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 No. IPR2014-013661
`U.S. Patent No. 6,108,704
`________________
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`1 IPR2015-01011 has been joined with this proceeding.
`
`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Exhibit 2023 - Page 1
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`
`________________
`
`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 No. IPR2014-013661
`U.S. Patent No. 6,108,704
`________________
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`1 IPR2015-01011 has been joined with this proceeding.
`
`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Exhibit 2023 - Page 1
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`
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`Introduction......................................................................................................1
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`Background and Qualifications .......................................................................1
`
`III. Materials Considered .......................................................................................3
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`IV.
`
`Person of Ordinary Skill in the Art..................................................................4
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`V.
`
`Legal Standards ...............................................................................................4
`
`VI. Background of the ’704 patent ........................................................................6
`
`A.
`
`The Challenged Claims of the ’704 Patent .........................................12
`
`VII. Claim Construction........................................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“process”..............................................................................................15
`
`“point-to-point communication link”..................................................16
`
`“connected to the computer network” / “on-line”...............................18
`
`“transmitting to the server a network protocol address received by the
`first process following connection to the computer network”. ...........20
`
`“network protocol address”.................................................................20
`
`“is” and “status” ..................................................................................21
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`VIII. Microsoft Manual ..........................................................................................21
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`IX. NetBIOS.........................................................................................................29
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`X.
`
`PALMER .......................................................................................................33
`
`i
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`I, Dr. Stuart Stubblebine, being of legal age, hereby declare, affirm, and state the
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`following:
`
`I.
`
`Introduction
`
`1.
`
`The facts set forth below are known to me personally and I have
`
`firsthand knowledge of them.
`
`2.
`
`I have been retained as an independent expert witness by Straight Path
`
`IP Group, Inc. (“Patent Owner”) to make this declaration in support of Patent
`
`Owner’s Response to Petition for Inter Partes Review of U.S. Patent No.
`
`6,108,704. I am being compensated for my time at a rate of $850 per hour. My
`
`compensation is not dependent in any way upon the outcome of this Inter Partes
`
`Review.
`
`II. Background and Qualifications
`
`3.
`
`I received a Bachelor of Science degree in Computer Science and
`
`Mathematics from Vanderbilt University in May 1983. Later that year and into
`
`1984, I completed graduate level courses in Teleprocessing Systems (including
`
`computer networks and distributed processing) and Radio Systems Design at the
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`US Army Signal Center. In December 1988, I received a Master of Science degree
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`in Electrical Engineering from the University of Arizona; my area of focus was
`
`computer engineering with an emphasis in networking and distributed systems. I
`
`received my Doctorate in Electrical Engineering in August 1992 from the
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`University of Maryland; my area of focus was computer engineering, and my
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`dissertation was on Message Integrity in Cryptographic Protocols. My CV is
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`attached as Exhibit 1.
`
`4.
`
`I have been working as an independent consultant since March 2000,
`
`specializing in computer and network security evaluations, detailed design and
`
`formal analysis, applied research, technical due diligence reviews, and in the
`
`provision of expert witness services, particularly in patent litigation. My clients
`
`range from domestic start-ups to international Fortune 500 companies, and include
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`American Express, AMD, British Telecom, First Data Corporation, IBM, and
`
`Microsoft, as well as the New York City Department of Education and the New
`
`York City Police Department.
`
`5.
`
`Previously, I worked as a research scientist with Stubblebine Research
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`Labs, LLC, where I conduct research in the areas of security and privacy
`
`technology. Some of this research has been funded by the National Science
`
`Foundation.
`
`6.
`
`Between July 2002 and June 2004, I was a Professional Researcher—
`
`a position that was the equivalent of a Full Professor—at the University of
`
`California at Davis. I was affiliated with the Computer Science Department and my
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`2
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`research was focused in the areas of security, cryptography, and secure software
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`engineering.
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`III. Materials Considered
`
`7.
`
`In forming the opinions set forth in this report, I have considered and
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`relied upon. my education, knowledge of the relevant field, and my experience. I
`
`have also reviewed and considered U.S. Patent No. 6,108,704, its prosecution
`
`history, and documents produced by both Patent Owner and Petitioner.
`
`Specifically, I have considered the following materials:
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`U.S. Patent No. 6,108,704 (the “’704 patent”).
`
`File history for the ’704 patent.
