Case: 15-1212 Document: 47 Page: 1 Filed: 08/11/2015
`
`No. 2015-1212
`
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`STRAIGH PATH IP GROUP, INC.,
`
`
`v.
`
`SIPNET EU S.R.O.,
`
`Appellant,
`
`Appellee.
`
`
`Appeal from the United States patent and Trademark Office, Patent Trial and
`Appeal Board, No. IPR2013-00246.
`
`
`
`
`
`
`
`BRIEF OF AMICI CURIAE IN SUPPORT OF APPELLEE SIPNET EU S.R.O.
`URGING AFFIRMANCE OF THE PATENT TRIAL AND APPEAL BOARD’S
`DECISION IN IPR2013-00246
`
`
`
`Mark D. Fowler
`DLA PIPER LLP (US)
`2000 University Avenue
`East Palo Alto, CA 94303
`(650) 833-2000
`
`Aaron Fountain
`DLA PIPER LLP (US)
`1000 Louisiana Street, Suite 2800
`Houston, TX 77002-5005
`(713) 425-8400
`
`
`
`
`May 4, 2015
`
`WEST\258337874.10
`
`Brian K. Erickson
`DLA PIPER LLP (US)
`401 Congress Ave., Suite 2500
`Austin, TX 78701
`(512) 457-7000
`
`Attorneys for Amici Curiae
`Samsung Electronics Co., LTD.,
`Samsung Electronics America, Inc.,
`Samsung Telecommunications America,
`LLC
`
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 1
`
`

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`Case: 15-1212 Document: 47 Page: 2 Filed: 08/11/2015
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`
`
`Certificate of Interest
`
`
`Counsel for Amici Curiae Samsung Electronics Co., Ltd., Samsung Electronics
`America, Inc., and Samsung Telecommunications America, LLC certifies the
`following to the best of his knowledge:
`
`1. The full name of every party or amicus represented by me is:
`
`
`
`
`
`
`2.
`
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc., and
`Samsung Telecommunications America, LLC.
`
`The names of the real party in interest (if the party named in the caption is
`not the real party in interest) represented by me is:
`
`N/A
`
`
`3. All parent corporations and any publicly held companies that own 10 percent
`
`or more of the stock of the party or amici curiae represented by me are:
`
`
`
`
`
`
`
`
`
`For Samsung Electronics Co., Ltd.: None
`
`For Samsung Electronics America, Inc.: Samsung Electronics Co., Ltd.
`
`For Samsung Telecommunications America, LLC: Samsung Electronics
`America, Inc.
`
`
`4. The names of all law firms and the partners or associates that appeared for
`
`the party or amicus now represented by me in the trial court or agency or are
`
`expected to appear in this court are:
`
`DLA Piper LLP (US): Aaron G. Fountain, Brian K. Erickson, and Mark D.
`
`
`
`
`Fowler
`
`
`
`
`
`
`Dated: May 4, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Brian Erickson
`Brian Erickson
`
`WEST\258337874.10
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 2
`
`

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`Case: 15-1212 Document: 47 Page: 3 Filed: 08/11/2015
`TABLE OF CONTENTS
`
`B.
`
`C.
`
`STATEMENT OF INTEREST ............................................................................... 1
`I.
`SUMMARY OF ARGUMENT ............................................................................... 2
`II.
`III. ARGUMENT .......................................................................................................... 5
`A.
`Affirming the Board’s Decision Under Phillips Would Best Serve
`the Public Interest ......................................................................................... 5
`NetBIOS and WINS Both Expressly Disclose the Claimed “Process” ....... 6
`1.
`NetBIOS and WINS’s Disclosures of Processing Units
`Expressly Disclose the Claimed “Processes” .................................... 7
`NetBIOS and WINS’s Disclosure of NetBIOS Applications
`Expressly Disclose the Claimed “Processes” .................................. 10
`The Board Did Not Commit Reversible Error By Not
`Explicitly Construing “Process” ..................................................... 14
`The Board’s Construction of “Connected to the Computer Network”
`Should Be Affirmed Under Phillips ........................................................... 16
`1.
`The Claim Language Does Not Support Straight Path’s
`Temporal Requirement .................................................................... 17
`Straight Path’s “Temporal Requirement” Directly Contradicts
`the Teachings and Language of the Specification .......................... 18
`The Prosecution History, Wherein Straight Path’s Proposed
`Construction Was Expressly Rejected, Supports The Board’s
`Construction Under Phillips ............................................................ 24
`IV. CONCLUSION ..................................................................................................... 26
`
`2.
`
`3.
`
`2.
`
`3.
`
`
`WEST\258337874.10
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`- i -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 3
`
`

