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`________________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
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`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-013661
`U.S. Patent No. 6,009,704
`
`________________
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S ADDITIONAL BRIEFING
`
`
`1 IPR2015-01011 has been joined with this proceeding.
`
`
`
`Table of Contents
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`
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`Page
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`The CAFC’s Construction Of “is connected” Is Controlling .......................... 1
`I.
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction .................................................................... 2
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network ................................................................... 3
`B. Whether a name has been released does not indicate whether
`any particular computer is connected to the computer network ........... 4
`The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released ........................................ 5
`III. Petitioner’s Brief Fails to Address the CAFC’s Decision, But Instead
`Raises New Arguments That Encourage the Board to Take a Position
`That Has Already Been Reversed by the Federal Circuit ............................... 5
`IV. There Is No Estoppel Concerning The “Process” Limitations ........................ 7
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`C.
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`Case No. IPR2014-01366
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`TABLE OF AUTHORITIES
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`Cases Page(s)
`Phonometrics, Inc. v. Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ............................................................................ 2
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`No. 15-1212 (Fed. Cir. Nov. 25, 2015) ........................................................ 1, 6, 7
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`TABLE OF ABBREVIATIONS
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`Case No. IPR2014-01366
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`ABBREVIATION
`Br.
`CAFC
`Pet.
`PR
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`R
`Sipnet
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`WORD PHRASE
`Petitioner’s Supplemental Brief
`Court of Appeals for the Federal Circuit
`Petitioner’s Petition for Inter Parties Review
`Straight Path’s Patent Owner Preliminary
`Response
`Straight Path’s Patent Owner Response
`Federal Circuit Opinion in Straight Path IP Group,
`Inc. v. Sipnet EU S.R.O., No. 15-1212
`(Fed. Cir. Nov. 25, 2015) (Exhibit 2024)
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`Case No. IPR2014-01366
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`When the CAFC rejected Sipnet’s and Petitioner’s claim construction
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`arguments in the Sipnet Appeal, Petitioner effectively lost its IPR. In Petitioner’s
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`Petition and Reply Brief, it provided no argument or evidence that WINS and
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`NetBIOS disclosed the “is connected” limitations under Straight Path’s—and now
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`the CAFC’s—construction. Instead, Petitioner chose to rely solely on its proposed
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`“registered” construction, which the CAFC has now explicitly rejected: “[i]t is not
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`a reasonable interpretation of the claim language, considering its plain meaning, to
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`say that it is satisfied by a query that asks only for registration information,
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`regardless of its current accuracy.” Sipnet at 7.
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`I.
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`The CAFC’s Construction Of “is connected” Is Controlling
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`Representative challenged claim 1 is directed to a “computer program
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`product” that (1) transmits to the server a “query as to whether the second process
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`is connected to the computer network,” and (2) receives the second process’s
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`network protocol address from the server “when the second process is connected
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`to the computer network.” (R at 36; ’704 patent at claim 1; see also claims 11-12,
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`14, 16, 22-23, 27, 30-31).
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`In Sipnet, the CAFC construed this same “is connected to the computer
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`network” limitation “and the counterpart claim phrases that the parties agree bear
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`the same meaning . . . to mean ‘is connected to the computer network at the time
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`that the query is transmitted to the server.’” Sipnet at 13 (emphasis added). The
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`CAFC’s construction is controlling here, and Petitioner does not argue otherwise.
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`See, e.g., Phonometrics, Inc. v. Westin Hotel Co., 350 F.3d 1242, 1244-1245 (Fed.
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`Cir. 2003).
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`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction
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`Unlike the challenged claims under the CAFC’s construction, WINS and
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`NetBIOS do not describe any mechanisms for tracking or determining whether a
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`computer (much less the claimed process) is connected to the computer network at
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`the time of the query, nor do they describe any mechanism for sending the
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`requested target’s address dependent on if that target is in fact connected to the
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`computer network at the time of the query. (R at 1-2, 16-21, 35, 48-51). Indeed, the
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`art explicitly admits it cannot: “[a]ny name-to-IP address mapping registered with
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`a WINS server can be provided reliably as a response to a name query. However, a
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`mapping in the database does not ensure that the related device is currently
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`running.” (Ex. 1012 at 67-68; R at 20-21, 51).
