Trials@uspto.gov
`571-272-7822
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` Paper 12
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` Entered: March 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01367
`Patent 6,009,469 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`
`
`571-272-7822
`
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` Paper 12
`
`
` Entered: March 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01367
`Patent 6,009,469 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2014-01367
`Patent 6,009,469 C1
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC (collectively,
`
`“Petitioner”) filed a Petition requesting an inter partes review of claims 1–3,
`
`5, 6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C11 (Ex. 1001, “the
`
`’469 patent”). Paper 1 (“Pet.”). Straight Path IP Group, Inc. (“Patent
`
`Owner”) timely filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter
`
`partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” After considering the Petition, the
`
`Preliminary Response, and the associated evidence, we conclude that
`
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`
`showing unpatentability of all the challenged claims. Thus, we authorize
`
`institution of an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18
`
`of the ’469 patent.
`
`A. Related Proceedings
`
`
`
`Petitioner indicates that the ’469 patent is the subject of the
`
`proceedings in Straight Path IP Group, Inc. v. Samsung Electronics Co.,
`
`Ltd., No. 6:13-cv-00606 (E.D. Tex.). Pet. 1–2. Petitioner further indicates
`
`that the ʼ469 patent is related to U.S. Patent No. 6,108,704 (“the ʼ704
`
`patent”) and the ʼ704 patent was the subject of Sipnet EU S.R.O. v. Straight
`
`Path IP Group, Inc., IPR2013-00246 (PTAB) (“Sipnet”). Id.
`
`
`1 The ’469 patent was reexamined resulting in an ex parte reexamination
`certificate issued under 35 U.S.C. § 307. Of the challenged claims, claims 1,
`9, 14 and 17 were amended during reexamination. Thus, our citations to
`those claims refer to U.S. Patent No. 6,009,469 C1. See Ex. 1001, 67.
`
`
`
`2
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`IPR2014-01367
`Patent 6,009,469 C1
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`
`Additionally, Petitioner indicates that this Petition is related to
`
`IPR2014-01366 and IPR2014-01368. Id.
`
`B. The ʼ469 Patent
`
`The ’469 patent (Ex. 1001) is titled “Graphic User Interface for
`
`Internet Telephony Application” and generally relates to facilitating audio
`
`communications over computer networks. Ex. 1001, 1:54–57. The patent
`
`explains that a first processing unit automatically transmits its associated
`
`e-mail address, and its IP address, to a connection server. Id. at 6:66–7:9.
`
`The connection server stores the addresses in a database and, thus, the first
`
`processing unit is established as an active on-line party available for
`
`communication. Id. The first processing unit sends a query to the
`
`connection server, which searches the database to determine whether a
`
`second processing unit is active and on-line. Id. at 7:31–36. If the callee is
`
`active and on-line, the connection server sends the IP address of the callee
`
`from the database to the first processing unit, i.e., performs a point-to-point
`
`Internet protocol communication. Id. at 7:36–40. The first processing unit
`
`then directly establishes the point-to-point Internet communications with the
`
`callee using the retrieved IP address. Id. at 7:40–43.
`
`Figure 1 of the ’469 patent is reproduced below:
`
`
`
`
`
`3
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`IPR2014-01367
`Patent 6,009,469 C1
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`Figure 1 above illustrates the architecture between first processing unit 12,
`
`second processing unit 22, and connection server 26. Id. at 6:56–7:3.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
`
`’469 patent. Pet. 33–54. Claim 1 is illustrative of the claims at issue and is
`
`reproduced below:
`
`A computer program product for use with a computer
`1.
`system having a display, the computer system capable of
`executing a first process and connecting to other processes and
`a server process over a computer network, the computer
`program product comprising a computer usable medium having
`computer readable code means embodied in the medium
`comprising:
`a.
`
`program code for generating a user-interface
`enabling control of a first process executing on the
`computer system;
`program code for determining the currently
`assigned network protocol address of the first
`process upon connection to the computer network;
`program code responsive to the currently assigned
`network protocol address of the first process, for
`establishing a communication connection with the
`server process and for forwarding the assigned
`network protocol address of the first process and a
`unique identifier of the first process to the server
`process upon establishing a communication
`connection with the server process; and
`program code, responsive to user input commands,
`for establishing a point-to-point communications
`with another process over the computer network.
