Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 49
`Entered March 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`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 (Patent 6,108,704 C1)
`Case IPR2014-013672 (Patent 6,009,469 C1)
`Case IPR2014-013683 (Patent 6,131,121 C1)
`_____________
`
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`1 IPR2015-01011 has been joined with this proceeding.
`2 IPR2015-01007 has been joined with this proceeding.
`3 IPR2015-01006 has been joined with this proceeding.
`
`

`
`IPR2014-01366 (Patent 6,108,704 C1)
`IPR2014-01367 (Patent 6,009,469 C1)
`IPR2014-01368 (Patent 6,131,121 C1)
`
`
`I.
`
`INTRODUCTION
`A. Background
`Samsung Electronics Co., LTD., Samsung Electronics America, Inc.,
`and Samsung Telecommunications America, LLC (collectively, “Samsung”)
`filed three Petitions requesting inter partes review of claims 1, 11, 12, 14,
`16, 22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (66 Ex. 1001,4
`“the ’704 patent”), claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of U.S. Patent No.
`6,009,469 C1 (67 Ex. 1001, “the ’469 patent”), and claims 6, 8, 10, 11, 13,
`and 14 of U.S. Patent No. 6,131,121 C1 (68 Ex. 1001, “the ’121 patent”).
`66 Paper 1 (“66 Pet.”); 67 Paper 1 (“67 Pet.”); 68 Paper 1 (“68 Pet.”).
`Straight Path IP Group, Inc. (“Patent Owner”) filed a Preliminary Response.
`66 Paper 10 (“66 Prelim. Resp.”); 67 Paper 10 (“67 Prelim. Resp.”);
`68 Paper 10 (“68 Prelim. Resp.”). On March 6, 2015, pursuant to 35 U.S.C.
`§ 314, we instituted inter partes review of:
`
`
`
`
`4 Citations may be preceded by “66” to designate IPR2014-01366, “67” to
`designate IPR2014-01367, or “68” to designate IPR2014-01368. Unless
`noted otherwise, all citations are to IPR2014-01366.
`
` 2
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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)
`
`
`Case
`
`IPR2014-01366
`
`IPR2014-01366
`
`14, 16, 27, 30, and
`31
`
`§ 103(a)
`
`References
`Claims Instituted Basis
`1, 11, 12, 22, and 23 § 103(a) Microsoft Manual5
`and NetBIOS6
`Microsoft Manual,
`NetBIOS, and
`Palmer7
`§ 103(a) Microsoft Manual
`and NetBIOS
`Microsoft Manual,
`NetBIOS, and
`Palmer
`§ 103(a) Microsoft Manual
`6, 8, 10, 11, 13, and
`and NetBIOS
`14
`66 Paper 12 (“66 Dec.”); 67 Paper 12 (“67 Dec.”); 68 Paper 12 (“68 Dec.”).
`After institution of inter partes review, Cisco Systems, Inc. (“Cisco”)
`and AVAYA, Inc. (“AVAYA”) filed three Petitions and Motions to Join the
`IPR2014-01366, IPR2014-01367, and IPR2014-01368 proceedings.
`IPR2015-01011, Papers 2, 4; IPR2015-01007, Papers 3, 4; IPR2015-01006,
`Papers 2, 4. We granted these motions and joined Samsung, Cisco, and
`AVAYA (collectively, “Petitioner”) to these inter partes reviews.
`66 Paper 26; 67 Paper 23; 68 Paper 25.
`Patent Owner filed a Response in each case (66 Paper 28, “66 PO
`Resp.”; 67 Paper 24, “67 PO Resp.”; 68 Paper 27, “68 PO Resp.”), and
`
`IPR2014-01367
`
`1–3, 5, 6, and 9
`
`IPR2014-01367
`
`10, 14, 17 and 18
`
`§ 103(a)
`
`IPR2014-01368
`
`
`5 Microsoft Windows NT 3.5, TCP/IP User Guide (1994) (Ex. 1012,
`“Microsoft Manual”).
