`571-272-7822
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` Paper 12
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` Entered: March 6, 2015
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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., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01366
`Patent 6,108,704
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2014-01366
`Patent 6,108,704
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC (collectively,
`
`“Petitioner”) filed a Petition requesting an inter partes review of claims 1,
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`11, 12, 14, 16, 22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704
`
`(Ex. 1001, “the ’704 patent”). Paper 1 (“Pet.”). Straight Path IP Group, Inc.
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`(“Patent Owner”) timely filed a Preliminary Response. Paper 10 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`
`an inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” After considering the Petition, the
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`Preliminary Response, and associated evidence, we conclude that Petitioner
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`has demonstrated a reasonable likelihood that it would prevail in showing
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`unpatentability of all the challenged claims. Thus, we authorize institution
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`of an inter partes review of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of
`
`the ’704 patent.
`
`A. Related Proceedings
`
`
`
`Petitioner indicates that the ’704 patent is the subject of the
`
`proceedings in Straight Path IP Group, Inc. v Samsung Electronics Co.,
`
`Ltd., No. 6:13-cv-00606 (E.D. Tex.). Pet. 1–2. Petitioner further indicates
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`that the ʼ704 patent was the subject of Sipnet EU S.R.O. v. Straight Path IP
`
`Group, Inc., IPR2013-00246 (PTAB) (“Sipnet”). Id.
`
`Additionally, Petitioner indicates that this Petition is related to
`
`IPR2014-01367 and IPR2014-01368. Id.
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`2
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`B. The ʼ704 Patent
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`The ’704 patent (Ex. 1001) is titled “Point-to-Point Internet Protocol”
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`and generally relates to establishing a point-to-point communication link.
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`Ex. 1001, 2:53–57. The patent explains that a first processing unit
`
`automatically transmits its associated e-mail address, and its IP address, to a
`
`connection server. Id. at 5:25–38. The connection server stores the
`
`addresses in a database and, thus, the first processing unit is established as
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`an active on-line party available for communication. Id. The first
`
`processing unit sends a query to the connection server, which searches the
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`database to determine whether a second processing unit is active and on-line.
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`Id. at 5:55–60. If the callee is active and on-line, the connection server
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`sends the IP address of the callee from the database to the first processing
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`unit, i.e., performs a point-to-point Internet protocol communication. Id. at
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`5:60–64. The first processing unit then directly establishes the point-to-
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`point Internet communications with the callee using the retrieved IP address.
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`Id. at 5:64–67.
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`Figure 1 of the ’704 patent is reproduced below:
`
`
`
`Figure 1 above illustrates the architecture between first processing unit 12,
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`second processing unit 22, and connection server 26. Id. at 5:15–29.
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`3
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`C. Illustrative Claim
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`Petitioner challenges claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of
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`the ’704 patent. Pet. 20–55. Claim 1 is illustrative of the claims at issue and
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`is reproduced below:
`
`1. A computer program product for use with a computer
`system, the computer system executing a first process and
`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.
`
`D. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth proposed grounds
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`of unpatentability of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of the
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`’704 patent as follows (see Pet. 20–55):1
`
`
`1 Petitioner supports its challenge with four declarations. Ex. 1006
`(Declaration of Henry Houh, Ph.D., executed August 22, 2014); Ex. 1006
`(Declaration of Robert Cowart, executed August 20, 2014); Ex. 1019
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`Reference(s)
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`Basis
`
`Claims
`Challenged
`
`Microsoft Manual2
`Microsoft Manual and
`NetBIOS3
`Microsoft Manual,
`NetBIOS, and Palmer4
`Microsoft Manual,
`NetBIOS, Palmer, and Pinard5
`Microsoft Manual,
`NetBIOS, Palmer, Pinard, and
`Pitkin6
`
`§ 102(a)
`
`1, 11, 12, 22, and 23
`
`§ 103(a)
`
`1, 11, 12, 22, and 23
`
`§ 103(a)
`
`§ 103(a)
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`§ 103(a)
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`11, 12, 14, 16, 22, 23, 27,
`30, and 31
`11, 12, 14, 16, 22, 23, 27,
`30, and 31
`
`1, 11, 12, 14, 16, 22, 23,
`27, 30, and 31
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board will interpret claims of an unexpired patent using the
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`broadest reasonable construction in light of the specification of the patent in
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`which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest
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`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`
`(Declaration of Sandy Ginoza, executed August 7, 2014); Ex. 1030
`(Declaration of Sandy Ginoza, executed August 19, 2014).
