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`IPR2014-01366, Paper No. 45
`IPR2014-01367, Paper No. 41
`IPR2014-01368, Paper No. 44
`January 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD, SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUG
`TELECOMMUNICATIONS AMERICA, LLC, CISCO
`SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01366 (Patent 6,108,704 C1)
`Case IPR2014-01367 (Patent 6,009,469 C1)
`Case IPR2014-01368 (Patent 6,131,121 C1)
`____________
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`Held: November 19, 2015
`____________
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`
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`BEFORE: KALYAN K. DESHPANDE, TRENTON A. WARD,
`and BART A. GERSTENBLITH, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`November 18, 2015, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, 9th Floor, Alexandria,
`Virginia.
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`571-272-7822
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`IPR2014-01366, Paper No. 45
`IPR2014-01367, Paper No. 41
`IPR2014-01368, Paper No. 44
`January 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD, SAMSUNG
`ELECTRONICS AMERICA, INC., SAMSUG
`TELECOMMUNICATIONS AMERICA, LLC, CISCO
`SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01366 (Patent 6,108,704 C1)
`Case IPR2014-01367 (Patent 6,009,469 C1)
`Case IPR2014-01368 (Patent 6,131,121 C1)
`____________
`
`Held: November 19, 2015
`____________
`
`
`
`
`
`BEFORE: KALYAN K. DESHPANDE, TRENTON A. WARD,
`and BART A. GERSTENBLITH, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`November 18, 2015, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, 9th Floor, Alexandria,
`Virginia.
`
`
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`WILLIAM A. MEUNIER, ESQUIRE
`MICHAEL C. NEWMAN, ESQUIRE
`Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, P.C.
`One Financial Center
`Boston, Massachusetts 02111
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`BRIAN K. ERICKSON, ESQUIRE
`JEFFREY COLE, ESQUIRE
`DLA Piper
`401 Congress Avenue
`Suite 2500
`Austin, Texas 78701-3799
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`ON BEHALF OF THE PATENT OWNER:
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE DESHPANDE: Good afternoon everyone.
`This afternoon we'll be hearing the oral arguments for
`IPR2014-01366, IPR2014-01367, IPR2014-01368, Samsung
`Electronics, Samsung Electronics America, Samsung
`Telecommunications America, v. Straight Path IP Group. IPRs
`2015-01006, 01007, 01011 have joined including Cisco and
`Avaya to this proceeding.
`I'm Judge Deshpande. To my right is Judge
`Gerstenblith. And on our screen today is Judge Ward. Why don't
`we have the appearances first. Who do we have from Petitioner?
`MR. ERICKSON: Your Honor, Brian Erickson and
`Jeff Cole, DLA Piper for Petitioner, Samsung.
`MR. MEUNIER: Bill Meunier and Michael Newman
`from Mintz Levin for Straight Path.
`JUDGE DESHPANDE: Thank you. I want to remind
`everybody now that we have Judge Ward on the screen, he won't
`be able to hear what you are saying if you don't speak into the
`microphone. So from this moment on, any time you have
`anything to say please step up to the microphone and speak into
`the microphone. Also identify on your demonstratives what slide
`number or where you are referencing in a reference, anything, so
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`that we have a clear record for our stenographer and for Judge
`Ward remotely.
`We've set forth the procedure for today's hearing in our
`trial order but just to remind everybody, we've allocated
`90 minutes for each side to be allocated as you see fit amongst the
`three cases. Just to avoid any confusion, please identify the IPR
`that you are speaking on when you are speaking on it so that we
`are not confused as to what case we are talking about.
`Petitioner bears the burden of proof. You will go first.
`You may reserve time for rebuttal. If you want to give me
`advance notice of how much time you want to reserve, I will give
`you a warning. If not, I'll give both sides warnings when you are
`approaching or nearing the end of your time.
`After Petitioner has completed, Patent Owner will have
`a chance. We've allocated about three hours for today's hearing.
`So if we reach a point where a break is needed or a break is
`deemed necessary, I'll just go ahead and call it and we'll take a
`five- or ten-minute break as needed. Does anyone have any
`questions? With that, Petitioner you may begin when you are
`ready.