`
`b.
`
`c.
`
`d.
`
`Ex. 1001, 67 (1:28–50).
`
`
`
`4
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`Patent 6,009,469 C1
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`
`D. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth proposed grounds
`
`of unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent
`
`as follows (see Pet. 33–54):2
`
`Reference(s)
`
`Basis
`
`Microsoft Manual3
`Microsoft Manual and
`NetBIOS5
`Microsoft Manual,
`NetBIOS, and Palmer7
`Microsoft Manual,
`NetBIOS, Palmer, and Pinard8
`Microsoft Manual,
`NetBIOS, Palmer, Pinard, and
`Pitkin9
`
`Claims
`Challenged
`1–3, 5, 6, and 94
`
`1–3, 5, 6, and 96
`
`§ 102(a)
`
`§ 103(a)
`
`§ 103(a)
`
`9, 10, 14, 17, and 18
`
`§ 103(a)
`
`1, 9, and 14
`
`§ 103(a)
`
`3, 6, and 910
`
`
`2 Petitioner supports its challenge with four declarations. Ex. 1004
`(Declaration of Henry Houth, Ph.D., executed August 22, 2014); Ex. 1005
`(Declaration of Robert Cowart, executed August 20, 2014); Ex. 1019
`(Declaration of Sandy Ginoza, executed August 7, 2014); Ex. 1033
`(Declaration of Sandy Ginoza, executed August 19, 2014).
`3 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`4 Although Petitioner first identifies claim 17 as challenged under this
`ground, Petitioner’s argument and claim charts do not include claim 17.
`Accordingly, we do not understand Petitioner to have challenged claim 17
`under this ground. Compare Pet. 4 with id. at 34–43.
`5 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING:SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`6 Although Petitioner first identifies claim 17 as challenged under this
`ground, Petitioner’s argument and claim charts do not include claim 17.
`Accordingly, we do not understand Petitioner to have challenged claim 17 as
`part of this ground. Compare Pet. 4 with id. at 34–43.
`7 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`8 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1021, “Pinard”).
`5
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`IPR2014-01367
`Patent 6,009,469 C1
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`
`II. ANALYSIS
`
`A. Claim Construction
`
`The Board will interpret claims of an unexpired patent using the
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech. Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Patent Owner argues that the “broadest reasonable interpretation”
`
`standard does not apply here because “the ʼ469 patent will expire on
`
`September 25, 2015, before the Board’s rendering of a final written decision
`
`in this matter if the Board were to institute a trial.” Prelim. Resp. 31. We
`
`are not persuaded by Patent Owner because, for the purposes of this
`
`decision, the ʼ469 patent is not expired, most likely, and, therefore, the
`
`broadest reasonable interpretation standard is applied. However, at the time
`
`of the final written decision, the ʼ704 patent will have expired and we will
`
`apply the district court standard for claim construction as outlined in Phillips
`
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Accordingly, Petitioner and
`
`Patent Owner should address the differences, if any, between the broadest
`
`reasonable construction and the construction applied by a district court so
`
`
`9 U.S. Patent No. 5,341,477, issued Aug. 23, 1994 (Ex. 1015, “Pitkin”).
`10 Although Petitioner first identifies claims 1 and 5 as challenged under this
`ground, Petitioner’s argument does not include claims 1 and 5. Accordingly,
`we do not understand Petitioner to have challenged claims 1 and 5 as part of
`this ground. Compare Pet. 5 with id. at 53–54.
`
`
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`6
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`IPR2014-01367
`Patent 6,009,469 C1
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`that we can address them when we render a final written decision.
`
`1. “connected to the computer network” / “connection to the
`computer network” / “on-line status”
`
`Petitioner contends that the terms “connected to the computer
`
`network” and “on-line status” mean “on-line, e.g., registered with the
`
`server.” Pet. 25–31. Petitioner further contends that this construction is
`
`consistent with its usage in the ’469 patent specification, the ʼ469 patent
`
`prosecution history, and the construction as determined by a person with
`
`ordinary skill in the art. Id. at 25–27 (citing Ex. 1001, 6:66–7:13).