`2 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`3 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`4 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`5 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1021, “Pinard”).
`6 U.S. Patent No. 5,341,477, issued Aug. 23, 1994 (Ex. 1015, “Pitkin”).
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`art in the context of the entire disclosure. In re Translogic Tech. Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`Patent Owner argues that the “broadest reasonable interpretation”
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`standard does not apply here because “the ʼ704 patent will expire
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`September 25, 2015, before the Board’s rendering of a final written decision
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`in this matter if the Board were to institute a trial.” Prelim. Resp. 33–34.
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`We are not persuaded by Patent Owner because for the purposes of this
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`decision, the ʼ704 patent is not expired and, therefore, the broadest
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`reasonable interpretation standard is applied. However, at the time of the
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`final written decision, the ʼ704 patent will have expired, most likely, and we
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`will apply the district court standard for claim construction as outlined in
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Accordingly,
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`Petitioner and Patent Owner should address the differences, if any, between
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`the broadest reasonable construction and the construction applied by a
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`district court so that we can address them when we render a final written
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`decision.
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`1. “connected to the computer network” / “on-line status”
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`Petitioner contends that the terms “connected to the computer
`
`network” and “on-line status” mean “on-line, e.g., registered with the
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`server.” Pet. 24–30. Petitioner further contends that this construction is
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`consistent with its usage in the ’704 patent specification, the ʼ704 patent
`
`prosecution history, and the construction as determined by a person with
`
`ordinary skill in the art. Id. at 24–25 (citing Ex. 1001, 5:31–38).
`
`Patent Owner argues that because the ʼ704 patent expires on
`
`September 25, 2015, the claims are construed “similar to that of a district
`
`court.” Prelim. Resp. 33 (citing Cisco Sys., Inc. v. AIP Acquisition, LLC,
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`Case IPR2014-00247, slip op. at 2 (PTAB July 10, 2014) (paper 20)).
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`However, as discussed above, for the purposes of this decision, we will
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`apply the broadest reasonable interpretation standard to the claim terms.
`
`Patent Owner argues that the ordinary and customary meaning of “on-line”
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`is “connected to or accessible by means of a computer or computer
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`network.” Id. at 36 (citing Ex. 2008, 3; Ex. 2009, 4). Patent Owner argues
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`that this ordinary and customary meaning is consistent with the ʼ704 patent
`
`specification. Id. at 37–38 (citing 2:60–65, 4:56–58, 5:34–38, 5:55–6:5,
`
`6:6–8). Patent Owner further argues that, consistent with the ʼ704 patent
`
`specification, the ʼ704 patent prosecution history, and as would be construed
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`by a person with ordinary skill in the art, “connected to a computer network”
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`and “on-line status” do not mean “registered with the server” because
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`“whether something at some point in time registered its name or IP address
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`with a server does not mean that it is now on-line.” Id. at 39–41 (citing
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`Ex. 1001, 6:6–16; Ex. 1003, 1124–25). Patent Owner’s expert in Sipnet,
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`Dr. Ketan Mayer-Patel, testified that, although “a processing unit is active
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`and on-line at registration, it may subsequently go off-line and become
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`inactive, but the process may maintain its registered status.” Sipnet,
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`Ex. 2018 ¶ 22.
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`We agree with Petitioner that “connected to the computer network”
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`encompasses being “on-line,” which can be done by registering an address
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`with the server. The ’704 patent specification and claims do not limit the
`
`scope of “connected to the computer network.” Furthermore, the ’704 patent
`
`specification discloses “the second processing unit 22, upon connection to
`
`the Internet 24 through a connection service provider, is processed by the
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`connection server 26 to be established in the database 34 as an active on-line
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`party.” Ex. 1001, col. 5, ll. 35–38. Thus, the context of “connected to the
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`computer network,” as disclosed in the specification, includes storing the
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`processing unit address in the connection server database, and storing the
`
`address establishes the processing unit as active and on-line.
