UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v .
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`
`
`Case IPR2014-013671
`Patent 6,009,469 C1
`
`PETITIONERS’ BRIEF PURSUANT TO PAPER 38 REGARDING
`FEDERAL CIRCUIT DECISION IN APPEAL OF IPR2013-00246
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`1 IPR2015-01011 has been joined with this proceeding.
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`WEST\267370741.2
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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 IPR2014-013671
`Patent 6,009,469 C1
`
`PETITIONERS’ BRIEF PURSUANT TO PAPER 38 REGARDING
`FEDERAL CIRCUIT DECISION IN APPEAL OF IPR2013-00246
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`1 IPR2015-01011 has been joined with this proceeding.
`
`WEST\267370741.2
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`
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`Table of Contents
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`Page
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`I.
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`FEDERAL CIRCUIT’S CONSTRUCTION OF “IS CONNECTED
`TO THE NETWORK” ................................................................................... 1
`A. Wins And NetBios Make This Limitation Obvious ............................. 2
`B.
`The Claims Do Not Require A Guarantee Of Perfect Accuracy ......... 4
`C.
`The Prior Art Does Not Teach Away From The Claimed
`System .................................................................................................. 6
`“PROCESS” ................................................................................................... 7
`II.
`III. CONCLUSION ............................................................................................... 7
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`i
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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) .........................................................................................6
`
`In re Fulton
`391 F.3d 1195 (Fed. Cir. 2004) .........................................................................................6
`
`Straight Path IP Group, Inc. v. SipNet EU S.R.O.
`806 F.3d 1356 (Fed. Cir. 2015) .................................................................................1, 2, 7
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.73(d)(3) .............................................................................................................7
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`WEST\267370741.2
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`i
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`Pursuant to Paper 38, Petitioner hereby submits this brief to address the
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`applicability of the Federal Circuit’s decision in Straight Path IP Group, Inc. v.
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`SipNet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) to this IPR.2 The Court
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`construed “is connected to the computer network” to mean “is connected to the
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`computer network at the time that the query is transmitted to the server.” Because
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`WINS and NetBIOS teach a system that uses the same mechanisms as those relied
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`on by the Court to formulate its construction, WINS and NetBios obviate the
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`challenged claims of the ’469 patent. Attachment B to Paper 35 at 20-21(amicus
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`brief filed in this IPR by Patent Owner (“PO”)).
`I.
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`Federal Circuit’s Construction of “Is Connected To The Network”
`The Court’s construction focused on the intent of the query to request the
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`status of the queried process at the time of the request. Slip Op. at 13; see also id.
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`at 7 (“The present tense ‘is’ in ‘is connected to the computer network’ plainly says
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`that the query transmitted to the server seeks to determine whether the second unit
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`is connected at that time, i.e., at the time the query is sent.”); id. (“The question
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`asked by the query is whether the device ‘is’ connected . . . .” (emphasis added));
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`id. at 8 (“The query required by the claim language asks if the callee ‘is’ online,
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`which is a question about the status at the time of the query.”).
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`The Court also concluded that the present-tense requirement of the claimed
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`query submitted by a first process was satisfied by steps undertaken by the server
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`2 Citations herein use the following format: Petition, Paper 1 (“Pet.”); Patent
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`Owner’s Response, Paper 24 (“POR”); Reply, and Paper 29 (“Reply”).
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`1
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`to provide accurate information in response to the query. Id. at 6. Straight Path
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`agrees in this IPR. POR at 43 (“[T]he specification describes that the connection
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`server [performs] at least a two-step protocol, to track (1) when the process
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`connects to the computer; and (2) when the process disconnects from the computer
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`network”).
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`Specifically, the Court identified two disclosures in the ’704 patent of how a
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`server can accurately respond to the claimed query for the online status of the
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`second process at the time of the query. First, the server “‘may use the timestamps
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`to update the status of each processing unit; for example, after 2 hours, so that the
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`on-line status information stored in the database 34 is relatively current.’” Slip Op.
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`at 3 (quoting ’704 patent 5:39-44). A second “even better means of keeping the
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`database information accurate,” which can “shrink if not completely eliminate any
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`gap between recorded status and true status,” is “‘[w]hen a user logs off or goes
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`off-line from the Internet, the connection server 26 updates the status of the user in
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`the database; for example, by removing the user’s information, or by flagging the
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`user as being off-line.’” Id. at 11 (quoting ’704 patent 6:6-14).