`
`Patent Owner argues that because the ʼ469 patent expires on
`
`September 25, 2015, the claims are construed “similar to a district court,”
`
`and there is a heavy presumption that claim terms carry their ordinary and
`
`customary meaning. Prelim. Resp. 31 (citing Cisco Sys., Inc. v. AIP
`
`Acquisition, LLC, Case IPR2014-00247, slip op. at 2 (PTAB July 10, 2014)
`
`(paper 20)). Patent Owner does not provide a construction for these terms
`
`under their ordinary and customary meanings. However, as discussed
`
`above, for the purposes of this decision, we will apply the broadest
`
`reasonable interpretation to the claim terms.
`
`We agree with Petitioner that “connected to the computer network”
`
`encompasses being “on-line,” which can be done by registering an address
`
`with the server. The ’469 patent specification and claims do not limit the
`
`scope of “connected to the computer network.” Furthermore, the ’469 patent
`
`specification discloses “the second processing unit 22, upon connection to
`
`the Internet 24 through a connection service provider, is processed by the
`
`connection server 26 to be established in the database 34 as an active on-line
`
`party.” Ex. 1001, 7:9–13. Thus, the context of “connected to the computer
`
`network,” as disclosed in the specification, includes storing the processing
`
`
`
`7
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`IPR2014-01367
`Patent 6,009,469 C1
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`unit address by the connection server database, and storing the address
`
`establishes the processing unit as active and on-line.
`
`This is consistent with our determination in Sipnet. Sipnet, Paper 62
`
`at 5–7. On this record, Patent Owner has not provided any evidence or
`
`rationale sufficient for us to disturb that claim construction. As discussed in
`
`Sipnet, Patent Owner and Dr. Ketan Mayer-Patel agree that a second
`
`processing unit is “active and on-line at registration.” Sipnet, Paper 30 at 26;
`
`Sipnet, Ex. 2018 ¶ 22.
`
`2. “determining the currently assigned network protocol
`address of the first process upon connection to the computer
`network”
`
`Claim 1 recites, inter alia, determining the currently assigned network
`
`protocol address of the first process “upon connection to the computer
`
`network.” Ex. 1001, 67 (1:28–40). Petitioner contends that although Patent
`
`Owner has argued that this limitation requires that the network protocol
`
`address must be dynamically assigned in the reexamination of the
`
`ʼ704 patent, the ʼ469 patent specification states that the invention operates
`
`“whether the current IP addresses were permanent (i.e., predetermined or
`
`preassigned) or temporary (i.e., assigned upon initiation of the point-to-point
`
`communication).” Pet. 31–32 (citing Ex. 1001, 9:29–34). Patent Owner
`
`alleges generally that Petitioner applies an incorrect claim construction
`
`standard, but does not provide a construction for this limitation in its
`
`Preliminary Response.
`
`On this record, we agree with Petitioner that the address received
`
`“following connection to the network” encompasses any type of assignment
`
`of address. Consistent with our Final Decision in Sipnet, claim 1 of the ʼ469
`
`patent does not require the “dynamic” assignment of addresses, whereas
`
`
`
`8
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`IPR2014-01367
`Patent 6,009,469 C1
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`claims 33–37 of the ʼ704 patent positively recite a method “for locating
`
`processes having dynamically assigned network protocol addresses.” Sipnet,
`
`Paper 62 at 7–9 (quoting claim 33 (emphasis added)).
`
`Our construction of the limitation “following connection to the
`
`computer network” is also consistent with the ʼ469 patent. The ʼ469 patent
`
`explains that the primary point-to-point protocol operates when a “callee
`
`processing unit does not have a fixed or predetermined IP address.”