`
`This is consistent with our determination in Sipnet. Sipnet, Paper 62
`
`at 5–7. On this record, Patent Owner has not provided any evidence or
`
`rationale sufficient for us to disturb that claim construction. As discussed in
`
`Sipnet, Patent Owner and Dr. Ketan Mayer-Patel agree that a second
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`processing unit is “active and on-line at registration.” Sipnet, Paper 30 at 26;
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`Ex. 2018 ¶ 22. Although Patent Owner argues that a process “being on-line”
`
`does not encompass registering an address because the process “may
`
`subsequently go off-line” (Prelim. Resp. 41), Patent Owner has not provided
`
`any persuasive rationale or evidence to demonstrate that the limitation
`
`“connected to the computer network,” or any other claim limitation, requires
`
`a specified duration of time that a processing unit is “active and on-line.”
`
`Accordingly, we are not persuaded that the proper scope of the limitation
`
`“connected to the computer network” precludes a processing unit that is
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`“active and on-line” but “may subsequently go off-line.” Therefore, on this
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`record, we are persuaded that “connected to the computer network”
`
`encompasses a processing unit that is “active and on-line at registration.”
`
`2. “transmitting to the server a network protocol address
`received by the first process following connection to the
`computer network”
`
`Claim 1 recites, inter alia, program code for transmitting an address
`
`“following connection to the computer network.” Ex. 1001, 11:12–14.
`
`Petitioner contends that although Patent Owner argues that this limitation
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`requires that the network protocol address must be dynamically assigned, the
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`ʼ704 patent specification states that the invention operates “whether the
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`current IP addresses were permanent (i.e., predetermined or preassigned) or
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`temporary (i.e., assigned upon initiation of the point-to-point
`
`communication).” Pet. 31 (citing Ex. 1001, 7:36–41). Patent Owner does
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`not provide a construction for this limitation in its Preliminary Response.
`
`On this record, we agree with Petitioner that the address received
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`“following connection to the network” encompasses any type of assignment
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`of address. Consistent with our Final Decision in Sipnet, claim 1 does not
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`require the “dynamic” assignment of addresses, whereas claims 33–37
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`positively recite a method “for locating processes having dynamically
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`assigned network protocol addresses.” Sipnet, Paper 62 at 7–9 (quoting
`
`claim 33 (emphasis added)). Also, we initially determined that independent
`
`claim 1 does not limit how network addresses are received, stored, or
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`assigned. Independent claim 33, on the other hand, limits how network
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`addresses are received, stored, or assigned because independent claim 33
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`positively recites that addresses are “dynamically assigned.” Id.
`
`Our construction of the limitation “following connection to the
`
`computer network” is also consistent with the ʼ704 patent. The ʼ704 patent
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`explains that the primary point-to-point protocol operates when a “callee
`
`processing unit does not have a fixed or predetermined IP address.”
`
`Ex. 1001, 5:15–17. The ʼ704 patent further explains an alternative,
`
`secondary point-to-point protocol that utilizes an e-mail that includes the
`
`current IP address, where the current IP address can be either a temporary or
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`permanent IP address. Id. at 6:17–36. The ʼ704 patent explains that:
`
`Realtime point-to-point communication of audio signals
`over the Internet 24, as well as video and voicemail, may thus
`be established and supported without requiring permanent IP
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`addresses to be assigned to either of the users or processing
`units 12, 22. For the duration of the realtime point-to-point
`link, the relative permanence of the current IP addresses of the
`processing units 12, 22 is sufficient, whether the current IP
`addresses were permanent (i.e. predetermined or preassigned)
`or temporary (i.e. assigned upon initiation of the point-to-point
`communication).
`
`Id. at 7:32–41 (emphases added). Accordingly, the ʼ704 patent contemplates
`
`addresses that are predetermined, pre-assigned, fixed, or static, and contrasts
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`these static addresses with temporary or dynamic addresses. Based on these
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`descriptions of both static and dynamic addressing in the ʼ704 patent, Patent
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`Owner has not persuaded us to limit the scope of “following connection to
`
`the computer network” to only “dynamic address allocation.”
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`3. “point-to-point communication link”
`
`Petitioner contends that “point-to-point communication link” means
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`“a connection between two processes over a computer network that is not
`
`intermediated by a server.” Pet. 21–22. Patent Owner does not provide a
`
`construction for this term.