`6 The Open Group, Technical Standard, Protocols For X/Open Pc
`Interworking: SMB, Version 2.0 (1992) (Ex. 1014, “NetBIOS”).
`7 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`
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`

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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)
`
`Petitioner filed a Reply (66 Paper 33, “Pet. Reply”; 67 Paper 29, “67 Pet.
`Reply”; 68 Paper 32, “68 Pet. Reply”). Oral hearing was held on
`November 19, 2015, and the hearing transcript has been entered in the
`record. 66 Paper 45; 67 Paper 41; 68 Paper 44 (“Tr.”).8 Subsequent to oral
`hearing, a Federal Circuit decision in Straight Path IP Group, Inc. v. Sipnet
`EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015), issued. See Ex. 2024. Petitioner
`filed additional briefing in light of Straight Path (66 Paper 44, “66 Addʼl
`Br.”; 67 Paper 40, “67 Addʼl Br.”; 68 Paper 43, “68 Addʼl Br.”) and Patent
`Owner filed a response to Petitioner’s additional briefing (66 Paper 46, “PO
`Add’l Resp.”; 67 Paper 42, “67 PO Add’l Resp.”; 68 Paper 45, “68 PO
`Add’l Resp.”).
`The following table summarizes the papers filed by the parties:
`Case No.
`IPR2014-01366
`IPR2014-01367
`IPR2014-01368
`Paper 1 (“66
`Paper 1 (“67
`Paper 1 (“68
`Petition
`Pet.”)
`Pet.”)
`Pet.”)
`Preliminary
`Paper 10 (“66 PO
`Paper 10 (“67 PO
`Paper 10 (“68 PO
`Response
`Resp.”)
`Resp.”)
`Resp.”)
`Decision to
`Paper 12 (“66
`Paper 12 (“67
`Paper 12 (“68
`Institute
`Dec.”)
`Pet.”)
`Pet.”)
`PO Response Paper 28 (“66 PO
`Paper 24 (“67 PO
`Paper 27 (“68 PO
`Resp.”)
`Resp.”)
`Resp.”)
`Petitioner’s
`Paper 33 (“66
`Paper 29 (“67
`Paper 32 (“68
`Reply
`Pet. Reply”)
`Pet. Reply”)
`Pet. Reply”)
`Petitioner’s
`Paper 44 (“66
`Paper 40 (“67
`Paper 43 (“68
`Additional
`Add’l Br.”)
`Add’l Br.”)
`Add’l Br.”)
`Briefing
`
`
`8 The hearing transcript is the same for all three cases.
`
` 4
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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)
`
`
`Paper 46 (“66 PO
`Add’l Resp.”)
`
`Paper 42 (“67 PO
`Add’l Resp.”)
`
`Paper 45 (“68 PO
`Add’l Resp.”)
`
`Patent
`Owner’s
`Response to
`Additional
`Briefing
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we are not persuaded that Petitioner has
`shown by a preponderance of the evidence that claims 1, 11, 12, 14, 16, 22,
`23, 27, 30, and 31 of the ʼ704 patent, claims 3, 6, 9, 10, 14, 17, and 18 of the
`ʼ469 patent, and claims 6, 8, 10, 11, 13, and 14 of the ʼ121 patent are
`unpatentable. For the reasons discussed below, we are persuaded that
`Petitioner has shown by a preponderance of the evidence that claims 1, 2,
`and 5 of the ʼ469 patent are unpatentable.
`B. Related Proceedings
`Petitioner indicates that the ’704 patent, the ʼ469 patent, and the
`ʼ121 patent are the subject of the proceedings in Straight Path IP Group,
`Inc. v. Samsung Electronics Co., Ltd., No. 6:13-cv-00606 (E.D. Tex.).
`66 Pet. 1–2; 67 Pet. 1–2; 68 Pet. 1–2. Petitioner further indicates that the
`ʼ704 patent was the subject of a final written decision in Sipnet EU S.R.O. v.
`Straight Path IP Group, Inc., IPR2013-00246 (PTAB), which was reversed
`and remanded by the United States Court of Appeals for the Federal Circuit.