`
`Ex. 1001, 6:58–59. The ʼ469 patent further explains an alternative,
`
`secondary point-to-point protocol that utilizes an e-mail that includes the
`
`current IP address, where the current IP address can be either a temporary or
`
`permanent IP address. Id. at 7:60–8:12. The ʼ469 patent explains that:
`
`Real-time point-to-point communication of audio signals
`over the Internet 24, as well as video and voicemail, may thus
`be established and supported without requiring permanent IP
`addresses to be assigned to either of the users or processing
`units 12, 22. For the duration of the realtime point-to-point
`link, the relative permanence of the current IP addresses of the
`processing units 12,22 is sufficient, whether the current IP
`addresses were permanent (i.e. predetermined or preassigned)
`or temporary (i.e. assigned upon initiation of the point-to-point
`communication).
`
`Id. at 9:25–34 (emphases added). Accordingly, the ʼ469 patent contemplates
`
`addresses that are predetermined, pre-assigned, fixed, or static, and contrasts
`
`these static addresses with temporary or dynamic addresses. Based on these
`
`descriptions of both static and dynamic addressing in the ʼ469 patent, we
`
`decline to limit the scope of “following connection to the computer network”
`
`to only “dynamic address allocation.”
`
`3. “point-to-point communication link”
`
`Petitioner contends that “point-to-point communication link” means
`
`
`
`9
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`IPR2014-01367
`Patent 6,009,469 C1
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`“a connection between two processes over a computer network that is not
`
`intermediated by a server.” Pet. 22–23. Patent Owner does not provide a
`
`construction for this term.
`
`We agree with Petitioner’s construction of “point-to-point
`
`communication link.” The ’469 patent specification and claims do not
`
`provide for a specific definition of “point-to-point communication link.”
`
`The plain and ordinary meaning of “point-to-point” means a first point
`
`directly linked to a second point.11 The plain and ordinary meaning of
`
`“communication link” includes any software or hardware that allows for
`
`communication.12 Accordingly, we construe “point-to-point communication
`
`link” to include direct communications between two processes over a
`
`computer network that are not intermediated by a server.
`
`B. Claims 1–3, 5, 6, and 9 — Obvious over Microsoft Manual and
`NetBIOS
`
`Petitioner contends that claims 1–3, 5, 6, and 9 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Microsoft Manual and NetBIOS.
`
`Pet. 34–43.
`
`1. Microsoft Manual (Ex. 1012)
`
`Microsoft Manual discloses how to install, configure, and
`
`troubleshoot Microsoft TCP/IP on a computer running the Microsoft
`
`
`11 See point-to-point, DICTIONARY OF COMPUTING (2008) available at
`http://search.credoreference.com/content/entry/acbcomp/point_to_point/0
`(last visited Feb. 6, 2015) (“A direct link between two devices.”).
`12 See communication link, WILEY DICTIONARY OF COMMUNICATIONS
`TECHNOLOGY (1998) available at
`http://search.credoreference.com/content/entry/wileycommtech/communicati
`on_link/0 (last visited Feb. 6, 2015) (“The software and hardware, to include
`cables, connectors, converters, etc., required for two devices such as a
`computer and terminal to communication.”).
`
`
`
`10
`
`
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`IPR2014-01367
`Patent 6,009,469 C1
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`Windows NT Workstation or Windows NT Server operating system.
`
`Ex. 1012, 3.13 When a computer’s name is registered with the Windows
`
`Internet Name Service server, the Windows Internet Name Service server
`
`accepts the entry with a timestamp, an incremental unique version number,
`
`and other information. Id. at 67–69. A name query request is received by
`
`the Windows Internet Name Service server and allows a client to establish a
`
`session based on the address mapping received from the Windows Internet
`
`Name Service server. Id. at 67–68. For example, if a first computer wants
`
`to communicate with a second computer, the first computer queries the
`
`Windows Internet Name Service server for the address of the second
`
`computer. Id. at 62–63. When the first computer receives the appropriate
`
`address from the Windows Internet Name Service server, it connects directly
`
`to the second computer. Id.
`
`2. NetBIOS (Ex. 1014)
`
`NetBIOS (“Network Basic Input/Output System”) is a software
`
`interface that allows applications on different computers to communicate
`
`within a computer network, such as a local area network or the Internet, and
`
`was originally designed for IBM’s PC-Network. Ex. 1014, 378. 14 NetBIOS
`
`applications employ mechanisms to locate resources, establish connections,
`
`send and receive data with an application peer, and terminate connections.