`
`We agree with Petitioner’s construction of “point-to-point
`
`communication link.” The ’704 patent specification and claims do not
`
`provide for a specific definition of “point-to-point communication link.”
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`The plain and ordinary meaning of “point-to-point” means a first point
`
`directly linked to a second point.7 The plain and ordinary meaning of
`
`“communication link” includes any software or hardware that allows for
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`communication.8 Accordingly, we construe “point-to-point communication
`
`
`7 See point-to-point, DICTIONARY OF COMPUTING (2008) available at
`http://search.credoreference.com/content/entry/acbcomp/point_to_point/0
`(last visited Feb. 6, 2015) (“A direct link between two devices.”).
`8 See communication link, WILEY DICTIONARY OF COMMUNICATIONS
`10
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`IPR2014-01366
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`link” to include direct communications between two processes over a
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`computer network that are not intermediated by a server.
`
`B. Claims 1, 11, 12, 22, and 23 — Obvious over Microsoft
`Manual and NetBIOS
`
`Petitioner contends that claims 1, 11, 12, 22, and 23 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Microsoft Manual and NetBIOS.
`
`Pet. 32–41.
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`1. Microsoft Manual (Ex. 1012)
`
`Microsoft Manual discloses how to install, configure, and
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`troubleshoot Microsoft TCP/IP on a computer running the Microsoft
`
`Windows NT Workstation or Windows NT Server operating system.
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`Ex. 1012, 3.9 When a computer’s name is registered with the Windows
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`Internet Name Service server, the Windows Internet Name Service server
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`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
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`the Windows Internet Name Service server and allows a client to establish a
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`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
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`Windows Internet Name Service server for the address of the second
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`computer. Id. at 62–63. When the first computer receives the appropriate
`
`
`TECHNOLOGY (1998) available at http://search.credoreference.com/content/
`entry/wileycommtech/communication_link/0 (last visited Feb. 6, 2015)
`(“The software and hardware, to include cables, connectors, converters, etc.,
`required for two devices such as a computer and terminal to communicate.”).
`9 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.
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`11
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`address from the Windows Internet Name Service server, it connects directly
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`to the second computer. Id.
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`2. NetBIOS (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. 10 NetBIOS
`
`applications employ mechanisms to locate resources, establish connections,
`
`send and receive data with an application peer, and terminate connections.
`
`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 376. 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
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`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
`
`
`10 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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`12
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`begins. Id. at 416. The NetBIOS session service involves directed (point-to-
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`point) communications. Id.
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`3. Analysis
`
`The evidence set forth by Petitioner indicates there is a reasonable
`
`likelihood that Petitioner will prevail in showing that claims 1, 11, 12, 22,
`
`and 23 are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
`
`Manual and NetBIOS. Pet. 32–41. For example, claim 1 recites “a
`
`computer program product for use with a computer system, the computer
`
`system executing a first process and operatively connectable to a second
`
`process and a server over a computer network.” Ex. 1001, 11:2–5.
`
`Petitioner argues that Microsoft Manual discloses how to install, configure,
`
`and troubleshoot Microsoft TCP/IP on a computer running Microsoft
`
`Windows NT, and the software allows for a first computer to communicate
`
`with a second computer by querying a server for the address of the second
`
`computer and establishing a direct connection with the second computer
`
`using the received second computer address. Pet. 35 (citing Ex. 1012, 3, 62–
`
`63). Petitioner further contends that NetBIOS discloses NetBIOS
`
`applications that allow for point-to-point communication between nodes. Id.
`
`(citing Ex. 1014, 378, 384).
`
`Claim 1 further recites “a computer usable medium having program
`
`code embodied in the medium.” Ex. 1001, 11:7–8. Petitioner contends that
`
`Microsoft Manual discloses that the software is installed on a hard disk.
`
`Pet. 35 (citing Ex. 1012, 24–26). Claim 1 additionally recites “program
`
`code for transmitting to the server a network protocol address received by
`
`the first process following connection to the computer network.” Ex. 1001,
`
`11:9–11. Petitioner contends that Microsoft Manual discloses a computer
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`that receives a dynamically-assigned IP address from the server and the
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`computer registers its IP address with the WINS server. Pet. 35–36 (citing
`
`Ex. 1012, 59–63). Petitioner argues that NetBIOS discloses a name
`
`registration request that is submitted by an end-node to a NetBIOS Name
`
`Server, and the server replies with a positive response. Id. at 35 (citing
`
`Ex. 1014, 385).