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`This is because whether a computer is online is not tracked or considered by
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`the WINS and NetBIOS name servers. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at
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`378-77, 395-99; R at 2, 16-21, 35, 48-51). Rather, name servers have a different
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`purpose, i.e., enabling one computer to request another target computer’s IP
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`address by name. (Ex. 1012 at 61-63, 65, 67-69, 122; Ex. 1014 at 378-79, 395-99,
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`407; R at 14-17). To this end, the WINS and NetBIOS name servers have two
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`primary functions: (1) Registration, by which the name server ensures that two
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`different computers do not claim the same name and (2) Resolution, by which the
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`name server determines and returns a computer’s address when that address is
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`requested using the computer’s name. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at
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`378-79, 395-99, 407-10; R at 15-21, 30-32, 48-51). In performing these functions,
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`the WINS and NetBIOS servers do not check or rely on whether any particular
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`computer (or process) is online. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at 395-99,
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`407-10; R at 1-2, 16-21, 35, 48-51).
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`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network.
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`During Registration, a computer tries to register a name, and the name server
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`then checks if another computer is already using that name. (Ex. 1012 at 61-63, 65,
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`67-69; Ex. 1014 at 379, 395-401, 403-06, 413-15; R at 14-16, 18-20, 30-32, 48-
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`51). If any computer previously registered that name, the server checks if that
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`computer has relinquished its claim to (has “released”) that name. (Ex. 1012 at 61-
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`63, 67-69; Ex. 1014 at 379, 395-401, 403-06, 412, 413-15; R at 15-17, 48-50).
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`During Resolution, a first computer asks the name server for a second computer’s
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`address using that second computer’s name (a “name query”); the server then
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`searches its database for an address mapped to the queried name and, if a mapping
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`exists, returns that address to the first computer. (Ex. 1012 at 61-63, 65, 67; Ex.
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`1014 at 396, 407-10, 416-18; R at 14-17, 20-21, 31, 49, 51).
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`At no time during Registration or Resolution does the WINS/NetBIOS name
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`server try to determine if any computer is currently online. (Ex. 1012 at 61-63, 65,
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`67-69; Ex. 1014 at 379, 396-401, 403-10, 412-18; R at 1-2, 16-21, 35, 48-51).
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`B. Whether a name has been released does not indicate whether any
`particular computer is connected to the computer network.
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`Whether a computer has released a name is no indication of, and cannot be
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`relied on to show, whether that computer is connected to the computer network
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`under the CAFC’s construction. (Ex. 1012 at 61-63, 65, 67; Ex. 1014 at 396, 407-
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`10, 416-18; R at 16-21, 35, 48-51). A computer that is offline can still have a
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`registered, unreleased name. (Ex. 1012 at 67-69, 131-32, 150; Ex. 1014 at 379,
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`395-401, 403-06, 412-15; R at 17-21, 49-51). Conversely, a computer that is online
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`can release its name yet stay connected to the computer network. (Ex. 1012 at 67-
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`69, 131-32, 150; Ex. 1014 at 379, 396, 399, 401, 412; R at 17-21, 48-51).
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`For example, a computer may have a permanent name that is never released,
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`even when the computer is offline. (Ex. 1012 at 140-44; Ex. 1014 at 395, 397, 412;
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`R at 17, 50). Even a computer with a temporary name may go offline without
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`releasing its name—which the references themselves admit is “common” and
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`“occurs frequently”—and its name will stay unreleased until and unless a second
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`computer attempts to register the same name and successfully challenges the first
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`computer’s registration. (Ex. 1012 at 67-69, 131-32, 150; Ex. 1014 at 379, 395-
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`401, 403-06, 412-15; R at 17-21, 49-51).
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`C. The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released.
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`Just as the name server does not attempt to determine whether any computer
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`associated with a queried name is connected to the network during Resolution, it
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`also does not attempt to determine whether the queried name has been released.
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`(Ex. 1012 at 61-63, 67-68; Ex. 1014 at 395-99, 407-10, 416-18; R at 16-21, 48-51).
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`Once a name is mapped to an IP address, the name server will continue to provide
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`that address in response to a name query—regardless of whether the target is
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`online or the name has been released—until that name is removed all together from
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`the database. (Ex. 1012 at 61-63, 67-68; Ex. 1014 at 396, 407-10, 416-18; R at 16-
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`21, 48-51).
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`Thus, even if a name’s released status did somehow correspond to whether a
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`computer was in fact online—and it does not—that name status has no effect on
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`whether the name server will return a requested IP address. (Ex. 1012 at 61-63, 67-
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`68; Ex. 1014 at 395-99, 407-10, 416-18; R at 16-21, 48-51).