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`Case: 15-1212 Document: 47 Page: 4 Filed: 08/11/2015
`TABLE OF AUTHORITIES
`
`CASES
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.
`616 F.3d 1283 (Fed. Cir. 2010) .......................................................................................19
`
`Bancorp. Servcs. L.L.C. v. Sun Life Assur Co.
`687 F.3d 1266 (Fed. Cir. 2012) .........................................................................................3
`
`Elkay Mfg. v. Ebco Mfg.
`192 F.3d 973 (Fed. Cir. 1999) .....................................................................................8, 24
`
`Graham v. John Deere Co.
`383 U.S. 1 (1966) ..................................................................................................................8
`
`In re Cuozzo Speed Techs., LLC
`778 F.3d 1271 (Fed. Cir. 2015) .........................................................................................5
`
`Johnson Worldwide Assocs., Inc. v. Zebco Corp.
`175 F.3d 985 (Fed. Cir. 1999) .........................................................................................17
`
`Markman v. Westview Instruments, Inc.
`52 F.3d 967 (Fed. Cir. 1995) aff’d 517 U.S. 370 (1996) ............................................8
`
`Ormco Corp. v. Align Tech., Inc.
`498 F.3d 1307 (Fed. Cir. 2007) ...............................................................................3, 7, 14
`
`Phillips v. AWH Corp.
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................. passim
`
`Phonometrics, Inc. v. Choice Hotels Int’l, Inc.
`21 F. App’x 910 (Fed. Cir. 2001) .....................................................................................6
`
`Praxair, Inc. v. ATMI, Inc.
`543 F.3d 1306 (Fed. Cir. 2008) .........................................................................................3
`
`Seachange Int’l, Inc. v. C-Cor Inc.
`413 F.3d 1361 (Fed. Cir. 2005) .........................................................................................9
`
`Senju Pharm. Co. v. Apotex, Inc.
`746 F.3d 1344 (Fed. Cir. 2014) .......................................................................................11
`
`Straight Path IP Group, Inc. v. Samsung Electronics Co., Ltd.
`C.A. No. 6:13-cv-00606 (E.D. Tex.) (filed Aug. 23, 2013) .......................................1
`
`
`WEST\258337874.10
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`- i -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 4
`
`

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`Case: 15-1212 Document: 47 Page: 5 Filed: 08/11/2015
`TABLE OF AUTHORITIES
`(Continued)
`
`
`Stratoflex, Inc. v. Aeroquip Corp.
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................................11
`
`
`WEST\258337874.10
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`- ii -
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`
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 5
`
`

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`Case: 15-1212 Document: 47 Page: 6 Filed: 08/11/2015
`
`
`
`I.
`STATEMENT OF INTEREST
`Appellant Straight Path IP Group, Inc. (“Straight Path”) accuses amici
`
`curiae Samsung Electronics Co., LTD., Samsung Electronics America, Inc., and
`
`Samsung Telecommunications America, LLC (collectively “Samsung”) of
`
`infringing U.S. Patent No. 6,108,704 (“the ’704 patent”) and related patents in the
`
`United States District Court action styled Straight Path IP Group, Inc. v. Samsung
`
`Electronics Co., Ltd., C.A. No. 6:13-cv-00606 (E.D. Tex.) (filed Aug. 23, 2013).
`
`Straight Path’s case against Samsung is stayed pending the outcome of this appeal
`
`and the inter partes review proceedings (“IPRs”) listed below.
`
`1. Petition for inter partes review of U.S. Patent No. 6,108,704 by
`Samsung Electronics Co. Ltd., IPR2014-01366 (filed August 22,
`2014);
`
`2. Petition for inter partes review of U.S. Patent No. 6,009,469 by
`Samsung Electronics Co. Ltd., IPR2014-01367 (filed August 22,
`2014);
`
`3. Petition for inter partes review of U.S. patent No. 6,131,121 by
`Samsung Electronics Co. Ltd., IPR2014-01368 (filed August 22,
`2014).
`
`Samsung is the real-party-in-interest to these IPRs and its litigation with
`
`Straight Path. Straight Path and Appellee SipNet EU S.R.O. (“SipNet”) both stated
`
`that each of these matters may be affected by this appeal. (Appellant Br. ix, x;
`
`Appellee Br. viii, ix.) Because the claim construction and invalidity issues
`
`presented in this appeal are central to each Samsung dispute with Straight Path,
`
`Samsung submits this brief as amici curiae to clarify and present additional
`
`WEST\258337874.10
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`- 1 -
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 6
`
`