`
`Claim 1 also recites “program code for transmitting, to the server, a
`
`query as to whether the second process is connected to the computer
`
`network” and “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.” Ex. 1001, 11:12–18. 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.
`
`Pet. 36–37 (citing Ex. 1012, 62–63). Petitioner argues that NetBIOS
`
`discloses a name query (discovery) 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. 1003, 396).
`
`Claim 1 additionally recites “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.” Ex. 1001, 11:19–23. Petitioner argues that
`
`Microsoft Manual discloses that the first computer goes directly to the
`
`second computer upon receiving the address of the second computer.
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`Pet. 37 (citing Ex. 1012, 62–63). Petitioner also argues that NetBIOS
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`discloses the use of point-to-point nodes that communicate using only
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`directed UDP datagrams and TCP sessions. Id. (citing Ex. 1014, 384–85).
`
`Petitioner contends that “WINS is an implementation of NetBIOS”
`
`and, therefore, Petitioner contends that “one having skill in the art would
`
`have known about and been motivated to combine the Microsoft Manual
`
`with NetBIOS. Id. at 33 (citing Ex. 1004 ¶¶ 90–92). We are persuaded by
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`Petitioner that the conclusion is reasonable because Microsoft Manual
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`demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS
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`and Microsoft Manual in the same manner that Petitioner proposes to
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`combine NetBIOS and Microsoft Manual. Ex. 1012, 3.
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`Patent Owner argues that this alleged ground of unpatentability is
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`redundant with our holding in Sipnet with respect to claim 1. Prelim.
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`Resp. 17–18. We disagree with Patent Owner. In Sipnet, we held claim 1
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`anticipated by WINS (the paper copy of Ex. 1012) and NetBIOS,
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`respectively. Here, Petitioner asserts that claim 1 is obvious over Microsoft
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`Manual and NetBIOS. Accordingly, we do not find an obviousness ground
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`to be redundant to two separate anticipation grounds. Furthermore, we had
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`not considered this ground with respect to claims 11, 12, 22, and 23 in
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`Sipnet.
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`Patent Owner further argues that the combination of Microsoft
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`Manual and NetBIOS fails to disclose the “interface element representing a
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`first callee process,” as recited by claim 10 and incorporated by reference by
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`claim 11. Prelim. Resp. 19–21. Petitioner argues that Microsoft Manual
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`discloses a telnet client that opens a “connect” dialog box when the
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`“connect” button is selected, where the “connect” dialog box is a user
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`interface element representing a first callee process, “i.e., the telnet
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`service/daemon running on that host system.” Pet. 39 (citing Ex. 1012, 249–
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`50). Patent Owner first asserts that the term “represented” means “serve as a
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`sign or symbol of . . . serve as a counterpart or image of.” Prelim. Resp. 19
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`(quoting Ex. 2007, 3). Patent Owner then argues that the dialog box of
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`Microsoft Manual does not represent a first callee process because (1) a
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`remote host system is not a process and (2) the dialog box in no way
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`represents a particular host system, based on Patent Owner’s definition of
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`“represent.” Id. at 21.
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`We are not persuaded by Patent Owner’s arguments. Petitioner
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`argues the telnet dialog box meets the claim limitation of an “interface
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`element” that represents the telnet “process.” Patent Owner
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`mischaracterizes Petitioner’s argument by substituting the “remote host
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`system” as the callee process. Petitioner asserts that the dialog box is an
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`“interface element” representing a telnet “callee process” and does not rely
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`on the remote host system to meet the claim limitations. Pet. 39.
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`Accordingly, we are not persuaded by Patent Owner’s arguments.
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`Patent Owner also argues that Microsoft Manual and NetBIOS fail to
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`disclose the limitation “connected to the network” and “on-line” based on
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`Patent Owner’s proposed constructions of these terms and limitations.
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`Prelim. Resp. 32–44. We disagree with Patent Owner. As discussed above,
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`we determine that the claim limitations “connected to the network” and “on-
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`line” encompass registering an address for a computer or process with the
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`server. As also discussed above, both Microsoft Manual and NetBIOS
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`disclose that a computer registers with a server as active and on-line.