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`The Court’s reliance on these two disclosures to support its construction of
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`“is connected to the network” means that a system with a server that practices
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`these disclosures is within the scope of the claim as construed by the Federal
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`Circuit.
`A. Wins And NetBios Make This Limitation Obvious
`WINS and NetBios teach a system in which a first process queries a server
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`2
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`as to the online status of a second process when the first process wants to
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`communicate with the second process. E.g., Pet. 35-37, Ex. 1012 at 62-63
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`(“[W]hen NT_PC1 wants to communicate with NT_PC2, it queries the WINS
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`server for the address of NT_PC2 . . . [and] gets the appropriate address from the
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`WINS server . . . .”); Reply at 10 (NetBIOS reliable message exchange); Ex. 1014
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`at 380. Thus the purpose of the query for both WINS and NetBIOS is to determine
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`the availability of the queried process for communication (online status) at the time
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`of the query.
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`WINS discloses precisely the same de-registration system taught in ’469
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`patent 7:49-57 that the Federal Circuit held taught the “is connected to the
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`computer network.” PO admits in this IPR that the WINS reference teaches that a
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`“properly” shut down system will send a message to release its name from the
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`WINS server. POR at 18-19; Ex. 2023 at ¶ 44 (“A registered name is released if a
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`WINS enabled computer is shut down properly.”), citing Ex. 1012 at 69. PO also
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`admits in this IPR that the WINS server will only provide a positive response to a
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`query until the name is released.
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`Thus, once registered, a computer’s name will continue
`to appear in the name server look-up table, and will
`continue to be provided upon request . . . until its name
`is released. (Ex. 1017 at 2; Ex. 1014 at 26-7, 379, 395,
`397, 404-6, 408-9, 412-8, Ex. 1012 at 62-3, 67-8, 131-2,
`137-8, 149-50, 164-6.)
`
`POR at 18 (emphasis added).
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`3
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`In addition, because both WINS and the patent are subject to inaccuracies
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`when a computer running a process crashes or is not properly shut down, WINS
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`and the patent disclose the same “garbage collection” system using time stamps to
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`guarantee information is “relatively current.” And it is undisputed that WINS
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`teaches a 40 minute renewal period, which is shorter and more accurate than the 2
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`hour renewal period taught in the patent. Ex. 1012 at 131; Ex. 2022 at 139:14-
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`140:10; Ex. 2023 at ¶ 47; Ex. 1001 at 7:14-19 (2 hours).
`B.
`The Claims Do Not Require A Guarantee Of Perfect Accuracy
`PO’s sole argument to distinguish the de-registration system taught by
`
`WINS from that disclosed and claimed by the patent was that the WINS server
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`cannot “ensure” that the information in its database is 100% accurate. POR at 51
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`(“mapping in the database does not ensure that the related device is currently
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`running”). But the Federal Circuit’s construction does not require that the
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`connection server guarantee the elimination of all gaps between recorded status
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`and true status. Regardless, if the Board imposes this requirement, it is made
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`obvious by WINS and NetBIOS’ teaching that a registration can be “permanent” if
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`the de-registration system is sufficiently reliable. (Ex. 1014 at 397; PO
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`Demonstrative 26 “NDNS implementations which are completely reliable may
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`disable refresh”.) Nevertheless, the Board should not read such a guarantee into
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`the claims for three reasons.
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`First, PO and PO’s expert expressly abandoned this position in this IPR.
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`Reply at 13-15. PO’s expert originally stated that WINS is different from the
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`4
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`claims because WINS is “not perfect” (Ex. 2023 at ¶ 46) and lacked the
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`“guarantee” required by the claims that the second process is running. Ex. 2023 at
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`¶ 51. As examples of the lack of a guarantee, he testified that a computer running
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`WINS could “crash” or the network connection could be removed, without WINS
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`being properly shut down. Ex. 2023 at ¶ 52.
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`At his deposition in this IPR, PO’s expert admitted that the de-registration
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`process disclosed in the ’704 patent 6:6-16—the very disclosure relied on by the
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`Federal Circuit and included in the ’469 patent —is subject to the same potential
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`inaccuracies he had previously identified in the prior art. Ex. 1036 at 66:2-23; Ex.