`
`MR. ERICKSON: Thank you, Your Honor. May it
`please the Court, I'm going to start by addressing IPR-1366. The
`parties have primarily briefed and discussed all the issues in the
`context of claim 1. That's for the '704 patent. So I will start on
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`that and probably finish on that in my opening unless Patent
`Owner goes somewhere else in their response.
`Subject to the direction of the Board, I would like to
`start by addressing four undisputed teachings of the WINS
`reference and then I'll address the dispute with respect to the term
`"process" and then connected to the network.
`The first undisputed teaching of the WINS reference is
`that the WINS reference teaches that a computer typically
`registers itself when it starts. In other words, you have a piece of
`hardware. It starts booting up running the Windows NT
`operating system, which is a program, and it registers. That's
`what it teaches. That's the first teaching.
`JUDGE DESHPANDE: I don't want to interrupt --
`JUDGE WARD: Just so the record is clear -- sorry to
`interrupt. Just so the record is clear, when you are identifying the
`WINS reference, you are identifying what we refer to in the
`decision to institute as the Microsoft Manual; is that correct?
`MR. ERICKSON: That's correct. It's Exhibit 1012.
`JUDGE DESHPANDE: I think we all understand the
`reference. Just to make it clear, you can refer to it as WINS or
`Microsoft Manual. Just for the record, in this case it was
`Microsoft Manual.
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`IPR2014-01367 (Patent 6,009,469 C1)
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`MR. ERICKSON: Thank you, Your Honor. The slide I
`began with was Petitioner's slide 39 citing to the WINS reference,
`Microsoft Manual at Exhibit 1012, page 61.
`The second undisputed teaching of the WINS reference
`is that a registered name is released if a WINS-enabled computer
`is shut down properly. This is Petitioner's slide 40 citing to the
`declaration of Patent Owner's expert which is Exhibit 2023 at
`paragraph -- I'm sorry. I don't have a paragraph number. And the
`expert himself is citing back to the WINS reference at page 69.
`So we have register on startup, release the name when it's shut
`down properly.
`The third undisputed teaching is that in that period
`when it's registered and until it's released, the name is available as
`a lookup in the lookup table for any querying processes. That is
`at Patent Owner's response at page 50 and citing both the WINS
`reference and the Net BIOS reference.
`The fourth undisputed teaching is that WINS teaches a
`renewal interval as short as 40 minutes in case something goes
`wrong. And that's at exhibit -- actually, Patent Owner's
`demonstrative slides 30 to 31 and at Exhibit 2017 at pages 1 to 2.
`Those four teachings are important to keep in mind
`because there are no proposed constructions, no explicitly
`proposed constructions and no proper construction of the claims
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`that could possibly exclude that reference. That reference makes
`any -- these claims obvious under any possible construction.
`JUDGE WARD: Counsel, how does Petitioner propose
`that we construe the term "process"?
`MR. ERICKSON: The term "process" in isolation, it
`would be acceptable to Petitioner to take Patent Owner's proposed
`construction. We agreed to that in the underlying litigation.
`Petitioner's expert doesn't have an objection to that. The problem
`gets when you go beyond process and put it into the context of
`the claim and what the Patent Owner attempts to do with that
`afterwards.
`JUDGE WARD: Should we construe it in the context
`of the claim?
`MR. ERICKSON: Yes, it should be construed in the
`context of the claim. We don't have a problem with this
`construction in the context of the claim either. But when you talk
`about what does it mean to have a running instance of a computer
`program connected to the network, that's where we have an issue.
`JUDGE WARD: Counsel, explain to me specifically
`with respect to claim 1 of the '704 patent it recites, “receiving a
`network protocol address of the second process from the server.”
`How does the WINS reference teach that particular claim
`limitation?
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`IPR2014-01367 (Patent 6,009,469 C1)
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`MR. ERICKSON: I don't think there's any dispute that
`when the first WINS reference -- I'm sorry, when the first client
`queries the WIN server and it provides the name of the Windows
`NT operating system and PC that it wants to communicate with,
`the WIN server will provide back the IP address of that computer
`so that then the computer can address the second process. In
`other words, the second instance of Windows NT running on the
`second computer directly.
