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
`U.S. Patent No. 6,009,469
`
`________________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S ADDITIONAL BRIEFING
`
`
`
`
`1 IPR2015-01007 has been joined with this proceeding.
`
`
`
`________________
`
`
`
`
`
`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
`U.S. Patent No. 6,009,469
`
`________________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S ADDITIONAL BRIEFING
`
`
`
`
`1 IPR2015-01007 has been joined with this proceeding.
`
`
`
`Case No. IPR2014-01367
`
`Table of Contents
`
`
`
`Page
`
`The CAFC’s Construction Of “is connected” Is Controlling .......................... 1
`I.
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction .................................................................... 2
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network ................................................................... 3
`B. Whether a name has been released does not indicate whether
`any particular computer is connected to the computer network ........... 4
`The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released ........................................ 5
`III. Petitioner’s Brief Fails to Address the CAFC’s Decision, But Instead
`Raises New Arguments That Encourage the Board to Take a Position
`That Has Already Been Reversed by the Federal Circuit ............................... 5
`IV. There Is No Estoppel Concerning The “Process” Limitations ........................ 7
`
`C.
`
`
`
`
`
`i
`
`
`
`Case No. IPR2014-01367
`
`
`
`TABLE OF AUTHORITIES
`
`Cases Page(s)
`Phonometrics, Inc. v. Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ............................................................................ 2
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`No. 15-1212 (Fed. Cir. Nov. 25, 2015) ........................................................ 1, 6, 7
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Case No. IPR2014-01367
`
`TABLE OF ABBREVIATIONS
`
`
`WORD PHRASE
`Petitioner’s Supplemental Brief
`Court of Appeals for the Federal Circuit
`Petitioner’s Petition for Inter Parties Review
`Straight Path’s Patent Owner Preliminary
`Response
`Straight Path’s Patent Owner Response
`Federal Circuit Opinion in Straight Path IP Group,
`Inc. v. Sipnet EU S.R.O., No. 15-1212
`(Fed. Cir. Nov. 25, 2015) (Exhibit 2024)
`
`
`ABBREVIATION
`Br.
`CAFC
`Pet.
`PR
`
`R
`Sipnet
`
`iii
`
`
`
`Case No. IPR2014-01367
`
`When the CAFC rejected Sipnet’s and Petitioner’s claim construction
`
`arguments in the Sipnet Appeal, Petitioner effectively lost its IPR. In Petitioner’s
`
`Petition and Reply Brief, it provided no argument or evidence that WINS and
`
`NetBIOS disclosed the “is connected” limitations under Straight Path’s—and now
`
`the CAFC’s—construction. Instead, Petitioner chose to rely solely on its proposed
`
`“registered” construction, which the CAFC has now explicitly rejected: “[i]t is not
`
`a reasonable interpretation of the claim language, considering its plain meaning, to
`
`say that it is satisfied by a query that asks only for registration information,
`
`regardless of its current accuracy.” Sipnet at 7.
`
`I.
`
`The CAFC’s Construction Of “is connected” Is Controlling
`
`Representative challenged claim 3 is directed to a “computer program
`
`product” that (1) transmits to the server a “query as to whether the second process
`
`is connected to the computer network,” and (2) receives the second process’s
`
`network protocol address from the server “when the second process is connected
`
`to the computer network.” (R at 35-36; ’469 patent at claim 3; see also claims 6,
`
`9-10, 14, 17, 18).
`
`In Sipnet, the CAFC construed this same “is connected to the computer
`
`network” limitation “and the counterpart claim phrases that the parties agree bear
`
`the same meaning . . . to mean ‘is connected to the computer network at the time
`
`that the query is transmitted to the server.’” Sipnet at 13 (emphasis added). The
`
`1
`
`
`
`Case No. IPR2014-01367
`
`CAFC’s construction is controlling here, and Petitioner does not argue otherwise.
`
`See, e.g., Phonometrics, Inc. v. Westin Hotel Co., 350 F.3d 1242, 1244-1245 (Fed.
`
`Cir. 2003).
`
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction
`
`Unlike the challenged claims under the CAFC’s construction, WINS and
`
`NetBIOS do not describe any mechanisms for tracking or determining whether a
`
`computer (much less the claimed process) is connected to the computer network at
`
`the time of the query, nor do they describe any mechanism for sending the
`
`requested target’s address dependent on if that target is in fact connected to the
`
`computer network at the time of the query. (R at 1-2, 16-21, 35, 46-50). Indeed, the
`
`art explicitly admits it cannot: “[a]ny name-to-IP address mapping registered with
`
`a WINS server can be provided reliably as a response to a name query. However, a
`
`mapping in the database does not ensure that the related device is currently
`
`running.” (Ex. 1012 at 67-68; R at 19-21, 49-50).