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`III. Petitioner’s Brief Fails to Address the CAFC’s Decision, But Instead
`Raises New Arguments That Encourage the Board to Take a Position
`That Has Already Been Reversed by the Federal Circuit
`
`Petitioner’s Supplemental Brief fails to identify any prior briefs where it
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`argued the “is connected” limitation is met under Straight Path’s and the CAFC’s
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`construction, and instead presents a host of new arguments, thereby violating this
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`Board’s order prohibiting new arguments and evidence. Moreover, each new
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`argument is supported by no evidence or expert testimony—not even that of
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`Petitioner’s own expert—and relies wholly on Petitioner’s “registered”
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`construction already rejected by the CAFC. For example:
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` Advocating The Rejected Claim Construction: Petitioner devotes nearly
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`half of its Brief (including all of Section I.B) to re-arguing that the claims should
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`be construed to require only “relatively current” online status information, not
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`information that is current as of the time of the query. (Br. 4-6). The CAFC
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`repeatedly rejected this construction in Sipnet, holding, for example, that the
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`patentees did “not redefine ‘is connected’ to mean ‘is still registered, once was
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`connected, and may or may not still be connected.’” Sipnet at 9, 7, 13.
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` Comparing WINS and NetBIOS to the Specification, Not The Claims:
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`Unable to support any argument that WINS and NetBIOS teach the “is connected”
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`limitation under the CAFC’s construction, Petitioner urges the Board to commit
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`legal error by instead comparing the references to the specification. (Br. at 2-4).
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`Again, the CAFC has already rejected this approach in Sipnet: “the Board did not
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`address the facially clear meaning [of the claims], instead turning immediately to
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`the specification.” Sipnet at 8.
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` Relying On The Rejected “Registration” Construction: Petitioner’s
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`Case No. IPR2014-01366
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`comparison of the WINS and NetBIOS server to the specification also is wholly
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`unsupported by the evidence. For example, Petitioner argues that, like an
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`embodiment disclosed in the specification, the WINS and NetBIOS name servers
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`track whether a computer is connected to the network. (Br. at 2, 3). But the
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`“evidence” Petitioner identifies concerns only the name server checking during
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`Registration—not Resolution—whether a name has been “released,” not whether a
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`target computer is actually connected to the network as required by the CAFC. (Br.
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`3-4). Petitioner is still relying on its name “registration” construction that the
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`CAFC has already explicitly rejected. Sipnet at 7, 9, 13.
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` Identifying No Supporting Evidence: Petitioner now argues for the first
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`time that WINS and NetBIOS teach a query for a process’s online status. (Br. at 3).
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`But Petitioner’s cited passages have nothing to do with such a query, but instead
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`merely describe a computer requesting another computer’s address for purposes of
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`communication. (Id.). And Petitioner’s argument that there are “alternative
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`embodiments” that teach the limitations – yet another wholly new argument—is
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`not supported by a single citation. Nor does Petitioner identify any such
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`“alternative embodiment.” It cannot because there is none.
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`IV. There Is No Estoppel Concerning The “Process” Limitations
`There is no final decision adverse to Straight Path in the Sipnet IPR and thus
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`there is no estoppel resulting from that IPR. 37 CFR § 42.73.
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`Dated: January 19, 2016
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`Case No. IPR2014-01366
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`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (pro hac vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`
`
`
`8
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`Case No. IPR2014-01366
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`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Response to Petitioner’s Additional
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`Briefing is being served by electronic mail on the following counsel for the
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`Petitioners:
`
`Samsung Electronics Co., Ltd.
`
`Cisco Systems, Inc. and AVAYA Inc.
`
`DLA Piper LLP
`Brian Erickson (Reg. No. 48,895)
`brian.erickson@dlapiper.com
`Jeff Cole (Reg. No. 56,052)
`jeff.cole@dlapiper.com
`Samsung-SP-IPR@dlapiper.com
`
`Wilmer Cutler Pickering Hale
`and Dorr LLP
`David L. Cavanaugh (Reg. No. 36,476)
`Jason D. Kipnis (Reg. No. 40,680)
`david.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`
`
`
`
`AVAYA Inc.
`
`Fish & Richardson
`Dorothy P. Whelan (Reg. No. 33,814)
`Christopher O. Green (Reg. No. 52,964)
`Whelan@fr.com
`cgreen@fr.com
`
`
`Dated: January 19, 2016
`
`
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`45378949v.1
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`9