UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v .
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`
`
`Case IPR2014-013661
`Patent 6,108,704 C1
`
`
`
`PETITIONERS’ REPLY TO PATENT
`OWNER’S RESPONSE TO PETITION
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`1 IPR2015-01011 has been joined with this proceeding.
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`Table of Contents
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`Page
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`B.
`C.
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`D.
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`I.
`II.
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`III.
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`IV.
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`
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`INTRODUCTION .......................................................................................... 1
`PATENT OWNER IS ESTOPPED FROM MAKING CERTAIN
`ARGUMENTS ............................................................................................... 2
`“PROCESS” ................................................................................................... 3
`A.
`The Claims Do Not Require the Registration of a “Process
`Name” At the Server ............................................................................ 4
`The Claimed “Process” Does Not Exclude Operating Systems .......... 6
`The Specification Makes Clear that a Process is Connected to
`the Network When the Processing Unit Running the Process
`Registers its IP Address ........................................................................ 7
`The Microsoft Manual in View of NetBOIS Discloses
`Connecting a “Process” to the Network ............................................... 9
`“CONNECTED TO THE NETWORK” / “ON-LINE STATUS” /
`“ACCESSIBLE” CLAIM ELEMENTS ....................................................... 13
`A.
`Claim Construction of the “Connected to the Computer
`Network” / “On-Line Status” / “Accessible” Limitations ................. 13
`1.
`PO’s Argument that the Claims Require a “Guarantee” is
`Not Supported by the Claim Language .................................... 14
`PO’s Proposed “Guarantee” Directly Contradicts the
`Teachings and Language of the Specification ......................... 16
`a.
`PO’s “Guarantee” Requirement Excludes All
`Disclosed Embodiments ................................................ 16
`The Specification Teaches that “Connected to the
`Computer Network” and “Available” to Respond
`Are Distinct Concepts .................................................... 18
`The Prosecution History, Wherein PO’s Proposed Claim
`Construction Was Expressly Rejected, Forecloses that
`Construction Here .................................................................... 18
`These Limitations Encompass Registering with the
`Server ....................................................................................... 21
`
`b.
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`2.
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`3.
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`4.
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`Table of Contents
`(continued)
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`Page
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`B.
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`The Microsoft Manual in view of NetBIOS Discloses The
`“Connected To The Network” / “On-Line Status” /
`“Accessible” Claim Elements ............................................................ 21
`1.
`The is No Dispute that the Microsoft Manual in view of
`NetBIOS Discloses these Limitations Under Petitioner’s
`Proposed Construction ............................................................. 21
`THE MICROSOFT MANUAL IN VIEW OF NETBIOS AND
`PALMER DISCLOSES AN “INTERFACE ELEMENT
`REPRESENTING A FIRST CALLEE PROCESS” .................................... 22
`A.
`The Microsoft Manual in view of NetBIOS Discloses an
`“Interface Element Representing A First Callee Process” ................. 22
`The Microsoft Manual in view of NetBIOS and Palmer
`Discloses an “Interface Element Representing A Second Callee
`Process” .............................................................................................. 23
`VI. CONCLUSION ............................................................................................. 25
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`V.
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`B.
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`Table of Authorities
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`Page
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`CASES
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`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.
`616 F.3d 1283 (Fed. Cir. 2010) .......................................................................................16
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`Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.
`555 F.3d 984 (Fed. Cir. 2009) .........................................................................................23
`
`Phillips v. AWH Corp.
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................3, 16, 18
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.73(d)(3) .............................................................................................. 3
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`1033
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`1034
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`EXHIBITS
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`September 1, 2015, deposition of Dr. Stuart Stubblebine, Ph.D.
`
`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 IPR2013-0246 in Case No. 2015-1212 in the United States Court of
`Appeals for the Federal Circuit
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`1035
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`Final Written Decision in IPR2013-0246 before the Patent Trial and
`Appeal Board
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`I.
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`INTRODUCTION
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`The asserted prior art makes the asserted claims obvious for the reasons
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`shown in the Petition, but it also teaches a system that is identical in all relevant
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`respects to the only embodiment disclosed in the specification. Patent Owner’s
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`(“PO”) three arguments in its Patent Owner’s Response (“POR”) should be
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`rejected because they are wholly without merit.
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`First, PO makes the untenable argument that because the claims recite
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`“process” the connection server must register a “process name” as opposed to any
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`other name, like a computer name. The claims do not require the registration of a
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`process name, and the Board should not create such a limitation because it would
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`exclude all disclosed embodiments, which register an E-mail address instead of a
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`process name.