`
`This is because whether a computer is online is not tracked or considered by
`
`the WINS and NetBIOS name servers. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at
`
`378-77, 395-99; R at 1-2, 16-21, 35, 46-50). Rather, name servers have a different
`
`purpose, i.e., enabling one computer to request another target computer’s IP
`
`address by name. (Ex. 1012 at 61-63, 65, 67-69, 122; Ex. 1014 at 378-79, 395-99,
`
`407; R at 14-18). To this end, the WINS and NetBIOS name servers have two
`
`2
`
`
`
`Case No. IPR2014-01367
`
`primary functions: (1) Registration, by which the name server ensures that two
`
`different computers do not claim the same name and (2) Resolution, by which the
`
`name server determines and returns a computer’s address when that address is
`
`requested using the computer’s name. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at
`
`378-79, 395-99, 407-10; R at 14-21, 29-32, 46-50). In performing these functions,
`
`the WINS and NetBIOS servers do not check or rely on whether any particular
`
`computer (or process) is online. (Ex. 1012 at 61-63, 65, 67-69; Ex. 1014 at 395-99,
`
`407-10; R at 1-2, 16-21, 35, 46-50).
`
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network.
`
`During Registration, a computer tries to register a name, and the name server
`
`then checks if another computer is already using that name. (Ex. 1012 at 61-63, 65,
`
`67-69; Ex. 1014 at 379, 395-401, 403-06, 413-15; R at 14-16, 18-20, 29-32, 46-
`
`50). If any computer previously registered that name, the server checks if that
`
`computer has relinquished its claim to (has “released”) that name. (Ex. 1012 at 61-
`
`63, 67-69; Ex. 1014 at 379, 395-401, 403-06, 412, 413-15; R at 15-17, 46-49).
`
`During Resolution, a first computer asks the name server for a second computer’s
`
`address using that second computer’s name (a “name query”); the server then
`
`searches its database for an address mapped to the queried name and, if a mapping
`
`exists, returns that address to the first computer. (Ex. 1012 at 61-63, 65, 67; Ex.
`
`1014 at 396, 407-10, 416-18; R at 14-17, 19-21, 30, 47-50).
`
`3
`
`
`
`Case No. IPR2014-01367
`
`At no time during Registration or Resolution does the WINS/NetBIOS name
`
`server try to determine if any computer is currently online. (Ex. 1012 at 61-63, 65,
`
`67-69; Ex. 1014 at 379, 396-401, 403-10, 412-18; R at 1-2, 16-21, 35, 46-50).
`
`B. Whether a name has been released does not indicate whether any
`particular computer is connected to the computer network.
`
`Whether a computer has released a name is no indication of, and cannot be
`
`relied on to show, whether that computer is connected to the computer network
`
`under the CAFC’s construction. (Ex. 1012 at 61-63, 65, 67; Ex. 1014 at 396, 407-
`
`10, 416-18; R at 16-21, 35, 46-50). A computer that is offline can still have a
`
`registered, unreleased name. (Ex. 1012 at 67-69, 131-32, 150; Ex. 1014 at 379,
`
`395-401, 403-06, 412-15; R at 17-21, 47-50). Conversely, a computer that is online
`
`can release its name yet stay connected to the computer network. (Ex. 1012 at 67-
`
`69, 131-32, 150; Ex. 1014 at 379, 396, 399, 401, 412; R at 17-21, 46-50).
`
`For example, a computer may have a permanent name that is never released,
`
`even when the computer is offline. (Ex. 1012 at 140-44; Ex. 1014 at 395, 397, 412;
`
`R at 17, 48-49). Even a computer with a temporary name may go offline without
`
`releasing its name—which the references themselves admit is “common” and
`
`“occurs frequently”—and its name will stay unreleased until and unless a second
`
`computer attempts to register the same name and successfully challenges the first
`
`computer’s registration. (Ex. 1012 at 67-69, 131-32, 150; Ex. 1014 at 379, 395-
`
`401, 403-06, 412-15; R at 17-21, 47-50).
`
`4
`
`
`
`Case No. IPR2014-01367
`
`C. The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released.
`
`Just as the name server does not attempt to determine whether any computer
`
`associated with a queried name is connected to the network during Resolution, it
`
`also does not attempt to determine whether the queried name has been released.
`
`(Ex. 1012 at 61-63, 67-68; Ex. 1014 at 395-99, 407-10, 416-18; R at 16-21, 46-50).
`
`Once a name is mapped to an IP address, the name server will continue to provide
`
`that address in response to a name query—regardless of whether the target is
`
`online or the name has been released—until that name is removed all together from
`
`the database. (Ex. 1012 at 61-63, 67-68; Ex. 1014 at 396, 407-10, 416-18; R at 16-
`
`21, 46-50).
