation (a), the claim mapping does not show that NetBIOS teaches “the
`
`network protocol address of each respective process forwarded to the database following
`
`connection to the computer network.” In fact, the Office Action appears to have agreed (e.g.,
`
`with respect to claim 1) that the NetBIOS reference does not teach that the processes receive
`
`network protocol addresses “following connection to the computer network.” The Office Action
`
`did this by rejecting the requester’s arguments under 35 U.S.C. § 102 and instead adopting
`
`“claim chart mapping utilizing alternative 103 rejections” —- rejections that rely on RFC 1531 to
`
`teach dynamic addressing.
`
`23.
`
`Even assuming that the Office Action intended the rejection to be a rejection under 35
`
`U.S.C. § 103 by combining NetBIOS with RFC 1531, the rejection would still not Show that the
`
`claims were unpatentable. When alleging that one of ordinary skill in the art would have
`
`to
`combined N etBlOS with RFC 1531, the Office Action states “it would have been obvious
`
`utilize the limitations taught by RFC 1531 in the invention taught by NetBIOS .. .since this
`
`would allow for automatic reuse of an address
`
`and since examiner notes the use of dynamic
`
`IP address assignment in a TCP/IP network are old and well known
`
`and are useful to
`
`eliminate the burdensome task of manually assigning IP addresses for all networked computers.”
`
`24.
`
`I do not agree with the conclusion drawn by the Office Action on the combinability of
`
`NetBIOS and RFC 1531. The Office Action speculates, with hindsight, as to why a person of
`
`ordinary skill might want to combine the two references, but does not acknowledge the problems
`
`that would arise in doing so, and does not provide any prior art that would indicate how the
`
`problems that dynamic addressing would bring into a NetBIOS type system could be resolved by
`
`those of ordinary skill at the time the patent was filed. In the context of point-to-point
`
`communication, widespread use of dynamically assigned addresses does not solve NetBIOS’s
`
`problems, it creates further problems.
`
`25.
`
`Dynamically assigned addresses were known, and the patent in re-examination
`
`specifically states in that regard, “Due to the dynamic nature of temporary IP addresses of some
`
`devices accessing the Internet, point-to-point communications in realtime of voice and Video
`
`8
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 014
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 014
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 CPR. 1.132
`
`have been generally difficult to attain.” Col. 1, lines 53—56. However, the Office Action has not
`
`shown that one of ordinary skill in the art would have made the proposed combination of
`
`dynamically assigned addresses with NetBlOS.
`
`26.
`
`Section 15.1.7 of the NetBIOS reference (entitled “Consistency of the NBNS Data Base")
`
`recognizes that the association between a node, a registered name and an IP address is tenuous,
`
`even in an environment that uses static IP addresses. “Even in a properly running NetBIOS
`
`scope the NBNS and its community of end-nodes may occasionally lose synchronization with
`
`respect to the true state of name registrations.” To minimize the impact of this problem, the
`
`reference states, “Various approaches have been incorporated into the NetBlOS-over-TCP
`
`protocols” which it then proceeds to describe.
`
`27.
`
`However, by incorporating DHCP and adopting dynamic address allocation as used by
`
`Internet access providers, the synchronization problem would become more disruptive, not less.
`
`Dynamic addressing would have introduced a new uncertainty to the relationships among the
`
`NBNS and its community of end-nodes and a new set of obstacles to NetBIOS synchronization
`
`that are not addressed by the NetBIOS reference. Consider the case of a node that is turned-off
`
`and then subsequently turned back on, or a node that has simply lost its Internet connection for
`
`some technical reason or whose DHCP lease has expired and then re-established a
`
`connection. In a dynamic addressing environment, such a node would most likely obtain a new
`
`IP address when it was turned back on that was different than the one it had when it registered its
`
`name. This change could lead to any number of node-name-IP address synchronization
`
`problems for the disclosed NetBIOS protocols.
`
`28.
`
`For example, because the NBNS does not know the node’s new address, the NBNS
`
`would be unable to send to the node a Name Release Request or a Name Conflict Demand or
`
`request that the node send it a Name Status Request. Because communication fiom the node
`
`would be originating at a new address that was not recognized by the NBNS, a node’s response
`
`to a Name Query Request (assuming it somehow knew that its name had been challenged,
`
`perhaps from before it lost network connectivity) would not be recognized. A node would also
`
`9
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 015
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 015
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer—Patel under 37 CPR. 1.132
`
`be unable to confirm its association with registered names by sending Name Refresh Request
`
`packets to the NBNS.
`
`If a session between two NetBIOS applications were cut-off, re-
`
`establishing the communication would be especially difficult where the ability of a called entity
`
`to obtain both its associated name and its associated IP address were in doubt. As a result, the
`
`Office Action has not demonstrated that a solution to the problems created by exposure of
`
`NetBIOS to DHCP and dynamic addressing has been addressed by any of the applied
`
`references. 1
`
`29.
`
`The Office Action also has not identified anything in the cited art that suggests how a
`
`person of ordinary skill is to go about the redesign of NetBIOS and the solving of obstacles to
`
`NetBIOS operation that are created by Internet access; problems that were recognized and left as
`
`warnings unresolved in the NetBIOS reference.2
`
`30.
`
`In View of the foregoing, claim 43 is patentable over NetBIOS alone or over NetBIOS in
`
`combination with RFC 1531:
`
`31.
`
`NetBIOS and RFC 1531 also do not teach “a. program code configured to access a
`
`directory database. . .having a network protocol address for a selected plurality of processes
`
`having on-line status with respect to the computer network.” While NetBIOS uses name
`
`entries with “active” statuses as part of its name management process, an analysis of how that
`
`“active” status is used shows that “an active name” is not synonymous with an “on—line status
`
`with respect to the computer network.” An active name simply refers to a name that has been
`
`1 Besides dynamic addressing, Internet access would pose other challenges to a NetBIOS system. For example,
`because NetBIOS was designed for use on local area networks with small numbers of computers, trust among the
`network participants is assumed. That assumption cannot be transferred to a global Internet made up of unknown,
`and sometimes malevolent, entities. An implementation of NetBIOS on the public Internet would necessitate non-
`trivial adaptations to ensure that its services perform correctly and return accurate information. There is no
`discussion of security issues in the cited references. See Exhibit 2, from
`
`the Internet to disable NetBIOS over TCP/IP in order to solve their security problems.
`2 The cited references go out of their way to avoid describing how a NetBIOS protocol might work in inter—
`connected network cnvironments that that are less complex than the Internet and that predate DHCP. See Section
`4.6 (“The proposed standard recognizes the need for NetBIOS operation across a set of networks interconnected by
`network (IP) level relays (gateways) However, the standard assumes that this form of operation will be less
`frequent than on the local MAC bridged-LAN”)
`
`l 0
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 016
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 016
`
`