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`Second, PO makes the equally untenable argument that the claims require a
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`“guarantee” that the called process is “running” and “available” to respond at the
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`time of the query. Again, the claims do not require any such limitations, and the
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`Board should not create them because doing so would exclude all disclosed
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`embodiments, which, at most, rely on “relatively current” information.
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`Third, PO argues that the references do not make the claimed “user
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`interface” elements obvious, but the express teachings of the references and the
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`uncontested testimony of Petitioner’s expert establishes clearly that those
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`limitations are obvious.
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`II.
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`PATENT OWNER IS ESTOPPED FROM MAKING CERTAIN
`ARGUMENTS
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`On October 9, 2014, the Board issued its Final Written Decision in
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`IPR2013-00246 (“Final Written Decision”) and decided several issues adverse to
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`PO. See Paper 62 in IPR2013-00246. The Final Written Decision issued after the
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`Petition for this IPR was filed on August 22, 2014, and contained findings that
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`both the NetBOIS reference and the Microsoft Manual disclose “processes” even
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`under the PO’s improperly narrow construction.
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`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. 1035 at 17.
`
`A name registration request connects a process to a network by
`registering the process with the network, and a name query, from a
`process, discovers the addresses of processes connected to the
`network.
`
`Ex. 1035 at 17.
`
`WINS discloses a name registration request that connects a process to
`a network with dynamic name registration, and a name queries are
`responded to with the address of the second process.
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`Ex. 1035 at 22.
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`The Final Written Decision is currently being appealed to the Federal
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`Circuit, wherein PO is arguing the Federal Circuit should apply the Phillips
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`standard for claim construction. Petitioner filed an amicus brief in support of the
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`Board’s decision, arguing in relevant part that the Federal Circuit should affirm the
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`Board’s findings under the Phillips standard. Ex. 1034. Oral argument is
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`scheduled for October 9, 2015. Thus, by the time the Board issues its final written
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`decision in this IPR, PO may be precluded from contesting the above adverse
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`findings under 37 C.F.R. § 42.73(d)(3). Regardless of any legal estoppel, PO has
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`provided no reason for the Board to make inconsistent factual findings in this IPR.
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`III. “PROCESS”
`There is no material dispute that the prior art at issues discloses computers
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`that comprise the combination of hardware and running computer programs, i.e.,
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`processes. Petition at 5-11. The dispute regarding “process” involves how the
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`Board should construe phrases like “the second process is connected to the
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`computer network” and, specifically, whether it includes registering a computer
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`name that runs the process, or whether it is limited to registering a “process name”
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`at the server. The Board properly held in its Institution Decision that “we
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`determine that the claim limitations ‘connected to the network’ and ‘on-line’
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`encompass registering an address for a computer or process with the server.”
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`Paper 12 at 16 (emphasis added). The Board should reject PO’s attempt to
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`construe the claims to require the registration of a “process name” at the
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`connection server, as such a limitation is not required by the claims, and doing so
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`would exclude all disclosed embodiments.
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`A. The Claims Do Not Require the Registration of a “Process Name”
`At the Server
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`PO repeatedly alleges there is a difference between a “process” and a
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`“computer,” but fails to propose a construction or explain how that alleged
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`difference is relevant to the claims. PO’s real claim construction position is finally
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`revealed when PO argues that, to connect a process to a network, the connection
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`server must register a “process name.” PO does not reveal this argument until
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`footnote 7 at page 33 of the POR, wherein PO argues that registering a “process” is
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`different from registering a “computer” because registering a “process” requires
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`registering a “process name” at the connection server. Specifically, PO attempts to
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`distinguish DNS registration of a computer name and IP address from registering a
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`process by arguing that in DNS “a host name – not an application’s name – is
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`mapped to an IP address.” POR at 33, note 7. PO then repeats this argument on
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`page 34 of the POR to attempt to distinguish NetBIOS by arguing that NetBIOS
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`registers a “computer name, not the name of any computer program or application
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`running thereon.” POR at 34. Thus, all of PO’s attempts to distinguish in the
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`abstract a “process” from a “processing unit,” culminates in PO’s argument that the
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`connection server must register a “process name” to practice the claims.
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`Registering a “process name” is not claimed expressly in any claim. Ex.
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`1001 at 11:2-22 (claim 1). The claims never discuss sending, registering, or using
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`process-specific names or addresses that would distinguish in any way between a
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`process and a processing unit or user. To the contrary, the claims relate to a single
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`identifier for a process, processing unit, and user, all of which are tied to a single
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`network protocol address.