`JUDGE WARD: So the WINS reference teaches
`registering the computer; is that correct?
`MR. ERICKSON: It teaches registering a computer
`running Windows NT.
`JUDGE WARD: So your proposal is that the NT is the
`process that is then being registered?
`MR. ERICKSON: That is correct. Windows NT is a
`running computer program -- I'm sorry?
`JUDGE WARD: So what is it that's actually -- the
`network protocol address of the second process, it sounds like
`you are telling me that what's registered is an IP address?
`MR. ERICKSON: Correct.
`JUDGE WARD: How does that IP address indicate
`Windows NT? Doesn't it simply indicate the network card
`resident in the machine itself? Not the application running on the
`machine?
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`MR. ERICKSON: That is correct. An IP address
`merely indicates an address on the network, specifically a node
`on the network.
`JUDGE WARD: The claim requires that you receive a
`network protocol address of the second process.
`MR. ERICKSON: That is correct. And that network
`address is the address of the second process. There's no other
`address for that second process. That is where that address exists
`on the network.
`JUDGE WARD: So essentially you see no distinction
`to a process in a computer?
`MR. ERICKSON: There are differences but not with
`respect to a network address. A network address is where you
`find something on the network. Once you reach the node on the
`network and you deliver that message or whatever the
`communication to that node on the network, then the computer
`takes it off the network and will internally route it according to
`however the computer is organized. But whatever is on that
`computer from the network perspective is that the address of that
`node on the network.
`JUDGE WARD: You just told me that I should
`construe the term "process" to mean a running instance of a
`computer program or application. So how is it that receiving a
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`node on the network is somehow indicative of the Windows NT
`process a running instance of a computer program?
`MR. ERICKSON: Well, receiving -- so a couple things.
`First, we don't think the term needs to be construed at all. We
`wouldn't object if the Board takes Patent Owner's proposed
`construction. We don't think it needs to be construed. We think
`that it's not necessary, but it would be acceptable.
`Now, when the broader term that we are discussing now
`is the network protocol address of the second process and that is
`sufficient -- that is an IP address. It is the address of everything
`on that computer. It's the address of the user, the person. It's the
`address of all the processes running on that computer and it's the
`address of the processing unit. That's exactly how it's described
`in the specification. Those three things, the human user and the
`processing unit, are really the only things disclosed in the
`specification and they are at the network at an IP address.
`JUDGE WARD: Counsel, isn't it possible that you are
`telling me that Windows NT operating system executing on the
`computer, those in combination account for the second process
`and therefore, the IP address of that computer is indicative of that
`Windows NT application. Couldn't I have multiple operating
`systems executing simultaneously on a computer and couldn't
`those be assigned a different address?
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`MR. ERICKSON: No, not a network address. Not a
`different IP address. If you had multiple physical taps into the
`network, then you could have different -- and you had operating
`systems assigned to those different physical connections network,
`then, yes. But at the level of the IP address, the level of this
`disclosure, you know, you could create a computer that had
`multiple IP addresses and assigned different operating systems to
`each. But here and what's taught in WINS is you have one
`operating system and it has one IP address. And that's what's
`taught and we believe satisfies the claim.
`JUDGE WARD: Thank you.
`MR. ERICKSON: There is something at a level of
`detail that's not described at all in the intrinsic record. Normally
`what happens here is there is a second piece of information is
`transmitted, a port number. This is not described in the patent
`specification at all in any of these patents. And so they use that --
`but that's for internal routing once you get off the network and
`into the computer. And that can further distinguish between
`different processes. And the only disclosed embodiment, there's
`only two pieces of information, the user's e-mail address. Not a
`process name. Not a processing unit name. The user's e-mail
`address and then the IP address. And so the connection server
`stores those two things. Then alternatively it can also store a flag
`associated with that which we'll discuss later which is the
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`equivalent of the released status in WINS. But it's just an e-mail
`address of the user. That's how it's described in the patent. The
`user's e-mail or the person's e-mail address and the IP address of
`the machine. That's all that's stored at the connection server and
`that's all that's provided.