`66 Pet. 1–2; Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d
`1356 (Fed. Cir. 2015) (“Straight Path”) (reversing the determination of
`unpatentability of certain claims of the ’704 patent and remanding for further
`proceedings consistent with the Federal Circuit’s claim construction). 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)
`
`remanded case in IPR2013-00246 is still pending before the Board as of the
`entry of this decision.
`
`C. The ʼ704, ʼ469, and ʼ121 Patents
`The ’704 patent is titled “Point-to-Point Internet Protocol” and
`generally relates to establishing a point-to-point communication link.
`66 Ex. 1001, 2:53–57. The ’469 patent is titled “Graphic User Interface for
`Internet Telephony Application” and generally relates to facilitating audio
`communications over computer networks. 67 Ex. 1001, 1:54–57. The
`’121 patent is titled “Point-to-Point Computer Network Communication
`Utility Utilizing Dynamically Assigned Network Protocol Addresses” and,
`similar to the ’409 patent, it relates to facilitating audio communications
`over computer networks. 68 Ex. 1001, 1:55–57. The ’469 patent and the
`’121 patent are continuations-in-part of the ’704 patent. 67 Ex. 1001 at [63];
`68 Ex. 1001 at [63]. The specifications for the three challenged patents are
`very similar and, in some instances, duplicative.
`Each patent explains that a first processing unit automatically
`transmits its associated e-mail address, and its IP address, to a connection
`server. 66 Ex. 1001, 5:25–38; 67 Ex. 1001, 6:66–7:9; 68 Ex. 1001, 6:60–
`7:3. The connection server stores the addresses in a database and, thus, the
`first processing unit is established as an active on-line party available for
`communication. Id. The first processing unit sends a query to the
`connection server, which searches the database to determine whether a
`second processing unit is active and on-line. 66 Ex. 1001, 5:55–60;
`67 Ex. 1001, 7:31–36; 68 Ex. 1001, 7:24–29. If the callee is active and on-
`line, the connection server sends the IP address of the callee from 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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`database to the first processing unit, i.e., performs a point-to-point Internet
`protocol communication. 66 Ex. 1001, 5:60–64; 67 Ex. 1001, 7:37–40;
`68 Ex. 1001, 7:30–34. The first processing unit then directly establishes the
`point-to-point Internet communication with the callee using the retrieved IP
`address. 66 Ex. 1001, 5:64–67; 67 Ex. 1001, 7:40–43; 68 Ex. 1001, 7:33–
`36.
`
`Figure 1 of the ’704, ʼ469, and ʼ121 patents is reproduced below:
`
`
`Figure 1 above illustrates the architecture between first processing unit 12,
`second processing unit 22, and connection server 26. 66 Ex. 1001, 5:15–29,
`67 Ex. 1001, 6:56–7:3; 68 Ex. 1001, 6:50–64.
`D. Illustrative Claims
`Petitioner challenges claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of
`the ’704 patent, claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent,
`and claims 6, 8, 10, 11, 13, and 14 of the ’121 patent. 66 Pet. 32–55;
`67 Pet. 33–54, 68 Pet. 30–58. Claim 1 of the ’704 patent is illustrative of the
`claims at issue in that patent and is reproduced below.
`1.
`A computer program product for use with a computer
`system, the computer system executing a first process and
`
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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)
`
`
`operatively connectable to a second process and a server over a
`computer network, the computer program product comprising:
`a computer usable medium having program code
`embodied in the medium, the program code comprising:
`program code for transmitting to the server a
`network protocol address received by the first process
`following connection to the computer network;
`program code for transmitting, to the server, a
`query as to whether the second process is connected to
`the computer network;
`program code for receiving a network protocol
`address of the second process from the server, when the
`second process is connected to the computer network;
`and
`
`program code, responsive to the network protocol
`address of the second process, for establishing a point-to-
`point communication link between the first process and
`the second process over the computer network.
`Claim 1 of the ’469 patent is illustrative of the claims at issue in
`that patent and is reproduced below.9
`1.