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`Moreover, a construction that requires the registration of a process name (to
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`distinguish registering a processing unit running the process or a user using the
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`process) should be rejected because it would exclude every embodiment disclosed
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`in the specification. The specification discloses registering an E-mail address and
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`an IP address, which the specification teaches are associated with a “processing
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`unit” and not exclusively with a process. Ex. 1001 at 5:26-27 (“first processing
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`unit 12 automatically transmits its associated E-mail address and its dynamically
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`allocated IP address . . .”). Thus, no process is ever explicitly registered with the
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`connection server in any disclosed embodiment.
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`PO then argues that Dr. Houh testified there was a difference between
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`connecting a process and connecting a processing unit, which simply is not true.
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`POR at 34 (citing Ex. 2022 at 174:12-175:24). The cited portions of Dr. Houh’s
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`testimony discusses a hypothetical example of an “FTP client” running on top of
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`WINS, such that the WINS components of the network stack “would be part of the
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`FTP actually running.” Ex. 2022 at 174:22-175:10. In that situation, Dr. Houh
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`testified that you could name the computer “FTP client 1, and then you would see
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`in the database it would say FTP.” Ex. 2022 at 175:21-23. Dr. Houh testified that
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`the Microsoft Manual actually teaches this style of naming where it teaches
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`inclusion of “NT” in the registered name to indicate the computer is running
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`Windows NT. Ex. 2022 at 284:12-21; see also Ex. 1012 at 10-12 (teaching the
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`elements of Windows NT including, among others, WINS, NetBIOS, and telnet).
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`The Claimed “Process” Does Not Exclude Operating Systems
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`B.
`PO in its POR does not argue that “process” requires application level
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`software, as the PO’s proposed construction of “process” expressly includes
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`application or computer program. POR at 9. PO does not dispute that NetBIOS,
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`the Microsoft Manual, and Palmer disclose computers running a computer
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`program. POR at 14-16. However, PO’s expert at his deposition attempted to
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`distinguish NetBIOS and the Microsoft Manual from the claimed “process” by
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`arguing the disclosed programs were operating systems and not “applications.”
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`Ex. 1033 at 84:7-85:25. There is no basis for distinguishing an operating system
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`from the claimed “process,” and an operating system is clearly within PO’s
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`proposed construction that includes any “computer program.” Moreover, running
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`applications often incorporate and rely on functions provided by the operating
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`system, like the networking stack, or user interface elements, as input and output
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`operations usually are controlled by operating systems. Ex. 1004 at ¶ 23-25; Ex.
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`2022 at 172:7-178:7. This is consistent with the specification’s disclosure of using
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`operating systems for the graphical user interface elements. See, e.g., Ex. 1001 at
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`4:7-19.
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`C. The Specification Makes Clear that a Process is Connected to the
`Network When the Processing Unit Running the Process Registers
`its IP Address
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`The specification only discusses connecting “processing units” and “users”
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`to the network. Ex. 1001 at 1:63-2:10 (“processing unit”); 5:15-6:16 (“processing
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`unit” and “user”); 7:32-36 (“users or processing units”); 10:4-37 (“processing unit”
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`and “user” and “party”). The specification never describes connecting a “process”
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`to the network at all, much less in a way that would distinguish it from the
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`disclosed protocol for connecting a processing unit and user to the network.
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`PO’s description of the ’704 patent specification in the POR at Section
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`II.A.2. (pages 4-7) proves there is no distinction between connecting a “process”
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`and connecting its “processing unit” and “user” to the network in the context of the
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`’704 patent. These pages of the POR walk through the only disclosed embodiment
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`in the patent from column 5, line 15 to column 6, line 16, and simply replace the
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`specification’s use of the words “processing unit” and “user” with the PO’s use of
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`the words “process” or “computer program.” POR at 4-7. Thus, PO’s entire
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`argument regarding “process” is founded on citations to “processing unit” or
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`“user” in the specification, which simply confirms there is no distinction between
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`them. This act of paraphrasing the specification and replacing processing unit and
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`user with process is precisely what PO did when amending the claims during
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`prosecution. As explained in the Petition at 26-28, PO cannot now argue there is a
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`difference between connecting a process, and connecting a processing unit.
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`In fact, PO’s expert admits that the ’704 patent uses the term “processing
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`unit” and “process” interchangeably. Ex. 2023 at ¶ 26 (“Further, the specification
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`states that the claimed ‘process,’ also referred to as a ‘processing unit’ in the
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`specification . . . .”).