`You send an e-mail -- if this were a
`means-plus-function claim, the structure would be an algorithm
`for sending an e-mail address to the connection server and then
`code for receiving an IP address. That would be the structure.
`That's the only thing disclosed and linked. It's not a
`means-plus-function claim, but just to highlight what's disclosed
`and the proper construction of these claims needs to include those
`things.
`
`JUDGE WARD: Counsel, just so we are clear, are you
`referencing the disclosure at column 5, line 59 callee's e-mail
`address indicating the callee is active and online?
`MR. ERICKSON: That's correct. Again, callee is
`referring to the person. It's not even referring to the process.
`That entire column 5 and column 6 which have been the subject
`of so much dispute, if you read those two columns, they just talk
`about the user and they call the user the callee and the caller.
`And they talk about the processing unit and they talk about e-mail
`addresses and IP addresses. Nowhere do they discuss a process.
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`So there were three brief points I wanted to make on
`process and that is Windows NT operating system is a computer
`program. It satisfies process under any construction which is why
`we don't think process needs to be construed explicitly.
`This looks like it may be disputed but maybe counsel
`can clear it up for us today. In the Patent Owner's response,
`page 33, footnote 7, they said that the difference between
`registering a computer and a process is registering an application
`name. We don't think that's required. That's not in any proposed
`construction. It's not in the claim. It would exclude the preferred
`embodiment that registers an e-mail address. So we think that's
`wrong.
`
`And it came up at the Patent Owner's expert deposition
`where we were discussing -- and I'm going to go to demonstrative
`slide 7. Petitioner's slide 7, the Windows NT computer program,
`we had a diagram of it out of the page 12 of the Exhibit 1012 and
`this was in front of the Patent Owner's expert. And he said that
`this is not a process in the claims because it's an operating system.
`So that's not reflected in Patent Owner's proposed
`construction. Patent Owner's proposed construction is application
`or a computer program. We think Windows operating system
`satisfies that under any proposed construction.
`They don't make this distinction on Net BIOS. Net
`BIOS discloses that an application can register exclusive use of a
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`name. That's the Exhibit 1014, the Net BIOS reference at the
`original reference page 360.
`The second thing I wanted to mention about process is
`that, and this is something I have already touched on with respect
`to your question, Judge Ward, the claim process connected to a
`network does not require registering the name. You just need to
`look up index point with the IP address. That's why they disclose
`the use of e-mail.
`The third thing is the Patent Owner's -- even under an
`improperly narrow construction we think that WINS and Net
`BIOS still discloses. As we've pointed out before, the name that
`is saved at the connection server actually includes NT in the
`name. We don't think that's really relevant under a proper
`construction but it is there. And then in Net BIOS again it says
`that an application can take exclusive use of a name and in which
`case that name would per se be the application's name.
`That's all I had on process. I want to move to connected
`to the network unless there are any questions.
`So we do have an explicit claim construction dispute on
`what connected to the network means. Unfortunately, it's not
`joined properly and so the record is in danger of being unclear.
`So regardless of how the Board rules, it would be helpful for the
`Board to say exactly what's required of connect to the computer
`network. So far Petitioner agrees with the Board's construction.
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`The Board properly construed that connected to the network
`encompasses being online which can be done by registering an
`address with server.
`The Patent Owner, unfortunately, does not offer an
`express construction of connected to the network and that's a big
`problem here because the Board can't choose between the two
`and then properly apply Patent Owner's construction. What the
`Patent Owner does do is they argue that it means something that
`would exclude the prior art. And there are a couple of bullets
`here. We ran through these. I'm moving on to Petitioner's slide
`12. And these are all in their Patent Owner's response.
`They try to distinguish the top highlighted here database
`does not ensure that the related device is currently running. The
`claims don't require ensure, their claim construction doesn't
`require ensure and they don't have require running.
`The second bullet, you see the second line, there is no
`guarantee that a member has, and it continues. The claims don't
`require a guarantee. Their claim construction doesn't expressly
`require a guarantee. The third bullet at the bottom says at that
`moment online and available to communicate. The claims don't
`require available to communicate. Their claim construction
`doesn't require it. But they are making these arguments. And so
`whatever the Board rules, it needs to be very clear about if it's not
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`going to use the current construction and expressly proposed
`construction, what construction is required.