`

`Re-Examination of Patent No. 6,13 1,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer—Patel under 37 C.F.R. 1.132
`
`registered and that has not yet been de—registered, independent of whether the associated
`
`computer is or is not on-line. As shown on page 447 (and reproduced below), the Node_Name
`
`entries stored with respect to a NetBIOS Name Server contain a series of fields including the
`
`“ACT” field.
`
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`32.
`
`The ACT field is a single bit field (in bit 5) that signifies an “Active Name Flag. All
`
`entries have thisflag set to one (1).” (Emphasis added.) If all name entries have this flag set to
`
`one (1), then the NetBIOS name server cannot be using the Active Name Flag as a means of
`
`separately tracking whether the entity that owns the name is “active,” let alone what its “on-line
`
`status” might be.
`
`1 1
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 017
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 017
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No.: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 C.F.R. 1.132
`
`33.
`
`The NetBIOS reference also does not teach that the active status of a name in the
`
`NetBIOS server is an indication of the active status of the owner of that name. To the contrary,
`
`when information about whether the owner of a name is “active” may be relevant, for example
`
`when a new entity seeks to register a name that has already been registered in the NetBIOS name
`
`server, the NetBIOS reference describes an elaborate set of interactions used to test whether the
`
`existing owner of the registered name is active or inactive. It does not rely on the fact that the
`
`name is active in the NetBIOS name server (See Section 15.2.2.2 and 15.2.2.3 entitled “Existing
`
`Name and Owner is Inactive”).
`
`34.
`
`The NetBIOS reference also does not teach that an acquired IP address can be reasonably
`
`relied upon by a requesting end-node to confirm the “on-line status” of an end-node associated
`
`with a sought name. The NetBIOS reference describes at least two different scenarios where a
`
`second end-node sends a rejection response to the first end-node notwithstanding thefact that a
`
`second end-node is connected to the computer network and active with respect to the sought
`
`name. See Section 16.1.1 (“There exists a NetBIOS LISTEN compatible with the incoming call,
`
`but there are inadequate resources to permit establishment of a session. . .The called name does,
`
`in fact, exist on the called node, but there is no pending NetBIOS LISTEN compatible with the
`
`incoming call”). No distinction is made in the reference between the rejection response in these
`
`cases and the rejection response in cases where the called name does not exist on the called end-
`
`node. See also section 16.1.1 which state “In all but the first case, a rejection response is sent
`
`back over the TCP connection to the caller.”
`
`35.
`
`Thus, the limitation “program code configured to access a directory database, the
`
`database having a network protocol address for a selected plurality of processes having on—line
`
`status with respect to the computer network, the network protocol address of each respective
`
`process forwarded to the database following connection to the computer network” of claim 43 is
`
`not taught by the NetBIOS reference alone or in combination with RFC 1531, and I believe that
`
`the patentability of claim 43 should be confirmed.
`
`12
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 018
`
`Petitioner Vonage Holdings Corp. et al. - Exhibit 1023 - Page 018
`
`

`

`Re-Examination of Patent No. 6,131,121
`Control No: 90/010,424
`Filed:
`February 24, 2009
`Declaration of Ketan Mayer-Patel under 37 CPR. 1.132
`
`36.
`
`Claim 44 recites ‘Tollowing connection ofthe first process to the computer network
`
`forwarding to the address server a network protocol address at which the first process is
`
`connected to the computer network.” As was discussed above with respect to the recitation of
`
`“the network protocol address of each respective process forwarded to the database following
`
`connection to the computer networ ” in claim 43, NetBIOS does not teach the claimed dynamic
`
`address assignment. Moreover, it would not have been obvious to combine NetBIOS and RFC
`
`1531 for the reasons set forth above with respect to claim 43.
`
`37.
`
`Claim 44 also recites “querying the address server as to whether the second process is
`
`connected to the computer network.” As was discussed above with respect to the recitation of
`
`“processes having on-line status with respect to the computer network” in claim 43, NetBIOS
`
`does not teach that an active name in NetBIOS is synonymous with “whether the second process
`
`is connected to the computer network.” An active name simply refers to a name that has been
`registered and that has not yet been de-registered, independent of Whether the associated
`
`computer is or is not connected to the computer network. Thus, claim 44 is patentable over both
`
`NetBIOS alone and the combination of NetBIOS and RFC 1531.
`
`Claims 1-7 and 32-42
`
`38.
`
`Claim 1 recites “program code for transmitting to the server a network protocol address