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`PO also cites to 3:40-55; 4:26-32 in the POR at page 5. These portions of
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`the specification disclose that the processing unit can (optionally) run software to
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`perform the functionality of connecting the processing unit to the computer
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`network. See, e.g., Ex. 1001 at 4:37-40 (“The functions represented by these
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`blocks may be provided thought the use of either shared or dedicated hardware,
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`including, but not limited to, hardware capable of executing software.”). Nothing
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`in these passages discloses connecting a “process” to a network or distinguishes it
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`from connecting a “processing unit” or “user” to the network.
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`In all disclosed embodiments, the process, processing unit, and user are all
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`identified by the same E-mail address and use the same IP address. See., e.g., Ex.
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`1001 at 5:26-29. There is simply no way to distinguish between connecting a
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`process, the processing unit running that process, and the user using that process,
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`in the context of the claimed invention and specification. Thus, no matter how PO
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`attempts to characterize the issue, the query (E-mail address) and the answer (IP
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`address, if registered/online) is always the same. Thus, the Board properly
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`construed the larger phrases at issue to “encompass registering an address for a
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`computer or process with the server.”
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`D. The Microsoft Manual in View of NetBOIS Discloses Connecting
`a “Process” to the Network
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`PO argues that the Microsoft Manual and NetBIOS “do not describe a
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`system for registering names for individual computer programs running on those
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`computers.” POR at 16. PO’s argument is without merit for at least two reasons.
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`First, as established above, the claims do not require the registration of a “process
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`name” for individual programs (plural) running on those computers. Second, as
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`this Board correctly found in IPR2013-00246, NetBIOS and the Microsoft Manual
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`disclose registering processes. Ex. 1035 at 17.
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`NetBIOS discloses “[a]n application, representing a resource, registers one
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`or more names,” and, therefore, NetBIOS anticipates the claims even if the claims
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`were construed to require “application layer software.” Ex. 1014 at 379. NetBIOS
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`further discloses that applications request names, and a session is a reliable
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`message exchange between a pair of NetBIOS applications. Id. at 379-80.
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`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.
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`...
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`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.
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`…
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`The Name Service primitives are:
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`
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`1)
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`Add Name
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`The requesting application wants exclusive use of the name.
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`Ex. 1014 at 379. Thus the registered name identifies the NetBIOS application that
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`is using that name. In addition, a NetBIOS application uses the name it registers to
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`establish a session with another NetBIOS application that has also registered a
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`name:
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`A session is a reliable message exchange, conducted between a pair of
`NetBIOS applications . . .
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`Multiple sessions may exist between any pair of calling and called
`names.
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`The parties to a connection have access to the calling and called
`names.
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`…
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`Session Service primitives are:
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`
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`1) Call
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`Initiate a session with a process that is listening under the specified
`name.
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`Ex. 1014 at 380.
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`This disclosure teaches that NetBIOS applications connected to the
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`computer network receive a registered name from the server, query the server to
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`determine whether other NetBIOS applications are connected to the computer
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`network, and use the received registered name of other NetBIOS applications to
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`establish a point-to-point communication link. PO simply ignores these teachings.
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`Under any construction of “process,” NetBIOS discloses the claimed processes.
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`WINS also discloses the claimed processes for the same reason. PO admits
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`the WINS name registration process implements the NetBIOS process discussed
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`herein. POR at 14-16. Moreover, the WINS reference itself provides additional
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`disclosures of the claimed processes running on processing units, connecting to a
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`network to register names with the WINS server, querying the server to find
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`registered names of other processes connected to the computer network, and
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`establishing point-to-point communications links between them.
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`For example, WINS is part of the Windows NT operating system process
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`that runs on a Window NT computer.
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`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.
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`Ex. 1012 at 62. The NETBT.SYS software module is part of the WINS service
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`which is part of the Windows NT operating system.
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`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.
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`Ex. 1012 at 124. Accordingly, the WINS reference also discloses the claimed
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`processes.