`
`Id. A NetBIOS session is the exchange of messages between a pair of
`
`
`13 Ex. 1012 includes page numbers indicated by the publication itself, and
`different page numbers provided by Petitioner. Our references are to the
`page numbers provided by Petitioner.
`14 Ex. 1014 includes page numbers indicated by the publication itself, and
`different page numbers provided by Petitioner. Our references are to the
`page numbers provided by Petitioner.
`
`
`
`11
`
`
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`IPR2014-01367
`Patent 6,009,469 C1
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`NetBIOS applications. Id. at 380.
`
`The NetBIOS name service is the collection of procedures through
`
`which nodes of a network acquire, defend, and locate the holders of
`
`NetBIOS names. Id. at 376. A node registers a name with the NetBIOS
`
`Name Server, which stores the registered name in a database. Id. at 403–04,
`
`413. A name query transaction can be initiated by an end-node in an attempt
`
`to obtain the IP address associated with a NetBIOS name. Id. at 407–08. If
`
`the NetBIOS Name Server has information regarding a queried node, the
`
`NetBIOS Name Server transmits a positive response. Id. at 408–09. If the
`
`NetBIOS Name Server does not have information regarding a queried node,
`
`the NetBIOS Name Server transmits a negative response. Id. Once the
`
`IP addresses have been found for a target name, a NetBIOS session service
`
`begins. Id. at 416. The NetBIOS session service involves directed (point-to-
`
`point) communications. Id.
`
`3. Analysis
`
`The evidence set forth by Petitioner indicates there is a reasonable
`
`likelihood that Petitioner will prevail in showing that claims 1–3, 5, 6, and 9
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
`
`Manual and NetBIOS. Pet. 34–43. For example, claim 1 recites a
`
`“computer program product for use with a computer system having a
`
`display, the computer system capable of executing a first process and
`
`connecting to other processes and a server process over a computer network”
`
`and “the computer program product comprising a computer usable medium
`
`having computer readable code means embodied in the medium.” Ex. 1001,
`
`67 (1:28–34). Petitioner argues that Microsoft Manual discloses how to
`
`install, configure, and troubleshoot Microsoft TCP/IP on a computer running
`
`
`
`12
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`IPR2014-01367
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`Microsoft Windows NT, and the software allows for a first computer to
`
`communicate with a second computer by querying a server for the address of
`
`the second computer and establishing a direct connection with the second
`
`computer using the received second computer address. Pet. 36 (citing
`
`Ex. 1012, 3, 62–63). Petitioner further contends that NetBIOS discloses
`
`NetBIOS applications that allow for point-to-point communication between
`
`nodes. Id. (citing Ex. 1014, 378, 384).
`
`Claim 1 further recites “program code for generating a user-interface
`
`enabling control of a first process executing on the computer system.”
`
`Ex. 1001, 67 (1:35–37). Petitioner argues that Microsoft Manual discloses
`
`that a “Telnet” window is generated to control a “Telnet” session when a
`
`user selects the “Telnet” icon or types “telnet <Enter>” at a command
`
`prompt, where the “Telnet” window is a user-interface. Pet. 37 (citing
`
`Ex. 1012, 249).
`
`Claim 1 also recites “program code for determining the currently
`
`assigned network protocol address of the first process upon connection to the
`
`computer network.” Ex. 1001, 67 (1:38–40). Petitioner contends that
`
`Microsoft Manual discloses a computer receives a dynamically-assigned IP
`
`address from the server and the computer registers its IP address with the
`
`WINS server. Pet. 37 (citing Ex. 1012, 58–63). Petitioner also contends
`
`that NetBIOS discloses that every node has a permanent unique name and IP
`
`address. Id. (citing Ex. 1014, 384, 395, 417).
`
`Claim 1 additionally recites:
`
`program code responsive to the currently assigned
`network protocol address of the first process, for establishing a
`communication connection with the server process and for
`forwarding the assigned network protocol address of the first
`
`
`
`13
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`IPR2014-01367
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`
`process and a unique identifier of the first process to the server
`process upon establishing a communication connection with the
`server process.