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`Case: 15-1212 Document: 47 Page: 7 Filed: 08/11/2015
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`
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`reasons for affirming the Patent Trial and Appeal Board’s (“Board”) final written
`
`decision that the Parties have either not directly addressed or completely ignored.1
`
`A motion for leave to file accompanies this brief. Counsel for Straight Path
`
`opposes Samsung’s motion for leave and will file an opposition. Counsel for
`
`SipNet consents to Samsung’s motion for leave to file.
`
`II.
`The present appeal comes to the Court from merely one of a dozen pending
`
`SUMMARY OF ARGUMENT
`
`litigations and IPRs involving the ’704 patent and patents that claim priority to it.
`
`Straight Path has asserted the ’704 patent against Samsung and numerous other
`
`companies in the video streaming industry. The Court’s decision in this appeal is
`
`therefore likely to affect a number of companies, many of whom, like Samsung,
`
`have not yet had their day in court or before the Board.
`
`The Board’s decision below was that two prior art references, NetBIOS
`
`(A0702-A1235) and WINS (A1236-A1525), both anticipate claims 1-7 and 32-42.
`
`To reach that decision, the Board (1) explicitly addressed the claim construction
`
`issues identified by Straight Path in its appeal and (2) identified express disclosure
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`of the construed claim limitations in the NetBIOS and WINS prior art references.
`
`
`1 No party’s counsel authored this brief in whole or in part. No party or party’s
`counsel contributed money that was intended to fund preparing or submitting this
`brief. No person—other than Samsung, its members or its counsel—contributed
`money that was intended to fund preparing or submitting the brief.
`- 2 -
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`WEST\258337874.10
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 7
`
`

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`Case: 15-1212 Document: 47 Page: 8 Filed: 08/11/2015
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`
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`Both of the Board’s conclusions are directly at issue in Samsung’s (and other
`
`companies’) IPRs and litigation with Straight Path.
`
`While the Court is of course obligated to decide the case presented to it, it is
`
`axiomatic that the Court “review[s] decisions, not opinions.” Ormco Corp. v.
`
`Align Tech., Inc., 498 F.3d 1307, 1317-18 (Fed. Cir. 2007) (“[W]hen we are able to
`
`fully comprehend the specification, prosecution history, and claims and can
`
`determine that … the district court arrived at the correct conclusion, we need not
`
`exalt form over substance and vacate what is essentially a correct decision.”) And
`
`the Court is not bound by claim constructions or claim construction arguments
`
`presented by the parties to this appeal. Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306,
`
`1323-24 (Fed. Cir. 2008) (“Because the court has an independent obligation to
`
`construe the terms of a patent, we need not accept the constructions proposed by
`
`either party ….”); Bancorp. Servcs. L.L.C. v. Sun Life Assur Co., 687 F.3d 1266,
`
`1274 (Fed. Cir. 2012) (“Just as a district court may construe the claims in a way
`
`that neither party advocates, we may depart from the district court and adopt a new
`
`construction on appeal.” (internal citation omitted)).
`
`Because the Court’s decision in this appeal is likely to affect Samsung’s
`
`(and other companies’) disputes with Straight Path, Samsung submits this amici
`
`curiae brief to present three arguments supporting affirmance of the Board’s
`
`decision in the manner that will most efficiently conserve the resources of the
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`WEST\258337874.10
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`- 3 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 8
`
`