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`The repeated statements in the POR that the Petition relies exclusively on
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`the disclosure of “computers” as opposed to “processes” is incorrect. The Petition
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`expressly cites to the disclosure of processes in these references as supporting the
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`disclosure of these limitations. See, e.g., Petition at 35 (citing Ex. 1012 at 3-37
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`(discussing “computers running” Windows NT and NetBIOS programs); Ex. 1012
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`at 10-12 (disclosing the elements of Windows NT, including NetBIOS, WINS and
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`telnet). In fact, the Petition even cites the use of “NT_PC1” as the name that is
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`registered and queried, which includes the name of the process “NT.” Petition at
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`36-37. Dr. Houh testified that one of ordinary skill would understand that name
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`meant “a Windows NT machine,” i.e., a machine running Windows NT. Ex. 2022
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`at 284:12-21; see also Ex. 1012 at 10-12 (teaching the elements of Windows NT
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`including, among others, WINS, NetBIOS, and telnet). Dr. Houh also testified that
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`this name could reflect the name of other processes that incorporate the Windows
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`NT network stack when running, such as an FTP application. Ex. 2022 at 170:10-
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`178:7; Ex 1004 at ¶¶ 99-104; Petition at 38, 42.
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`IV. “CONNECTED TO THE NETWORK” / “ON-LINE STATUS” /
`“ACCESSIBLE” CLAIM ELEMENTS
`A. Claim Construction of the “Connected to the Computer Network”
`/ “On-Line Status” / “Accessible” Limitations
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`PO purports to propose an “ordinary meaning” of the “connected to the
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`computer network” terms within the larger phrases like “a query as to whether the
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`process is connected to the computer network at the time of the query.” POR at
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`21. PO and PO’s expert admit that a process is connected to the network at the
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`time of its registration at the server. POR at 5-6; Ex. 2023 at ¶ 17 Thus, the real
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`dispute is how current the information must be at the server at the time of the
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`query. In this regard, PO actually argues for an extremely narrow construction of
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`the claims by arguing the claims require a “guarantee” that the second process is
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`“running” and “available” to respond at the moment of the query. PO then argues
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`the prior art is “imperfect” because it does not provide such a “guarantee.” There is
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`no support for PO’s interpretation of the claims. And, in fact, PO’s own expert
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`admitted at his deposition that the degree of precision is “arbitrary” and would only
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`have to be “reasonable” relative to the desired application. Regardless, any such
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`interpretation should be rejected because it would exclude all disclosed
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`embodiments.
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`1.
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`PO’s Argument that the Claims Require a “Guarantee” is
`Not Supported by the Claim Language
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`PO argues that the claims require a “guarantee” that the second process is
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`“running” and “available to respond” at the time of the query in its attempt to
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`distinguish NetBIOS and the Microsoft Manual. For example, PO argues WINS
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`servers do “not ensure” that a device is “currently running.” POR at 20, 51. PO
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`similarly argues that NetBIOS does not practice the claims because it contains “no
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`guarantee” that the called node is operating. POR at 21. PO argues the claims
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`require a determination that “the second computer is, at that moment, on-line and
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`available to communicate.” POR at 51. There is no support in the claims for PO’s
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`arguments. The plain language of the claims only requires that the called process
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`by connected to the network, which is accomplished upon registration with the
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`connection server. Nothing in the claims state the process is “running” or
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`“available” to respond at the time of the query.
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`PO’s expert initially took the same position in his declaration. PO’s expert
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`rewrote the claim language to insert the word “only” to narrow the claims such that
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`the server would return an address “only” when the second process is connected to
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`the network. Ex. 2023 at ¶ 24. But no claim, and no proposed construction, inserts
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`the word “only” into the claim. PO’s expert also testified in his declaration that
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`WINS is different from the claims because WINS is “not perfect.” Ex. 2023 at
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`¶ 46. And he testified in his declaration that the claimed invention requires a
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`“guarantee” that the second process is running. Ex. 2023 at ¶ 51 (“Unlike the
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`claimed invention, the query in WINS is only a name query, it is no guarantee that
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`the queried computer is running.”). As examples of the lack of a guarantee, he
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`testified that a computer running WINS could “crash” or the network connection
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`could be removed, without WINS being properly shut down. Ex. 2023 at ¶ 52.
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`However, when pressed at his deposition, PO’s expert admitted that the
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`disclosed embodiment was subject to the same type of computer crashes. Ex. 1033
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`at 66:2-23; Ex. 2023 at ¶ 52. He then testified that the claims were broad enough
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`to include a computer system that would check up at “arbitrary” intervals to make
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`sure the information was current. Ex. 1033 at 58:23-59:11. PO then examined its
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`own expert on this point, attempting to lead the expert into testifying that an
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`interval of one day would be too long. Ex. 1033 at 86:18-88:18. But PO’s expert
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`stood his ground, and testified that the reasonableness of any interval would be
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`relative to the desired application. Ex. 1033 at 88:19-89:10. PO’s expert’s
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`testimony that the interval could be “arbitrary” and “reasonable” simply relates
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`back to the disclosure of time stamps to ensure that the information is “relatively
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`current” within 2 to 24 hours. Ex. 1001 at 5:44-49.