`A computer program product for use with a computer
`system having a display, the computer system capable of
`executing a first process and connecting to other processes and
`a server process over a computer network, the computer
`program product comprising a computer usable medium having
`computer readable code means embodied in the medium
`comprising:
`program code for generating a user-interface
`a.
`enabling control of a first process executing on the computer
`system;
`
`
`9 Italicized terms and limitations represent amendments to the claims as
`issued in the Ex Parte Reexamination Certificate. See 67 Ex. 1001.
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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)
`
`
`program code for determining the currently
`b.
`assigned network protocol address of the first process upon
`connection to the computer network;
`c.
`program code responsive to the currently assigned
`network protocol address of the first process, for establishing a
`communication connection with the server process and for
`forwarding the assigned network protocol address of the first
`process and a unique identifier of the first process to the server
`process upon establishing a communication connection with the
`server process; and
`d.
`program code, responsive to user input commands,
`for establishing a point-to-point communications with another
`process over the computer network.
`Claim 6 of the ’121 patent is illustrative of the claims at issue in
`that patent and is reproduced below.10
`6.
`A computer program product for use with a computer
`system capable of executing a first process and connecting to
`other processes and a server process over a computer network,
`the computer program product comprising a computer usable
`medium having computer readable code means embodied in the
`medium comprising:
`A.
`program code configured to, following connection
`of the first process to the computer network, forward to the
`server process a dynamically assigned network protocol address
`at which the first process is connected to the computer network;
`B.
`program code configured to query the address
`server as to whether the second process is connected to the
`computer network;
`program code configured to receive a dynamically
`C.
`assigned network protocol address of the second process from
`
`
`10 Italicized terms and limitations represent amendments to the claims as
`issued in the Ex Parte Reexamination Certificate. See 68 Ex. 1001.
`
` 9
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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)
`
`
`the address server, when the second process is connected to the
`computer network; and
`D.
`program code configured to respond to the
`network protocol address of the second process, establish a
`point-to-point communication link with the second process over
`the computer network.
`
`E. Claim Construction
`We construe expired patent claims according to the standard applied
`by the district courts. See In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012).
`Specifically, we apply the principles set forth in Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`The words of a claim are generally given their ordinary and customary
`meaning, and that is the meaning the term would have to a person of
`ordinary skill at the time of the invention, in the context of the entire patent
`including the specification. See Phillips, 415 F.3d at 1312–13. Claims are
`not interpreted in a vacuum but are a part of and read in light of the
`specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
`1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the
`specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993), the claims still must be read in view of the specification of
`which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
`1340, 1347 (Fed. Cir. 2004).
`
`
`10
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`

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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)
`
`
`Only those terms which are in controversy need to be construed and
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the
`following claim terms.
`1. “is connected to the computer network” / “on-line status” /
`“accessible”
`Independent claim 1 of the ʼ704 patent recites, “transmitting, to the
`server, a query as to whether the second process is connected to the
`computer network.” Dependent claims 3 and 6 of the ʼ469 patent, and
`independent claims 6, 8, 13, and 14 of the ʼ121 patent recite the similar
`limitations of a query as to whether a second process “is connected to the
`computer network” (emphasis added). Independent claims 11 and 22, and
`dependent claims 12, 14, 16, 23, 27, 30, and 31 of the ʼ704 patent recite,
`“querying the server as to the on-line status of the first callee process”
`(emphasis added). Independent claim 9 and dependent claims 14, 17, and 18
`of the ʼ469 patent recite similar limitations as to a query whether the first
`callee process “is accessible,” and independent claims 10 and 11 of the
`ʼ121 patent recite a similar limitation as to the processes “having [an]
`on-line status” (emphasis added).
`In Straight Path, the Federal Circuit held that the claim language “is
`connected to the computer network” has a facially clear meaning, that “the
`query transmitted to the server seeks to determine whether the second unit is
`connected at that time, i.e., connected at the time that the query is sent.”
`
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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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`Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query
`asks “whether the device ‘is’ connected, not whether it was connected or
`whether it is still registered as being connected even if that registration
`information is no longer accurate.” Id. The Federal Circuit further
`explained that “[i]t is not a reasonable interpretation of the claim language . .