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`Case: 15-1212 Document: 47 Page: 9 Filed: 08/11/2015
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`
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`Board, Samsung, and the many parties currently in disputes with Straight Path.
`
`The arguments presented by Samsung are apparent from the current record, but all
`
`three are unaddressed by one or both of the parties to this appeal. Samsung urges
`
`the Court to give full consideration to these arguments when issuing its decision
`
`that could have wide applicability beyond the instant case.
`
`First, the Court should make clear that the patents are invalid even if the
`
`Phillips claim construction standard applies. The ’704 patent and its related
`
`patents will expire September 25, 2014, (Appellants Br. 29), and the Board will
`
`apply Phillips in the IPRs filed by Samsung and other parties sued by Straight Path
`
`after SipNet. Applying Phillips now will make clear that the resolution of this
`
`appeal should bind Straight Path in the subsequent IPRs.
`
`Second, the Board found that the prior art of record expressly discloses the
`
`“process” limitation, even under the construction Straight Path seeks here. The file
`
`history of the ’704 patent and the relevant portions of the prior art references cited
`
`by the Board confirms that the Board was correct. Despite the obvious relevance
`
`of this part of the Board’s analysis, Straight Path attempts to obfuscate the Board’s
`
`analysis and SipNet does not address it.
`
`Third, the Phillips claim construction standard urged by Straight Path on
`
`appeal does not support the “temporal requirement” that Straight Path seeks to read
`
`into the limitation “connected to the computer network.” Neither party applies the
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`WEST\258337874.10
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`- 4 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 9
`
`

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`Case: 15-1212 Document: 47 Page: 10 Filed: 08/11/2015
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`
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`claim construction principles espoused in Phillips to address Straight Path’s
`
`proposed construction of this term.
`
`III. ARGUMENT
`A. Affirming the Board’s Decision Under Phillips Would Best Serve the
`Public Interest
`
`Because the ’704 patent will expire on September 25, 2015, the parties
`
`dispute whether this Court should apply the claim construction standard of Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) or the broadest reasonable
`
`interpretation as applied by In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed.
`
`Cir. 2015). This dispute is immaterial, as both standards lead to affirmance.
`
`However, the Court could apply Phillips, by holding that it applies to these facts or
`
`by assumption without decision, to affirm the Board’s decision for at least three
`
`reasons.
`
`First, as shown below, the claims are invalid under the Phillips standard for
`
`claim construction urged by Straight Path. The NetBIOS and WINS references
`
`disclose a process under any construction of the term, and the well-accepted
`
`methodologies and principles articulated by Phillips do not support Straight Path’s
`
`attempt to read a temporal requirement into the term “connected to the computer
`
`network.”
`
`Second, although the parties differ as to which claim construction standard
`
`should apply, neither party explains how the application of either standard would
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`WEST\258337874.10
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`- 5 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 10
`
`

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`Case: 15-1212 Document: 47 Page: 11 Filed: 08/11/2015
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`
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`affect the result. For example, Straight Path explicitly argues, “Under either
`
`standard, however, the proper construction and the applicable fundamental issues
`
`are the same.” (Appellant Br. at 29.) The Court should therefore make clear that
`
`the Board’s decision is affirmed applying the narrow standard.
`
`Third, by explicitly affirming the Board’s decision under the Phillips
`
`standard, the Court will foreclose Straight Path from wastefully rearguing the
`
`issues currently before the Court under the guise of a standard narrower than the
`
`broadest reasonable interpretation applied by the Board in its decision below. Cf.
`
`Phonometrics, Inc. v. Choice Hotels Int’l, Inc., 21 F. App’x 910, 912 (Fed. Cir.
`
`2001) (“Under principles of stare decisis, moreover, future panels like the present
`
`panel will follow the claim construction set forth by our court in the two decisions
`
`cited above ….”). The most efficient result is for the Court to make clear that the
`
`decision below was correct in a manner that limits Straight Path’s arguments in the
`
`subsequent IPRs.
`
`B. NetBIOS and WINS Both Expressly Disclose the Claimed “Process”
`Under any construction of “process,” substantial evidence supports the
`
`Board’s finding that NetBIOS and WINS expressly disclose this limitation. While
`
`Samsung agrees with SipNet that “operation of any computer system necessarily
`
`involves computer hardware (the ‘processing unit’) as well as one or more
`
`processes executing on this computer hardware,” (Appellee Br. at 18), the parties
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`WEST\258337874.10
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`- 6 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 11
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`