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`Ex. 1012, 59–63; Ex. 1014, 385. Accordingly, we are not persuaded by
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`Patent Owner’s argument. Furthermore, we are persuaded that Petitioner
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`sufficiently establishes that there is a reasonable likelihood that Petitioner
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`will prevail in showing that claims 1, 11, 12, 22, and 23 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over Microsoft Manual and NetBIOS.
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`C. Claims 1, 11, 12, 22, and 23 — Anticipated by Microsoft Manual
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`Petitioner contends that claims 1, 11, 12, 22, and 23 are unpatentable
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`under 35 U.S.C. § 102(a) as anticipated by Microsoft Manual. Pet. 5.
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`Petitioner specifically argues that “Microsoft Manual is based on NetBIOS,
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`compatible with the NetBIOS protocol specifications, and interoperable with
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`other NetBIOS-compliant implementations,” and, therefore, Microsoft
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`Manual and NetBIOS should be treated as a single anticipatory reference.
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`Pet. 32–33, 32 n.4. Although Petitioner lists this ground in the Petition
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`(Pet. 5), contrary to 37 C.F.R. § 42.104, Petitioner does not provide any
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`evidence, argument, or discussion as to how these claims are anticipated by
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`Microsoft Manual. We, accordingly, are not persuaded that Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in this challenged
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`ground.
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`D. Claims 11, 12, 14, 16, 22, 23, 27, 30, and 31 — Obvious over
`Microsoft Manual, NetBIOS, and Palmer
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`Petitioner contends that claims 11, 12, 14, 16, 22, 23, 27, 30, and 31
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`are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
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`Manual, NetBIOS, and Palmer. Pet. 41–49.
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`1. Palmer (Ex. 1020)
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`Palmer discloses multi-way video teleconferencing among networked
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`computer workstations. Ex. 1020, 1:34–35. Palmer discloses a graphical
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`user interface for controlling a video conferencing session, where when a
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`user invokes the application to begin a video conference, a session window
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`appears on the user’s workstation monitor. Id. at 16:48–65. The session
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`window includes “pushbuttons” that cause the creation of a second level
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`pop-up window to offer the user next level of functional choices associated
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`with the “pushbutton.” Id. at 17:3–31. A “connections” pushbutton
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`establishes video teleconference connections between workstations. Id. at
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`18:36–38. The selection of the “connections” pushbutton causes the creation
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`of a second level “call list” pop-up window that allows a user to add, delete,
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`activate, or modify network video teleconferencing connections to other
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`networked workstations. Id. at 18:38–43. To establish a connection with
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`another workstation, a user enters the target workstation host name in to the
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`“network host” field and activates the corresponding “connect” pushbutton.
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`Id. at 19:22–27.
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`2. Analysis — Claims 14, 16, 27, 30, and 31
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`The evidence set forth by Petitioner indicates there is a reasonable
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`likelihood that Petitioner will prevail in showing that claims 14, 16, 27, 30,
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`and 31 are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
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`Manual, NetBIOS, and Palmer. Pet. 45–46, 48–49. For example, claim 14
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`recites “the method of claim 10.” Ex. 1001, 12:64. As discussed above, we
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`determined that Petitioner demonstrated a reasonable likelihood that the
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`combination of Microsoft Manual and NetBIOS teaches or suggests
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`claim 11, which incorporates the limitations of claim 10. Claim 14 further
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`recites “providing a user interface element representing a second callee
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`process” and “establishing a conference point-to-point communication link
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`between the caller process and the first and second callee process, in
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`response to the user associating the element representing the second callee
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`process with the element representing the first communication line.” Id. at
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`12:66–13:6.
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`Petitioner contends that Palmer discloses a “call list” that includes a
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`list of workstations; a user can enter the target workstation host name to
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`establish a connection. Pet. 45–46 (citing Ex. 1020, 19:19–27, Fig. 20).
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`Petitioner asserts that a three-way video teleconference between three
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`workstations can be established via a connection between two workstations
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`and joining the third workstation to the call. Id. (citing Ex. 1020, 24:3–36).
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`Petitioner further contends that Palmer describes a videoconferencing
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`application for the Windows NT operating system and uses transport lev