`
`Reexamination history for the ’704 patent.
`
`Microsoft Windows NT Server Version 3.5 TCPIP.HLP.
`
`Technical Standard: Protocols for X/Open PC Interworking: SMB,
`
`Version 2.
`
`Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Concept and Methods, RFC 1001 (Mar. 1987).
`
`Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Detailed Specifications, RFC 1002 (Mar. 1987).
`
`U.S. Patent No. 5,375,068 (“Palmer”).
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`“Modifying WINS server defaults”
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`https://technet.microsoft.com/en-us/library/cc785736(d=printer,v=ws.
`
`10).aspx
`
`“Microsoft makes its move with Windows NT SDK”. InfoWorld 14
`
`(28): http://windows.microsoft.com/en-us/windows/history#T1=era3.
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`http://www.oldcomputermuseum.com/os/windows_nt3.5.html.
`
`I have also reviewed all of the papers filed at the Federal Circuit Court of Appeals
`
`in the Straight Path IP Group, Inc. v. Sipnet EU S.R.O appeal.
`
`IV.
`
`Person of Ordinary Skill in the Art
`
`8.
`
`A person of ordinary skill in the art in the field of the ’704 patent in
`
`the early 1990s would typically have the knowledge acquired by a person having a
`
`Bachelor’s degree in computer science or computer engineering or related field. I
`
`believe a person of ordinary skill in the art of the ’704 patent could also have
`
`obtained the requisite knowledge through 1-2 years of professional experience as a
`
`software developer designing and constructing distributed applications or systems.
`
`V. Legal Standards
`
`9.
`
`It is my understanding that a claim is invalid by anticipation when a
`
`single prior art reference (as defined by 35 U.S.C. § 102) existed prior to the
`
`claim’s priority date and teaches every element of the claim. (Verizon Servs. Corp.
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`4
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`v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). I also
`
`understand that under 35 U.S.C. § 103, the combined teachings of more than one
`
`prior art reference can be used to demonstrate that all of the elements of a claim
`
`were known at the time of the invention. I understand this is often referred to as
`
`“obviousness,” and such obviousness must be assessed at the time the invention
`
`was made. (Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1073 (Fed. Cir.
`
`2012)). I understand that, under 35 U.S.C. § 103, a patent cannot be obtained “if
`
`the differences between the subject matter to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art.” (35 U.S.C. § 103).
`
`10.
`
`I understand that, in an inter partes review proceeding, claim terms
`
`should be given their broadest reasonable construction consistent with the
`
`specification. However, I understand that, if a patent has expired, claim terms
`
`should be construed according to the standard of a district court, and that under
`
`such a standard, a claim term should be construed according to its “ordinary and
`
`customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. It is my further understanding that claim
`
`terms are given their ordinary and accustomed meaning as would be understood by
`
`5
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`one of ordinary skill in the art, unless the inventor, as a lexicographer, has set forth
`
`a special meaning.
`
`VI. Background of the ’704 patent
`
`11.
`
`The ’704 patent discloses a system that enables real-time point-to-
`
`point communications between running computer programs or applications that are
`
`connected to a computer network. Such programs include programs or applications
`
`supporting real-time video teleconferencing and other real-time point-to-point
`
`video and voice communications. (Ex. 2013 at 1:9-20; 1:50-56; 7:32-41; 8:18-22.)
`
`12. Applications supporting such point-to-point communication may be
`
`installed on a computer, but just because a computer is running does not ensure
`
`that a program or application supporting point-to-point communication installed on
`
`that computer is also running. Additionally, just because a computer is connected
`
`to the Internet (i.e., is “on-line”) it does not mean that a program or application
`
`installed on that computer is even running much less that it is actually on-line. In
`
`fact a computer that is connected to the Internet may have programs installed on it
`
`that are not connected to the Internet, off-line, and not available for
`
`communication. Some programs may be running and online, while others may be
`
`“closed” (or not running) and offline.
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`6
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`13. Because communication can only be established between computer
`
`programs that are on-line at the time the desired communication is sought, it is
`
`desirable for a user of a first computer program seeking communication with a user
`
`of a second computer program to know when the second user’s program is on-line
`
`and thus available for communication. (Ex. 2013 at 6:14-16.) The ’704 patent
`
`discloses a real-time point-to-point Internet communications protocol that enables:
`
`(1) a first computer program to query a connection server to determine if a second
`
`computer program is currently connected to the network, and (2) if the second
`
`computer program is connected, to obtain its existing network address so that the
`
`desired point-to-point communication can be established at the time
`
`communication is sought. (Ex. 2013 at 1:63-2:10; 3:40-54; 5:15-6:16; 10:4-37;
`
`claims 1, 2, 4, 32, 33, 38.)