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`Case: 15-1212 Document: 47 Page: 12 Filed: 08/11/2015
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`
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`needlessly frame the issue for the first time as one that turns on claim construction.
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`See Ormco, 498 F.3d at 1317-18 (declining to vacate “essentially a correct” district
`
`court decision that did not “conduct a claim construction … focusing on specific
`
`claim language”). The Board’s finding should be affirmed, even under Straight
`
`Path’s proffered construction of “process” as “a running instance of a computer
`
`program or application” for at least two independent reasons.
`
`First, applicants’ explanation for adding the word “process” to the claims
`
`demonstrates that the NetBIOS and WINS references expressly disclose the
`
`claimed process. During the original prosecution of the ’704 patent, the applicant
`
`told the Patent Office that the ’704 patent’s disclosure of processing units disclosed
`
`the claimed processes. Straight Path should be held to these statements here.
`
`Second, the Board’s finding that the NetBIOS and WINS references
`
`expressly disclose the claimed processes is based on substantial evidence that
`
`Straight Path virtually ignores in its brief. Both references employ NetBIOS
`
`applications. And the portion of the NetBIOS reference cited by the Board
`
`explains that NetBIOS applications connected to the computer network register
`
`names with the server, query those registered names, and use the registered names
`
`to create point-to-point sessions between two NetBIOS applications.
`
`1.
`
`NetBIOS and WINS’s Disclosures of Processing Units Expressly
`Disclose the Claimed “Processes”
`
`Samsung agrees with SipNet’s statement that the ’704 patent’s specification
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`WEST\258337874.10
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`- 7 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 12
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`

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`Case: 15-1212 Document: 47 Page: 13 Filed: 08/11/2015
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`
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`uses the term “processing unit” rather than the claim term “process.” (Appellee Br.
`
`at 17-18.) But the analysis should not end there. The applicants’ statements to the
`
`Patent Office during the original prosecution of the ’704 patent make clear that the
`
`disclosure of a processing unit expressly discloses a process. Yet despite the
`
`relevance of the prosecution history to the Court’s understanding of the scope of
`
`the claim term “process,” neither party to this appeal offers any analysis of that
`
`history.
`
`The Court should consider the relevant prosecution history when analyzing
`
`the claim term “process.” The ’704 patent’s prosecution history “was created by
`
`the patentee in attempting to explain and obtain the patent.” Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc). “Claims as allowed must
`
`be read and interpreted with reference to rejected ones and to the state of the prior
`
`art ….” Graham v. John Deere Co., 383 U.S. 1, 33 (1966). “[I]t is the totality of
`
`the prosecution history that must be assessed, not the individual segments of the
`
`presentation made to the [PTO] by the applicant ….” Elkay Mfg. v. Ebco Mfg.,
`
`192 F.3d 973, 979 (Fed. Cir. 1999)). “The court has broad power to look as a
`
`matter of law to the prosecution history of the patent in order to ascertain the true
`
`meaning of language used in the patent claims ....” Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) aff’d 517 U.S. 370 (1996).
`
`Accordingly, the Court examines “the entire prosecution history, which includes
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`WEST\258337874.10
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`- 8 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 13
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`

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`Case: 15-1212 Document: 47 Page: 14 Filed: 08/11/2015
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`
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`amendments to claims and all arguments to overcome and distinguish references.”
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`See Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1372 (Fed. Cir. 2005)
`
`The original filed claims of the application that issued as the ’704 patent
`
`each recited “processing unit” or “processor,” in accordance with the embodiments
`
`disclosed in the specification. U.S. App. No. 08/533,115 (“the ’115 App.”). None
`
`of the claims used the issued claim term “process.” The applicants introduced
`
`“process” through an amendment that changed “all occurrences of ‘processor’ …
`
`to ‘process.’” (’115 App., March 4, 1999, Amendment, at 15.) The applicants
`
`argued that the amended claims were disclosed by the specification as follows:
`
`Applicants have disclosed a solution to the [problem of
`dynamic IP addresses]. The solution utilizes a
`client/server system. In the disclosed system, a client
`process contacts a dedicated address directory server and
`forwards to the server the network protocol address to
`which it has been assigned upon connection to the
`computer network, along with other identification
`information. The dedicated address directory server
`maintains a compilation or list of entries, each of which
`contain a process identifier and the corresponding
`network protocol address forwarded to the server by the
`process itself. Other processes wishing to contact a
`desired target process simply query the address directory
`server to determine whether the target process is on-line
`and the current network protocol address at which the
`target process is located. The server forwards the network
`protocol address of the target process to the querying
`process. The querying process utilizes the information to
`establish a point-to-point communication with the target
`process.
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`WEST\258337874.10
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`- 9 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 14
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`