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`2023 at ¶ 52. He then testified that the claims were broad enough to include a
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`computer system that would check up at “arbitrary” intervals to make sure the
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`information was reasonably current relative to the desired application. Ex. 1036
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`at 58:23-59:11, 88:19-89:10. PO then unsuccessfully attempted to lead the expert
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`into testifying that an interval of one day would be too long. Ex. 1036 at 86:18-
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`88:18.
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`When confronted by these admissions at the oral argument, PO expressly
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`abandoned its previous position that the claims required any guarantee or particular
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`level of accuracy.3 Thus, both PO and PO’s expert in this IPR expressly
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`abandoned their argument that the claims require a guarantee of accuracy—the
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`only basis on which they attempted to distinguish the prior art from this limitation.
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`3 Petitioner will provide a pinpoint citation to this admission within one business
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`day after the transcript of the oral hearing is released by the Board.
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`WEST\267370741.2
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`5
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`Second, the parties in this IPR agree that no disclosed embodiment
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`“guarantees” or “ensures” the availability of the second process at any given point
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`in time. The Board should therefore not re-construe the Federal Circuit’s
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`construction to exclude all disclosed embodiments. Adams Respiratory
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`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010). The
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`specification expressly teaches that the timestamp embodiment is only “relatively
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`current, Ex. 1001 at 7:14-17, and as discussed above, PO and its expert expressly
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`abandoned a guarantee of accuracy for the de-registration embodiment.
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`Third, the file history of the ’469 patent does not support an argument that
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`the claims contain any guarantee of perfect accuracy. Although the Examiner
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`withdrew a rejection over Net BIOS in the reexamination, the Examiner focused
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`solely on NetBIOS’s “permanent” registration—without accounting for NetBIOS’s
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`teaching the such registrations should be used in perfectly reliable systems. (Reply
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`17-18.) Nor did the Examiner consider NetBIOS’s teaching of the same
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`procedures for accurately responding to a query as are disclosed by the ’469 patent,
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`i.e., time stamping registrations and user log off procedures. Id.
`C. The Prior Art Does Not Teach Away From The Claimed System
`Because WINS teaches a system that is more accurate than that disclosed by
`
`the patent, PO cannot point to alternative embodiments of the WINS reference as
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`teaching away from the claimed system. In re Fulton, 391 F.3d 1195, 1201 (Fed.
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`Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not
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`constitute a teaching away from any of these alternatives because such disclosure
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`6
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`does not criticize, discredit, or otherwise discourage the solution claimed….”).
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`Accordingly, the prior art’s disclosure of alternative embodiments such as turning
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`off a computer without properly shutting it down, names registered for infinite or
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`pre-set finite lifetimes, or registered names being released when challenged, POR
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`at 49-50, are irrelevant to whether WINS’s teaching of a system that employs a
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`deregistration process and a 40 minute renewal period renders the claims of the
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`’704 patent obvious.
`II.
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`“Process”
`The Board in IPR2013-00246 found that both WINS and NetBIOS disclose
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`connecting a “process” to the network as claimed. Reply at 2 (citing Ex. 1038 at
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`17 and 22. The Federal Circuit denied PO’s appeal of that finding. Slip Op. at 13.
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`Thus, PO cannot challenge this holding in either the SipNet IPR or this IPR. 37
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`C.F.R. § 42.73(d)(3). To the extent the Board decides to reconsider this issue on
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`the merits, this limitation is disclosed by NetBIOS and WINS under any proposed
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`construction. Petition at 25-31 and 34-33; Reply at 2-12.
`III. Conclusion
`The challenged claims should be held unpatentable.
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`7
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`Dated: January 12, 2016
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` Respectfully Submitted,
`
`
`
`
`
`/s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`Email: Samsung-SP-
`IPR@dlapiper.com
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`
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`
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`WEST\267370741.2
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`8
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`CERTIFICATE OF SERVICE
`The undersigned certifies service of a copy of this document on the Patent
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`Owner’s counsel of record pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) by
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`electronic mail to the following:
`
`For Straight Path IP Group, Inc.:
`
`William A. Meunier (Reg. No. 41,193)
`Matthew Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Tel: (617) 348-1615
`Fax: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`For Cisco Systems, Inc. and AVAYA Inc.:
`
`David L. Cavanaugh (Reg. No. 36,476)
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`david.cavanaugh@wilmerhale.com
`
`
`
`
`
` /s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`Samsung-SP-IPR@dlapiper.com
`
`
`Dated: January 12, 2016
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`
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`WEST\267370741.2
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`9
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