`I'm going to skip one slide and go to Petitioner's slide
`14. Patent Owner's expert --
`JUDGE WARD: I want to make sure I'm clear about
`the argument you are making here. If we adapted the
`construction set forth in the decision to institute, are you saying
`that the record would be unclear at that point?
`MR. ERICKSON: No. The record is clear on what the
`Board has done. What the record is threatened by the patentee
`arguing for what they say is a plain language construction but
`then applying it in a way that does not relate to their proposed
`construction.
`JUDGE WARD: Patent Owner does set forth at
`page 21 of their response a proposed construction of the claim
`phrase "is connected to the computer network", correct?
`MR. ERICKSON: That's correct. And that's on
`Petitioner's demonstrative slide 11. That's where we've gotten
`this from. But you notice in their proposed construction, they use
`the words "connected to the computer network." So it's
`unhelpful. They didn't construe the part of the term that's in
`dispute.
`JUDGE DESHPANDE: Counsel, in our decision to
`institute we gave what this limitation encompasses. We basically
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`found an example in the specification and say it must include at
`least this example. It could include more. That was at a point
`where the patent had not expired. Has the claim construction
`changed since institution?
`MR. ERICKSON: No, Your Honor.
`JUDGE DESHPANDE: Have you set forth a claim
`construction for this limitation?
`MR. ERICKSON: Yes, Your Honor. On the slide here
`and citing to our petition online, e.g., registered with a server.
`JUDGE DESHPANDE: Okay.
`MR. ERICKSON: And you know, the previous appeal
`which is of record, all the materials are of record, the previous
`IPR in the Sipnet case, there was a lot of dispute of which type of
`claim construction to use, broadest reasonable or Phillips. But
`nowhere did anyone actually explain how that impacted the
`proposed construction. So they had a big fight about what
`standard to apply and it's still going on at a Federal Circuit now of
`which doctrine the Federal Circuit should apply. But no one has
`ever said here is how it makes a difference in this case.
`JUDGE DESHPANDE: You are suggesting it hasn't
`impacted claim construction at all. It's the same whether we are
`using broadest reasonable or Phillips?
`MR. ERICKSON: That is correct. And since Patent
`Owner is not construing the claim language in dispute, it doesn't
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`really impact that. So what I'm forced to do, unfortunately, the
`reason I'm going through what Patent Owner is arguing, how they
`are trying to distinguish the prior art is because they have an
`implicit claim construction that requires a perfect system, perfect
`computer, perfect network, perfect users. And they can't back off
`that, because if you back off it at all, what you get is relatively
`current. The patent specification says relatively current is 2 to
`24 hours. So it's either perfect or it's relatively current.
`And they didn't want to put perfect in the claim
`construction. I understand why. There is no such thing as a
`perfect system, but they made the argument in their brief. And
`then the Patent Owner's expert in his declaration, I want to
`specify declaration because he backed off this in his deposition in
`a very astounding way. In his declaration you have three bullets
`here. This is Petitioner's slide 14. When he's recounting the
`claim, he enters the word only. And this emphasis we've added,
`italics and underlined, he stuck "only" in front of the claim. And
`then he distinguished WINS by saying it's not perfect in the
`second bullet. In the third bullet he says, is no guarantee. So the
`way they are trying to distinguish the art is this claim is a perfect
`system.
`
`JUDGE DESHPANDE: Does the '704 specification
`identify anything that would happen in a system that isn't perfect?
`I guess my question is, when we are talking about WINS, WINS
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`describes a situation where a computer has possibly not been
`properly shut down. So it stays in the lookup table for an
`unfortunate amount of a time. What happens in the '704 patent
`system if a computer shuts down incorrectly?
`MR. ERICKSON: The exact same thing. There are
`two things I want to point to. First of all, column 5, it says we are
`just going to make sure this is relatively current. So that per se
`means that sometimes it won't be absolutely perfect. And the
`second issue which is going to be at the very end was we asked
`this question of their expert because their expert, they were
`relying so heavily on column 6, column 5 and then you have
`column 6 that has the manual logoff procedure. And the manual
`logoff procedure -- and this is on Petitioner's slide 21. This is
`citing the top of column 6. You notice what the manual logoff
`procedure does. It requires that the processing unit send a logoff
`message. So you are requiring the computer to do something.