`
`14. As explained in the ’704 patent specification, the prior art made it
`
`possible to establish point-to-point communications between devices and programs
`
`that had permanent Internet Protocol (“IP”) addresses. (Ex. 2013 at 1:48-52.) But,
`
`some devices do not have a permanent and stable address on the Internet and
`
`instead repeatedly log on and off of the Internet potentially receiving a new
`
`dynamically allocated IP address each time they reconnect to the network. (Id.
`
`1:35-47; 5:14-29; 6:6-16.)
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`7
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`15. Dynamic assignment of IP addresses made it difficult to establish real-
`
`time point-to-point video or voice communications between computer programs
`
`that are not permanently connected to the network, because a first user seeking to
`
`communicate with a second user would not necessarily know the IP address
`
`associated with the second user’s computer program as it could be dynamically
`
`assigned a different IP address from time to time. (Ex. 2013 at 1:48-56.)
`
`16.
`
`The ’704 patent solved the problems caused by dynamic allocation of
`
`IP addresses to computers continually connecting and disconnect from the Internet
`
`by providing a real-time point-to-point Internet communications protocol for: (1)
`
`determining whether a particular, computer program is currently running and
`
`connected to a network; (2) determining that computer program’s address on the
`
`network at the time the communication is sought; and (3) establishing a point-to-
`
`point communication with that computer program. (Ex. 2013 at 1:63-2:10; 5:15-
`
`6:16; 7:32-36; 10:4-37; claims 1, 2, 4, 32, 33, 38.)
`
`17.
`
`In one embodiment, a first user, who is connected to the Internet and
`
`who wishes to communicate with another user over the Internet launches a
`
`program on her computer and connects that program to the network. (Ex. 2013 at
`
`3:40-46; 4:26-32; 5:21-24; 10:4-9.) The current IP address of the first user’s
`
`computer is then transmitted to the claimed connection server which determines
`
`8
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`whether a given program is on-line and available for communication and can
`
`facilitate communication between different on-line programs. (Id. at 5:25-31;
`
`5:55-6:15; 10:4-21.) Upon receiving this transmission, the connection server
`
`stores the first user’s then-current IP address in a database, thus establishing the
`
`first user’s computer program as an “active on-line party” in the connection server
`
`database. (Id. at 5:25-34; 5:55-60; 6:1-16.)
`
`18.
`
`The first user’s computer program may later disconnect from the
`
`network, and thus no longer be an “active on-line party” available for
`
`communication. (Ex. 2013 at 6:1-14.) The specification discloses that “[w]hen a
`
`user logs off or goes off-line from the Internet 24, the connection server 26 updates
`
`the status of the user in the database 34; for example by removing the user’s
`
`information, or by flagging the user as being off-line.” (Id.) The user’s on-line
`
`status is updated when she logs off the network so that the connection server can
`
`keep an up to date accounting of which users are connected to the network and
`
`available for communication and which are not connected and thus disabled from
`
`engaging in point-to-point communication. (See id. at 6:6-14.) Like the first user,
`
`a second user, or callee, may also start a computer program on his computer and
`
`thereby store his then-current IP address in the connection server database and thus
`
`establish his computer program as active and on-line. (Id. at 5:34-38; 10:4-7.)
`
`9
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`19.
`
`To initiate a point-to-point communication with a second user, a first
`
`user, after connecting her computer program to the Internet and sending her then-
`
`current IP address to the connection server, may send a request to the connection
`
`server regarding the availability for communication of a second user. (Ex. 2013 at
`
`3:40-43; 5:45-56; 10:7-10, 28-32.) In response to the first user’s request, the
`
`connection server will search its database to determine if the second user’s
`
`computer program is on-line. (Id. at 5:57-60; 10:28-34.) If it is, the connection
`
`server then forwards the IP address of the second user’s computer program to the
`
`first user’s computer program, which then uses that IP address to establish a point-
`
`to-point communication between the first and second users’ computer programs.