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`Case: 15-1212 Document: 47 Page: 15 Filed: 08/11/2015
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`
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`(Id. at 14 (emphasis added).) Moreover the only disclosure of this client/server
`
`system in the ’704 patent is found at 5:25-38 and 5:55-67, both of which use
`
`“processing unit 12” and “processing unit 22,” rather than “process,” to describe
`
`these exact steps. Accordingly, the applicants told the Patent Office that the
`
`specification’s disclosure of processing units 12 and 22 interacting with connection
`
`server 26 and each other to establish a point-to-point connection is an express
`
`disclosure of the claimed “first process” and “second process.”
`
`Straight Path explicitly recognized that WINS and NetBIOS describe
`
`processing units that register and query names in accordance with the client/server
`
`system disclosed and claimed by the ’704 patent. (Appellant Br. at 38-39.)
`
`Because Straight Path explained to the Patent Office that such description of
`
`processing units is an express disclosure of the claimed processes, substantial
`
`evidence supports the Board’s finding that NetBIOS and WINS disclose the
`
`claimed processes.
`
`2.
`
`NetBIOS and WINS’s Disclosure of NetBIOS Applications
`Expressly Disclose the Claimed “Processes”
`
`Despite the Applicants’ own statements to the Patent Office that the
`
`disclosure of a processing unit discloses a process, Straight Path argues that the
`
`Board’s opinion fails to clearly indicate how the Board was applying the prior art
`
`to the claimed process elements. (Appellants Br. at 34-35, “From this paragraph,
`
`one cannot determine what the term ‘process’ means to the Board, or how the
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`WEST\258337874.10
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`- 10 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 15
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`

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`Case: 15-1212 Document: 47 Page: 16 Filed: 08/11/2015
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`
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`NetBIOS reference teaches the ‘process’ claim elements.”) But Straight Path’s
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`argument ignores the issue of whether substantial evidence in the NetBIOS and
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`WINS references support the Board’s decision and instead mounts a futile attack
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`on the Board’s opinion. See Senju Pharm. Co. v. Apotex, Inc., 746 F.3d 1344,
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`1353 (Fed. Cir. 2014) (“Although [appellant] criticizes the district court’s opinion,
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`in any event that argument is immaterial since ‘[w]e sit to review judgments, not
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`opinions.’” (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed.
`
`Cir. 1983))).
`
`Under its proposed construction of “process,” Straight Path frames the issue
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`on appeal as whether the name registration methods of NetBIOS and WINS
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`register a computer or a computer program or application. But the Board
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`explained that the references in fact disclose an application as the claimed process.
`
`Even further, NetBIOS discloses “[a]n application,
`representing a resource, registers one or more names,”
`and, therefore, NetBIOS anticipates the claims even if the
`claims were construed to require “application layer
`software.” Ex. 1003, 360. NetBIOS further discloses
`that applications request names, and a session is a
`reliable message exchange between a pair of NetBIOS
`applications. Id. at 360-361.
`
`(A0017.)
`
`Straight Path argues that the Board’s opinion improperly relied on the cited
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`NetBIOS passages out of context, (Appellant’s Br. at 37), but the full context of
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`WEST\258337874.10
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`- 11 -
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`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 16
`
`

`
`Case: 15-1212 Document: 47 Page: 17 Filed: 08/11/2015
`
`
`
`the cited passages is more than substantial evidence supporting the Board’s
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`decision. For example,
`
`NetBIOS resources are referenced by name. Lower-level
`address information is not available to NetBIOS
`applications. An application, representing a resource,
`registers one or more names that it wishes to use.
`...
`Registration is a bid for use of a name. The bid may be
`for exclusive (unique) or shared (group) ownership.
`Each application contends with the other applications in
`real time.
`…
`The Name Service primitives are:
`
`1)
`Add Name
`The requesting application wants
`exclusive use of the name.
`
`(A1079, emphasis added.) Thus the registered name identifies the NetBIOS
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`application that is using that name. In addition, a NetBIOS application uses the
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`name it registers to establish a session with another NetBIOS application that has
`
`also registered a name:
`
`A session is a reliable message exchange, conducted
`between a pair of NetBIOS applications . . .
`Multiple sessions may exist between any pair of calling
`and called names.
`The parties to a connection have access to the calling and
`called names.
`…
`Session Service primitives are:
`
`1) Call
`Initiate a session with a process that is
`listening under the specified name.
`
`(A1080, emphasis added.)
`
`WEST\258337874.10
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`- 12 -
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 17
`
`