`
`Thus, even if a name’s released status did somehow correspond to whether a
`
`computer was in fact online—and it does not—that name status has no effect on
`
`whether the name server will return a requested IP address. (Ex. 1012 at 61-63, 67-
`
`68; Ex. 1014 at 395-99, 407-10, 416-18; R at 16-21, 46-50).
`
`III. Petitioner’s Brief Fails to Address the CAFC’s Decision, But Instead
`Raises New Arguments That Encourage the Board to Take a Position
`That Has Already Been Reversed by the Federal Circuit
`
`Petitioner’s Supplemental Brief fails to identify any prior briefs where it
`
`argued the “is connected” limitation is met under Straight Path’s and the CAFC’s
`
`construction, and instead presents a host of new arguments, thereby violating this
`
`5
`
`
`
`Case No. IPR2014-01367
`
`Board’s order prohibiting new arguments and evidence. Moreover, each new
`
`argument is supported by no evidence or expert testimony—not even that of
`
`Petitioner’s own expert—and relies wholly on Petitioner’s “registered”
`
`construction already rejected by the CAFC. For example:
`
` Advocating The Rejected Claim Construction: Petitioner devotes nearly
`
`half of its Brief (including all of Section I.B) to re-arguing that the claims should
`
`be construed to require only “relatively current” online status information, not
`
`information that is current as of the time of the query. (Br. 4-6). The CAFC
`
`repeatedly rejected this construction in Sipnet, holding, for example, that the
`
`patentees did “not redefine ‘is connected’ to mean ‘is still registered, once was
`
`connected, and may or may not still be connected.’” Sipnet at 9, 7, 13.
`
` Comparing WINS and NetBIOS to the Specification, Not The Claims:
`
`Unable to support any argument that WINS and NetBIOS teach the “is connected”
`
`limitation under the CAFC’s construction, Petitioner urges the Board to commit
`
`legal error by instead comparing the references to the specification. (Br. at 2-4).
`
`Again, the CAFC has already rejected this approach in Sipnet: “the Board did not
`
`address the facially clear meaning [of the claims], instead turning immediately to
`
`the specification.” Sipnet at 8.
`
` Relying On The Rejected “Registration” Construction: Petitioner’s
`
`comparison of the WINS and NetBIOS server to the specification also is wholly
`
`6
`
`
`
`Case No. IPR2014-01367
`
`unsupported by the evidence. For example, Petitioner argues that, like an
`
`embodiment disclosed in the specification, the WINS and NetBIOS name servers
`
`track whether a computer is connected to the network. (Br. at 2, 3). But the
`
`“evidence” Petitioner identifies concerns only the name server checking during
`
`Registration—not Resolution—whether a name has been “released,” not whether a
`
`target computer is actually connected to the network as required by the CAFC. (Br.
`
`3-4). Petitioner is still relying on its name “registration” construction that the
`
`CAFC has already explicitly rejected. Sipnet at 7, 9, 13.
`
` Identifying No Supporting Evidence: Petitioner now argues for the first
`
`time that WINS and NetBIOS teach a query for a process’s online status. (Br. at 3).
`
`But Petitioner’s cited passages have nothing to do with such a query, but instead
`
`merely describe a computer requesting another computer’s address for purposes of
`
`communication. (Id.). And Petitioner’s argument that there are “alternative
`
`embodiments” that teach the limitations – yet another wholly new argument—is
`
`not supported by a single citation. Nor does Petitioner identify any such
`
`“alternative embodiment.” It cannot because there is none.
`
`IV. There Is No Estoppel Concerning The “Process” Limitations
`There is no final decision adverse to Straight Path in the Sipnet IPR and thus
`
`there is no estoppel resulting from that IPR. 37 CFR § 42.73.
`
`
`
`7
`
`
`
`Case No. IPR2014-01367
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (pro hac vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`Dated: January 19, 2016
`
`
`
`
`
`
`
`8
`
`
`
`Case No. IPR2014-01367
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Response to Petitioner’s Additional
`
`Briefing is being served by electronic mail on the following counsel for the
`
`Petitioners:
`
`Samsung Electronics Co., Ltd.
`
`Cisco Systems, Inc. and AVAYA Inc.
`
`DLA Piper LLP
`Brian Erickson (Reg. No. 48,895)
`brian.erickson@dlapiper.com
`Jeff Cole (Reg. No. 56,052)
`jeff.cole@dlapiper.com
`Samsung-SP-IPR@dlapiper.com
`
`Wilmer Cutler Pickering Hale
`and Dorr LLP
`David L. Cavanaugh (Reg. No. 36,476)
`Jason D. Kipnis (Reg. No. 40,680)
`david.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`
`
`
`
`AVAYA Inc.
`
`Fish & Richardson
`Dorothy P. Whelan (Reg. No. 33,814)
`Christopher O. Green (Reg. No. 52,964)
`Whelan@fr.com
`cgreen@fr.com
`
`
`Dated: January 19, 2016
`
`
`
`45379874v.1
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`9
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