`
`(Id. at 3:40-42; 5:60-67; 10:12-18, 32-37.) This communication is not
`
`intermediated by the connection server. (See id.)
`
`20.
`
`If the second user’s computer program is not on-line at the time the
`
`first user’s computer program makes its query, the connection server, after
`
`checking its database, will determine that the second computer program is not
`
`currently on-line and will send back to the first user an “off-line” signal or
`
`message. (Ex. 2013 at 6:1-16; 10:14-21.) The connection server will send the first
`
`user’s computer program an “off-line” signal or message when the second user’s
`
`program is not currently connected to the network, even if that second program is
`
`10
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`still registered with the connection server, i.e., if the second program’s name
`
`remains stored in the connection server. (Id.) Thus, whether a computer program
`
`is currently on-line is not and cannot be determined by whether it is registered with
`
`a connection server, because the program may be registered but also off-line. (Id.
`
`at 6:1-14.)
`
`21. During ex parte reexamination of the ’704 patent, the applicants
`
`addressed whether the active on-line status of a process – whether the process is
`
`currently connected to the computer network – is the same as the status of having
`
`been on-line at some point in the past to establish an active name registration. (Ex.
`
`1003 at 1078-79.). This is the question presented by the NetBIOS reference. The
`
`applicants submitted an Office Action Response explaining that the active name
`
`registration disclosed in NetBIOS is not the on-line status disclosed in the patent
`
`claims because having registered a name with the connection server at some
`
`previous time does not indicate that the registered computer is currently on-line:
`
`While NetBIOS uses name entries with ‘active’ statuses as part of its
`name management process, an analysis of how that “active” status is
`used shows that “an active name” is not synonymous with “an on-
`line status” with respect to the computer network. An active name
`simply refers to a name that has been registered and that has not
`yet been de-registered, independent of whether the associated
`computer is or is not on-line.
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`(Id. at 1073 (emphasis added).) The PTO subsequently affirmed the patentability
`
`of each of the claims at issue in this appeal. (Id. at 1928.)
`
`A. The Challenged Claims of the ’704 Patent
`
`22.
`
`Each of the challenged claims at issue in this appeal concerns a
`
`method, apparatus, or “computer program product” for establishing a point-to-
`
`point communication between a first (or caller) process and a second (or callee)
`
`process. (Ex. 2013 at claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31.) Each
`
`challenged claim concerns communications between processes, not merely
`
`computers, and each concerns determining whether those processes are currently
`
`on-line, not whether they were on-line at some undetermined point in the past.
`
`(See id.)
`
`23.
`
`Each of the challenged claims concerns processes—computer
`
`programs or applications—not merely the computers on which those processes
`
`may (or may not) be running. The preamble of independent claim 1, for example,
`
`makes this distinction clear, and shows that the patentees distinctly and
`
`deliberately chose to direct their claims towards a “process” not a “computer.”
`
`Claim 1 differentiates between the computer (“computer system”) that executes
`
`“the first process” and the “first process” itself: “A computer program product for
`
`use with a computer system, the computer system executing a first process . . . .”
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`(Ex. 2013 at claim 1 (emphasis added).) And the remainder of claim 1, reproduced
`
`in its entirety below, pertains to the on-line status of, and communications
`
`between, processes, not merely the computers that execute those processes:
`
`1.
`
`A computer program product for use with a computer
`
`system, the computer system executing a first process and
`
`operatively connected to a second process and a server over a
`
`computer network, the computer program product comprising:
`
`a computer usable medium having a 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 network; and
`
`program code, responsive to the network protocol address of
`
`the second process, for establishing a point-to-point communication
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`13
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`link between the first process and the second process over the
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`computer network.
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`(Ex. 2013 at claim 1 (emphasis added); see claims 11, 12, 14, 16, 22, 23, 27, 30,
`
`and 31.)
`
`24.
`
`Each of the challenged claims concerns a determination of whether
`
`the target process with which the caller wishes to communicate is currently
`
`connected to the computer network (is currently “on-line”) not whether the process
`
`was connected at some previous time. (Ex. 2013, at claims 1, 11, 12, 14, 16, 22,
`
`23, 27, 30, and 31.) For example, claim 1 is directed to a “computer program
`
`product” that (1) transmits to the server “a query as to whether the second process
`
`is connected to the computer network,” and (2) receives the second process’s
`
`network protocol address from the server only “when the second process is
`
`connected to the computer network.” (Id. at claim 1.) These claims’ temporal
`
`focus on the process’s on-line status at the time the desired communication is
`
`sought accords with the realtime focus of the point-to-point communications
`
`protocol disclosed in the ’704 patent. (Id. at 1:50-56; 7:32-41, 8:21-22.) One way
`
`the patent describes this focus on realtime communications, is by polling the
`
`second processing unit every 3-5 seconds. (Id. at 6:55-60; Fig. 2.)