`. to say that it is satisfied by a query that asks only for registration
`information, regardless of its current accuracy.” Id. The Federal Circuit
`explained, “[w]hen claim language has as plain a meaning on an issue as the
`language does here, leaving no genuine uncertainties on interpretive
`questions relevant to the case, it is particularly difficult to conclude that the
`specification reasonably supports a different meaning. The specification
`plays a more limited role than in the common situation where claim terms
`are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the
`Federal Circuit construed the limitation “is connected to the computer
`network” as “is connected to the computer network at the time the query is
`transmitted to the server.” Id. at 1363.
`
`
`11 Petitioner argues that the relevant specifications do not include an
`embodiment that “‘guarantees’ or ‘ensures’ the availability of the second
`process at any given point in time” and the file histories of the challenged
`patents “expressly reject[] the notion that the claims contain any guarantee
`of perfect accuracy.” Addʼl Br. 6. In Straight Path, the Federal Circuit did
`not offer a view as to the sufficiency of the written description or
`enablement based on the claim construction provided by the Federal Circuit
`because “written-description and enablement challenges were not, and could
`not have been, part of the inter parties review.” Straight Path, 806 F.3d at
`1363. We similarly do not offer any determination as to whether this claim
`construction is supported by the specifications of the ʼ704 patent,
`ʼ469 patent, and the ʼ121 patent.
`
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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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`Petitioner and Patent Owner argue that the limitations “on-line status”
`and “is accessible” have the same meaning as “is connected to the computer
`network.” See 66 Pet. 24–30; 66 PO Resp. 32‒35; 67 Pet. 25–31; 67 PO
`Resp. 30‒34; 68 Pet. 24–29; 68 PO Resp. 36‒42. Similar to “is connected to
`a computer network,” the “on-line status” and “is accessible” of the second
`process are recited in the present tense, and, therefore must be determined at
`the time of the querying whether the second process “is accessible” or
`selecting of the process having an “on-line status.” Therefore, we construe
`“on-line status” and “is accessible” as having the same meaning as “is
`connected to the computer network.”
`Petitioner argues that the Federal Circuit relied on two disclosures in
`the ʼ704 patent in construing “is connected to the computer network” and
`“on-line status.” Addʼl Br. 2. Petitioner argues that the Federal Circuit
`explained that the use of “timestamps” and the server’s maintenance of the
`database upon the user’s logging off are descriptions of “is connected to a
`computer network” and “on-line status.” However, Petitioner did not raise
`these positions in its Petition. Nonetheless, we disagree with Petitioner. The
`Federal Circuit held that “[w]hen claim language has a plain meaning . . .
`leaving no genuine uncertainties on interpretive questions . . . [t]he
`specification plays a more limited role than in the common situation where
`claim terms are uncertain in meaning in relevant respects.” Straight Path,
`806 F.3d at 1361. Although the Federal Circuit highlighted the same
`disclosures from the ʼ704 patent specification argued by Petitioner, the
`Federal Circuit did not rely on the ʼ704 patent specification in narrowing “is
`connected to the computer network” and “on-line status,” but rather held that
`
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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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`the ʼ704 patent specification did not contradict its claim construction of
`these terms.
`2. “process”
`The claims recite a “query . . . as to whether the second process is
`connected to the computer network” (emphasis added). Patent Owner
`argues that the plain and ordinary meaning of the term “process” is “a
`running instance of a computer program or application.” PO Resp. 21.
`Petitioner accepts Patent Owner’s proposed construction. Tr. 7:5–7.
`Petitioner and Patent Owner, however, disagree as to whether a computer
`with an operating system is a computer program, and, therefore, a “process.”
`PO Resp. 25–35; Pet. Reply 3–13.
`In Ancora Techs., the Federal Circuit explained that “[t]he ordinary
`meaning of the word ‘program’ in the computer context encompasses both
`operating systems and the applications that run on them (as well as other
`types of computer programs)” and “‘to a computer programmer’ a program
`is merely a ‘set of instructions’ for a computer.” Ancora Techs., Inc. v.
`Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014). Applying this guidance to
`the case before us, we agree with Petitioner and construe the term “process”
`to mean “a running instance of a computer program or application,” where a
`“computer program” is a set of instructions for a computer that encompasses
`both operating systems and the applications that run on them.
`We further note that the ʼ704, ʼ469, and ʼ121 patent specifications
`interchange the terms “process” and “processing unit.” For example, the
`specifications explain that a first “processing unit” is “established in the
`database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims
`
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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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`recite the term “process.” Accordingly, our construction is also consistent
`with the specifications, such that a “process” includes a “processing unit”
`that is running a program (operating system) or application.
`
`II. ANALYSIS
`A. Claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of the ʼ704 Patent,
`Claims 3, 6, 9, 14, 17, and 18 of the ʼ469 Patent, and Claims 6, 8,
`10, 11, 13, and 14 of the ʼ121 Patent
`
`1. Overview
`Petitioner contends that claims 1, 11, 12, 22, and 23 of the ʼ704 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
`Manual and NetBIOS. 66 Pet. 32–41. Petitioner contends that claims 14,
`16, 27, 30, and 31 of the ʼ704 patent are unpatenable under 35 U.S.C.
`§ 103(a) as obvious over Microsoft Manual, NetBIOS, and Palmer. Id. at
`41–49. Petitioner contends that claims 3, 6, and 9 of the ʼ469 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft Manual
`and NetBIOS. 67 Pet. 34–43. Petitioner contends that claims 14, 17, and 18
`of the ʼ469 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Microsoft Manual, NetBIOS, and Palmer. Id. at 43–49. Petitioner contends
`that claims 6, 8, 10, 11, 13, and 14 of the ʼ121 patent are unpatentable under
`35 U.S.C. § 103(a) as obvious over Microsoft Manual and NetBIOS. 68 Pet.
`30–43. We have reviewed the Petition and supporting evidence and find that
`Petitioner has not shown by a preponderance of the evidence that the
`challenged claims are unpatentable.
`2. Microsoft Manual (66 Ex. 1012; 67 Ex. 1012; 68 Ex. 1012)
`Microsoft Manual discloses how to install, configure, and
`troubleshoot Microsoft TCP/IP on a computer running the Microsoft
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`Windows NT Workstation or Windows NT Server operating system.
`Ex. 1012, 3.12 When a computer’s name is registered with the Windows
`Internet Name Service server, the Windows Internet Name Service server
`accepts the entry with a timestamp, an incremental unique version number,
`and other information. Id. at 67–69. A name query request is received by
`the Windows Internet Name Service server and allows a client to establish a
`session based on the address mapping received from the Windows Internet
`Name Service server. Id. at 67–68. For example, if a first computer wants
`to communicate with a second computer, the first computer queries the
`Windows Internet Name Service server for the address of the second
`computer. Id. at 62–63. When the first computer receives the appropriate
`address from the Windows Internet Name Service server, it connects directly
`to the second computer. Id.
`3. NetBIOS (66 Ex. 1014; 67 Ex. 1014; 68 Ex. 1014)
`NetBIOS (“Network Basic Input/Output System”) is a software
`interface that allows applications on different computers to communicate
`within a computer network, such as a local area network or the Internet, and
`was originally designed for IBM’s PC-Network. Ex. 1014, 378.13 NetBIOS
`applications employ mechanisms to locate resources, establish connections,
`send and receive data with an application peer, and terminate connections.
`
`
`12 Ex. 1012 includes page numbers indicated by the publication itself, and
`different page numbers provided by Petitioner. Our references are to the
`page numbers provided by Petitioner.
`13 Ex. 1014 includes page numbers indicated by the publication itself, and
`different page numbers provided by Petitioner. Our references are to the
`page numbers provided by Petitioner.
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`Id. A NetBIOS session is the exchange of messages between a pair of
`NetBIOS applications. Id. at 380.