`
`Case: 15-1212 Document: 47 Page: 18 Filed: 08/11/2015
`
`
`
`This disclosure, explicitly cited by the Board (A0017), teaches that NetBIOS
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`applications connected to the computer network receive a registered name from the
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`server, query the server to determine whether other NetBIOS applications are
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`connected to the computer network, and use the received registered name of other
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`NetBIOS applications to establish a point-to-point communication link. Straight
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`Path simply ignores these teachings cited by the Board and argues that the Board
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`somehow “misapprehended what the ‘application, representing a resource’ actually
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`does.” (Appellant Br. at 37.) The Court should reject Straight Path’s attempt to
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`confuse the issue with a manufactured computer/computer program claim
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`construction dispute. (Appellant Br. at 37.) Under any construction of “process,”
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`NetBIOS discloses the claimed processes.
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`WINS also discloses the claimed processes for the same reason. As Straight
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`Path acknowledges in its brief, the WINS name registration process implements
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`the NetBIOS process cited by the Board and discussed herein. (Appellant Br. at
`
`39, discussing “WINS implementation of NetBIOS”; A002, “Patent Owner
`
`specifically argues that WINS is an implementation of NetBIOS.”) Moreover, the
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`WINS reference itself provides additional disclosures of the claimed processes
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`running on processing units, connecting to a network to register names with the
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`WINS server, querying the server to find registered names of other processes
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`WEST\258337874.10
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`- 13 -
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 18
`
`

`
`Case: 15-1212 Document: 47 Page: 19 Filed: 08/11/2015
`
`
`
`connected to the computer network, and establishing point-to-point
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`communications links between them.
`
`For example, WINS is part of the Windows NT operating system process
`
`that runs on a Window NT computer.
`
`When WINS servers are in place on the network,
`NetBIOS over TCP/IP resolves names on a client
`computer by communicating with the WINS server. … In
`Windows NT 3.5, the NETBT.SYS module provides the
`NetBIOS over TCP/IP functionality that supports name
`registration and resolution modes.
`
`(A1301.) The NETBT.SYS software module is part of the WINS service which is
`
`part of the Windows NT operating system.
`
`The Windows Internet Name Service is a Windows NT
`service running on a Windows NT computer. The
`supporting WINS client software is automatically
`installed for Windows NT Server and for Windows NT
`computers when the basic operating system is installed.
`
`(A1358.) Accordingly, the WINS reference also discloses the claimed processes.
`
`3.
`
`The Board Did Not Commit Reversible Error By Not Explicitly
`Construing “Process”
`
`The construction of “process” was not disputed below because both parties
`
`identified the same construction, which is essentially the construction Straight Path
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`articulates on appeal. See Appellant Br. at 16-17 (describing similar construction).
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`And even if the Board should have explicitly construed “process,” the failure to do
`
`so was harmless error because NetBIOS and WINS disclose the claimed process
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`under the construction Straight Path now seeks. See Ormco, 498 F.3d at 1317-18
`- 14 -
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`WEST\258337874.10
`
`Samsung Ex. 1034
`Samsung v. Straight Path, IPR2014-01366, page 19
`
`

`
`Case: 15-1212 Document: 47 Page: 20 Filed: 08/11/2015
`
`
`
`(declining to vacate “essentially a correct” district court decision that did not
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`“conduct a claim construction … focusing on specific claim language”).
`
`Accordingly, the Board did not reversibly err by failing to expressly construe the
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`term in its decision.
`
`However, if the Court concludes that Straight Path’s appeal turns on the
`
`exact construction of “process,” the Court should not construe the term in the first
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`instance on the limited record before it. Neither party to the appeal offers any real
`
`analysis of the term’s proper construction in view of the intrinsic or extrinsic
`
`record. Straight Path merely argues that the Court should adopt the Eastern
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`District of Virginia’s construction without identifying any evidence or argument to
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`support that construction. (Appellant Br. at 20-21, 40, 41.) Similarly, SipNet
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`offers neither a construction of “process” nor an argument about what that
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`construction should be. (Appellee Br. 15-19.)
`
`The lack of dispute on the merits of the proper construction of “process”
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`before this Court mirrors the lack of dispute below. The construction of “process”
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`is, howev