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`VII. Claim Construction
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`A. “process”
`
`25.
`
`I agree with Straight Path’s proposed construction of the claim term
`
`“process” as meaning “a running instance of a computer program or application,”
`
`because this construction comports with the intrinsic record. Also, I note it has
`
`been agreed to by Petitioner in prior proceedings relating to the ’704 patent and by
`
`Petitioner’s expert, Dr. Henry Houh, in this proceeding. (Ex. 2022 at 192:21-
`
`192:15).
`
`26. As explained above, the claims of the ’704 patent show that the
`
`patentees deliberately chose to direct their claims towards a running instance of a
`
`computer program, or “process” rather than the machine on which a process runs,
`
`i.e., a computer. The specification of the ’704 patent supports this construction.
`
`The specifically expressly states that the disclosed point-to-point internet protocol
`
`can be a “computer program described herein below in conjunction with FIG. 6,
`
`which may be implemented from compiled and/or interpreted source code in the
`
`C++ programming language, and which may be downloaded…. (Ex. 2013 at 3:40-
`
`55.) Further, the specification states that the claimed “process,” also referred to as
`
`a “processing unit” in the specification, can be implemented in a PDA, which
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`supports the interpretation of process as a piece of software. (See id. at 4:26-32
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`15
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`Straight Path - Exhibit 2023 - Page 17
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`(“In addition, either of the first processing unit 12 and the second processing unit
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`22 may be implemented in a personal digital assistant…”).)
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`27. Additionally, the claim term “process” was construed in several prior
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`lawsuits in which Straight Path asserted the ’704 patent or a related patent. In
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`Straight Path IP Group, Inc. v. Bandwidth.com, Inc., a case involving U.S. Patent
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`No. 6,513,066, a continuation of the ’704 patent application, the United States
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`District Court for the Eastern District of Virginia construed “process” as “a
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`running instance of a computer program or application.” (Ex. 2004 at *13.)
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`Consistent with the Bandwidth decision, Samsung, in Straight Path IP Group, Inc.
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`v. Blackberry, Ltd., a case involving the ’704 patent, agreed that the proper
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`construction of the term process is “a running instance of a computer program or
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`application.” (Ex. 2016.)
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`28.
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`Furthermore, during his deposition, Samsung’s expert, Dr. Houh,
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`agreed that the proper construction of the term “process” is “a running instance of
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`a computer program or application.” (Ex. 2022 at 192:21-193:15.)
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`B. “point-to-point communication link”
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`29. Construction of this term is not necessary to my opinions in this
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`declaration, but to the extent the Board construes the term “point-to-point
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`communication link,” I agree with Straight Path that this term should be interpreted
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`16
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`Straight Path - Exhibit 2023 - Page 18
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`Patent No. 6,108,704
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`to mean “a connection between two processes over a computer network that is not
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`intermediated by a connection server.”
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`30. As explained above, the invention provides users with a protocol with
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`which to establish real-time, point-to-point communications over computer
`
`networks. During prosecution of the patent, the inventors explained that the
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`claimed point-to-point communication is not intermediated by the connection
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`server disclosed in the invention:
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`Upon receipt of the network protocal [sic] address of the first process, the
`second process establishes communications with the first process directly,
`without any intervention from the address/information server.
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`Exhibit 1002, Dec. 4, 1997 Amendment, at 350.
`
`31. An interpretation of this term to mean not intermediated by any server
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`would be inappropriate because in practice a “point-to-point” communication
`
`established over the Internet are often intermediated by a hardware device
`
`providing one or more services. These devices could be included in what one of
`
`ordinary skill in the art would understand to be a server. For instance, a “point-to-
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`point” communication may be routed as it passes through the Internet, and such
`
`routing is often performed by a computer providing services as well.. One example
`
`of this is when a computer is acting as a router, but is also running a server process,
`
`such as running FTP server program, in addition to its routing functionality. Thus,
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`17
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`Straight Path - Exhibit 2023 - Page 19
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`Patent No. 6,108,704
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`interpreting a point-to-point communication not to be intermediated by any server
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`would eliminate from the definition of “point-to-point” common point-to-point
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`communications made over the Internet. Interpreting “point-to-point
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`communication link” as not being intermediated by a connection server takes into
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`account the reality that servers are commonly used to route Internet
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`communications. Routers at the time of the invention were configurable to be
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`servers themselves. The inventors intended use of the internet, which would
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`necessarily have included these routers.