`Now, remember the preferred embodiment is a
`Windows computer. So you have got a Windows computer that's
`supposed to do something. Now, Windows is telling you users
`aren't perfect, computers aren't perfect, networks aren't perfect.
`We have the blue screen of death. They haven't solved that. So
`the top of column 6 does not disclose a perfect system. It still
`requires the processing unit to send a logoff message to the
`server.
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`So we had their expert in his deposition and we asked
`him the very thing that Your Honor just asked and we got a
`couple of remarkable answers. First we started, we went through
`column 5 and column 6 and this is demonstrative slide 27,
`Petitioner 27, and as the Board knows, these two columns have
`been front and center in all the briefing. And we asked him, does
`what's described there at column 5, line 15 to column 6, line 16,
`does that embody claim 1 of the '704 patent?
`And his answer at the bottom is, I don't believe I have
`formed an opinion on my declaration related to that.
`So because of the importance of this time stamping, you
`see Petitioner's slide 29, I said, well, what about this in particular,
`column 5, line 39 to 44, this is the time stamping that's 2 to
`24 hours, is that enough? Is that good enough for your system?
`Answer: That's not something I have opined on.
`It's a startling admission given how this has been the
`focus of all the briefing and in particular this functionality which
`is undisputedly in the prior art that teaches it can be 40 minutes
`time stamp and he doesn't have an opinion on that.
`JUDGE DESHPANDE: Counsel, do you believe the
`limitation "is connected to the computer network" as a temporal
`limitation implicitly drawn into that? Is that why we are
`concerned about time stamps? What is requiring us to go back
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
`
`and check to see how current this data is or isn't? Is that a
`limitation from the spec that needs to be drawn in?
`MR. ERICKSON: I don't think it needs ton drawn in.
`It certainly doesn't need to be drawn in to address the issues
`before the Board. And because the prior art is even more current,
`teaches and makes obvious a system that's more current than
`what's disclosed in the patent, I don't think it's necessary for the
`Board to figure out exactly how much, if any --
`JUDGE DESHPANDE: What do you mean by more
`current?
`MR. ERICKSON: So the WINS discloses, as we've all
`agreed, if everything is working properly, it teaches that the
`system is working properly, you will release the name when you
`shut down. Things happen and so there's the renewal -- it's also
`taught to have the renewal backup. It's basically like garbage
`cleanup. When you have processes to shut down, they have
`memory that they are supposed to deallocate that didn't. Same
`thing in networks. So you have this garbage cleanup and they
`teach that you can do it as short as 40 minutes. They teach longer
`intervals, but they do teach that if you want 40 minutes, you can
`do 40 minutes. And that teaching makes this type of relatively
`current obvious. So 2 hours to 24 hours, that's obvious in light of
`the ranges disclosed in the WINS reference. We have this all the
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`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
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`time in patents and prior art when you have ranges disclosed.
`This is an obvious range.
`JUDGE GERSTENBLITH: Counsel, is there any other
`way that the patent discloses determining whether the second
`process is connected aside from looking at the database?
`MR. ERICKSON: No.
`JUDGE GERSTENBLITH: So what I'm getting is the
`only -- your position is the only description of this is look at the
`database. Both the spec here and the reference say that a name or
`e-mail could remain in the database longer than when the person
`may actually be online but under either scenario, it's operating the
`same way.
`MR. ERICKSON: That's correct.
`JUDGE GERSTENBLITH: So if this claim is to have a
`legitimate description and construction, it must be read to
`encompass this.
`MR. ERICKSON: That's correct, Your Honor.
`JUDGE GERSTENBLITH: And we can't get into
`specifically elements of written description but if for some reason
`an argument were to be made that this claim encompasses
`something else that's not that, one might say it's not described in
`the spec.
`MR. ERICKSON: That's correct, Your Honor. You are
`right. The most poignant question for the Board at this stage
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