`The NetBIOS name service is the collection of procedures through
`which nodes of a network acquire, defend, and locate the holders of
`NetBIOS names. Id. at 395. A node registers a name with the NetBIOS
`Name Server, which stores the registered name in a database. Id. at 403–04,
`413. A name query transaction can be initiated by an end-node in an attempt
`to obtain the IP address associated with a NetBIOS name. Id. at 407–08. If
`the NetBIOS Name Server has information regarding a queried node, the
`NetBIOS Name Server transmits a positive response. Id. at 408–09. If the
`NetBIOS Name Server does not have information regarding a queried node,
`the NetBIOS Name Server transmits a negative response. Id. Once the
`IP addresses have been found for a target name, a NetBIOS session service
`begins. Id. at 416. The NetBIOS session service involves directed (point-to-
`point) communications. Id.
`4. Palmer (66 Ex. 1020; 67 Ex. 1020)
`Palmer discloses multi-way video teleconferencing among networked
`computer workstations. Ex. 1020, 1:41–45. Palmer discloses a graphical
`user interface for controlling a video conferencing session, where a session
`window appears on the user’s workstation monitor when a user invokes the
`application to begin a video conference. Id. at 16:48–65. The session
`window includes “pushbuttons” that cause the creation of a second level
`pop-up window to offer the user next level of functional choices associated
`with the “pushbutton.” Id. at 17:3–31. A “connections” pushbutton
`establishes video teleconference connections between workstations. Id. at
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`18:36–38. The selection of the “connections” pushbutton causes the creation
`of a second level “call list” pop-up window that allows a user to add, delete,
`activate, or modify network video teleconferencing connections to other
`networked workstations. Id. at 18:38–43. To establish a connection with
`another workstation, a user enters the target workstation host name in to the
`“network host” field and activates the corresponding “connect” pushbutton.
`Id. at 19:22–27.
`5. Analysis
`As discussed in our claim construction analysis above, claims 1, 11,
`12, 14, 16, 22, 23, 27, 30, and 31 of the ʼ704 patent, claims 3, 6, 9, 14, 17,
`and 18 of the ʼ469 patent, and claims 6, 8, 10, 11, 13, and 14 of the ʼ121
`patent recite the limitations “is connected to the computer network,” “on-line
`status,” and “is accessible.” See Section I.E.1. As also discussed above, we
`construe these limitations as “is connected to the computer network at the
`time that the query is transmitted to the server.”
`Petitioner argues that Microsoft Manual discloses a first computer
`queries the WINS server for the address of a second computer, the WINS
`server determines whether the second computer has been registered, and
`returns the address of the second computer to the first computer if the second
`computer has been registered. 66 Pet. 36–37 (citing Ex. 1012, 62–63, 68–
`69); 67 Pet. 39–40, 47 (citing Ex. 1012, 62–63, 68–69); 68 Pet. 34–36
`(citing Ex. 1012, 62–63, 67–69). Petitioner further argues that a computer is
`registered as active and on-line with the WINS server until “(i) it properly
`shuts down or (ii) it fails to renew its lease of the IP address.” Id. Petitioner
`also argues that NetBIOS discloses a name query (“discovery” or
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`“resolution”) that is initiated by end-nodes to obtain the IP addresses and
`other attributes associated with a NetBIOS name. Id. at 36–38 (citing
`Ex. 1014, 396).
`Patent Owner argues that these descriptions from Microsoft Manual
`and NetBIOS fail to determine whether a computer or process is connected
`to the computer network. PO Resp. 35, 49–51. In view of our construction
`of this claim limitation, we agree with Patent Owner. Microsoft Manual
`discloses that once a computer is registered with the WINS server (which is
`a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server
`maintains a database of names and addresses as active and on-line by
`(1) releasing names once a computer is shut down properly and (2) requiring
`a renewal time period in which a computer must reregister. Ex. 1012, 62–
`63, 68–69. Microsoft Manual discloses that in response to User Datagram
`Protocol (UDP) name queries, “a mapping in the database does not ensure
`that the related device is currently running.” Id. at 68. Microsoft Manual
`further explains that a “local WINS database should periodically be cleared
`of released entries and old entries that were registered at another WINS
`server but did not get removed from this WINS database for some reason.”
`Id. at 150. In other words