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`32.
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`Samsung’s construction unnecessarily narrows the scope of the
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`claims, and does so in a way that disregards the prosecution history.
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`C. “connected to the computer network” / “on-line” ”
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`33.
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`I agree with Straight Path’s interpretation of “connected to the
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`computer network” and “on-line” as meaning available for communication. I
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`disagree with Petitioner’s proposed construction of these terms as meaning “on-
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`line, e.g., registered with a server.” Petitioner’s proposed construction essentially
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`says that at every moment a given process is registered, it is connected to the
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`computer network, and on-line and available for communication. But, the ’704
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`patent specification does not support this conclusion. Rather, it clearly states that a
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`18
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Exhibit 2023 - Page 20
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`user can still be in the database (“registered”) even when it is not on-line and
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`available for communication:
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`When a user logs off or goes off-line from the Internet 24, the connection
`server 26 updates the status of the user in the database 34; for example, by
`removing the user’s information, or by flagging the user as being off-line.
`The connection server 26 may be instructed to update the user’s information
`in the database 34 by an off-line message, such as a data packet, sent
`automatically from the processing unit of the use prior to being disconnected
`from the connection server 26. Accordingly, an off-line user is effectively
`disabled from making and/or receiving point-to-point Internet
`communications.
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`(Ex. 2013 at 6:6-16.)
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`34.
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`The ’704 patent teaches that, once registered, a name of a user will
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`remain in the database regardless of whether the user is actually on-line. The
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`claimed query determines whether the named user is actually on-line and available
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`for communication at the time of the query:
`
`Upon the first user initiating the point-to-point Internet protocol when the
`first user is logged on to Internet 24, the first processing unit 12
`automatically transmits its associated E-mail address and its dynamically
`allocated IP address to the connection server…The first processing unit 12
`then sends a query, including the E-mail address of the callee, to the
`connection server 26. The connection server 26 then searches the database
`34 to determine whether the callee is logged-in by finding any stored
`information corresponding to the callee’s E-mail address indicating that the
`callee is active and on-line….if the callee is not on-line when the connection
`server 26 determines the callee’s status, the connection server 26 sends an
`OFF-LINE signal or message to the first processing unit 12.
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`19
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`Straight Path - Exhibit 2023 - Page 21
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`Case IPR2014-01366
`Patent No. 6,108,704
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`(Ex. 2013 at 5:24-6:4.)
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`D. “transmitting to the server a network protocol address received by the
`first process following connection to the computer network.”
`
`35. Also Petitioner’s construction of the term “connected to the computer
`
`network” / “on-line” to mean “registered with a server” is contradicted by the
`
`claims themselves. The claims require a network protocol address received
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`“following connection to the computer network.” (Ex. 2013 at 11:9-11). If a
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`computer is not considered “connected to the network” until it is “registered with a
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`server” then the computer would need to receive its network protocol address after
`
`it registered with the server. But in order to register with a server, the computer
`
`must already have its network protocol address. Thus, if the term “connected to
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`the computer network” / “on-line” is construed to mean “registered with a server”
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`then neither WINS nor NetBIOS disclose the claim element “a network protocol
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`address received by the first process following connection to the computer
`
`network” because neither reference teaches “a network protocol address received
`
`by the first process following registration with the server.”
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`E. “network protocol address”
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`36.
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`I agree with Straight Path that the term “network protocol address”
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`does not require construction and should be given its plain and ordinary meaning
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`20
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`Samsung v. Straight Path, IPR2014-01366
`Straight Path - Exhibit 2023 - Page 22
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`Patent No. 6,108,704
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`because the meaning of this term to a person having ordinary skill in the art at the
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`time of the invention is apparent to a lay person upon review of the ’704 patent.
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`When construing this very claim term in a prior litigation one court already found
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`that “the ordinary and customa
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