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`There simply is no “guarantee” that distinguish the prior art at issue in the
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`IPR, and any construction of the claim with a guarantee that is “arbitrary” or
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`“reasonable” would be hopelessly indefinite.
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`2.
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`PO’s Proposed “Guarantee” Directly Contradicts the
`Teachings and Language of the Specification
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`The contradiction between the plain language of the claims and Straight
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`Path’s temporal requirement is even more clear when the claims are “read in view
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`of the specification, of which they are a part.” Phillips v. AWH Corp. 415 F.3d
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`1303, 1315 (Fed. Cir. 2005). The specification does not describe a single
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`embodiment that meets Straight Path’s “guarantee” requirements. The
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`specification therefore confirms that the temporal requirement should be rejected.
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`a.
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`PO’s “Guarantee” Requirement Excludes All
`Disclosed Embodiments
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`All disclosed embodiments use “connected to the computer network”
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`according to its full scope, which includes all processes that are registered or
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`logged in to the server, even if there is no guarantee that the processes are
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`“available” to respond at the moment of the query by the first process. In fact, no
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`disclosed embodiment can “guarantee” or “ensure” the availability of the second
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`process at any given point in time. Thus, PO’s narrowing construction should be
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`rejected because it excludes all disclosed embodiments. Adams Respiratory
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`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) .
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`The ’704 patent discloses that the connection server optionally “may” use
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`timestamps to make sure “the on-line status information” is “relatively current.”
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`Ex. 1001 at 5:44-49. The ’704 patent discloses using 2 hours and 24 hours as the
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`limits for timestamped registrations. Id. This optional timestamping functionality
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`is expressly claimed in dependent claim 3, which is not at issue in this IPR.
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`Regardless, PO argues that using time stamps of this relative magnitude is not
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`sufficient to meet PO’s proposed construction of “guaranteed” availability. POR at
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`21. Thus PO’s construction would exclude this embodiment.
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`The ’704 patent also discloses that a “user” (again, not a “process” or a
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`“processing unit”) can log off or go off line and, if so, the “processing unit of the
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`user” will send “an off-line message’ to the server. Ex. 1001 at 6:6-16. In
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`response to the message, the server will then delete the “user’s” information or flag
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`the “user” as being off-line. Notably, PO’s expert testified he had no opinion as to
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`whether “user” in this passage related to a person, process, or processing unit. Ex.
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`1033 at 70:10-24. The deletion of entries from the server is expressly claimed in
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`dependent claims 37 and 42, and off-line messages are claimed in dependent
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`claim 7, none of which are at issue in this IPR. Regardless, any such log off
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`process suffers the same potential computer “crashes” and network interruptions
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`that PO argues makes the prior art lack the requisite guarantee. Thus, PO’s
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`construction would also exclude this embodiment.
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`b.
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`The Specification Teaches that “Connected to the
`Computer Network” and “Available” to Respond Are
`Distinct Concepts
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`The specification’s use of very different terms to discuss whether a process
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`is connected to the computer network and whether a process is available to respond
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`precludes reading Straight Path’s “and available” limitation into the claim. See
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`Phillips, 415 F.3d at 1316. For example, the specification expressly teaches that
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`although connection server 26 is “operatively connected through the Internet 24” to
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`processing units 12 and 22, connection server 26 may nevertheless be “non-
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`responsive, inoperative, and/or unable to perform the primary point-to-point
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`Internet protocol, as a non-responsive condition.” Ex. 1001 at 3:11-17; 6:17-23;
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`Fig. 7, (Step 58 “Is the connection server in a responsive condition?”). Similarly,
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`the specification teaches that a called process could be connected to the computer
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`network, but still be “BUSY” and not available to respond. Ex. 1001 at 5:13, 8:48.
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`PO’s expert had no opinion how to resolve this inconsistency. Ex. 1033 at 41:24-
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`43:19.
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`3.
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`The Prosecution History, Wherein PO’s Proposed Claim
`Construction Was Expressly Rejected, Forecloses that
`Construction Here
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`The prosecution history contains an express rejection of PO’s attempt to
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`narrow the ordinary meaning of “connected to the computer network,” confirming
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`that limitation is entitled to its full scope, which would include processes that are
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`not available to respond at the time of the query. PO notes in the POR at 46-47
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`that PO attem