`
`Ex. 1001, 67 (1:41–47).
`
`Petitioner contends that Microsoft Manual discloses a computer that
`
`receives a dynamically-assigned IP address from the server and the
`
`computer registers its IP address with the WINS server. Id. at 33–34 (citing
`
`Ex. 1012, 58–63). Petitioner argues that NetBIOS discloses a name query
`
`(discovery) that is initiated by end-nodes to obtain the IP addresses and other
`
`attributes associated with a NetBIOS name. Id. at 36–38 (citing Ex. 1003,
`
`384, 395, 417).
`
`Claim 1 further recites “program code, responsive to user input
`
`commands, for establishing a point-to-point communications with another
`
`process over the computer network.” Ex. 1001, 67 (1:48–50). Petitioner
`
`argues that Microsoft Manual discloses that the first computer goes directly
`
`to the second computer upon receiving the address of the second computer.
`
`Pet. 38 (citing Ex. 1012, 62–63). Petitioner also argues that NetBIOS
`
`discloses the use of point-to-point nodes that communicate using only
`
`directed UDP datagrams and TCP sessions. Id. (citing Ex. 1014, 384–85).
`
`Petitioner contends that “WINS is an implementation of NetBIOS”
`
`and, therefore, Petitioner contends that “one having skill in the art would
`
`have known about and been motivated to combine Microsoft Manual with
`
`NetBIOS.” Id. at 34–35 (citing Ex. 1004 ¶¶ 88–89). We are persuaded by
`
`Petitioner that the conclusion is reasonable because Microsoft Manual
`
`demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS
`
`and Microsoft Manual in the same manner that Petitioner proposes to
`
`combine NetBIOS and Microsoft Manual. Ex. 1012, 3.
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`14
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`Patent Owner argues that the combination of Microsoft Manual and
`
`NetBIOS fails to teach or suggest the “interface element representing a first
`
`callee process.” Prelim. Resp. 47–60. We disagree with Patent Owner.
`
`Microsoft Manual discloses a “Telnet” application and a dialog box that
`
`enables a user to use the “Telnet” process by entering a “Telnet” address.
`
`Ex. 1012, 249–50. Accordingly, the “Telnet” window is an interface
`
`representing a first process.
`
`Patent Owner also argues that Microsoft Manual and NetBIOS fail to
`
`disclose the limitations “connected to the network” and “on-line.” Prelim.
`
`Resp. 30–40. We disagree with Patent Owner. As discussed above, the
`
`claim limitations “connected to the network” and “on-line” encompass
`
`registering an address for a computer or process with the server. See
`
`Section II.A.1. As also discussed above, both Microsoft Manual and
`
`NetBIOS disclose that a computer registers with a server as active and on-
`
`line. Ex. 1012, 59–63; Ex. 1014, 385. Accordingly, we are not persuaded
`
`by Patent Owner’s argument.
`
`Patent Owner further contends that Microsoft Manual and NetBIOS
`
`disclose a registration system that uses a computer, but fail to disclose a
`
`process running on that computer, as required by the claims. Prelim.
`
`Resp. 47–57. We disagree with Patent Owner. Microsoft Manual discloses
`
`that a computer is “running Microsoft Windows NT Workstation or
`
`Windows NT Server operating system” and “registration is the process used
`
`to acquire a unique name for each node.” Ex. 1012, 3, 62 (emphasis added).
`
`Accordingly, Microsoft Manual discloses that the computer is running an
`
`application or operating system that uses processes to perform functions.
`
`
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`15
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`We are persuaded that Petitioner sufficiently establishes that there is a
`
`reasonable likelihood that Petitioner will prevail in showing that claims 1–3,
`
`5, 6, and 9 are unpatentable under 35 U.S.C. § 103(a) as obvious over
`
`Microsoft Manual and NetBIOS.
`
`C. Claims 1–3, 5, 6, and 9 — Anticipated by Microsoft Manual
`
`Petitioner contends that claims 1–3, 5, 6, and 9 are unpatentable under
`
`35 U.S.C. § 102(a) as anticipated by Microsoft Manual. Pet. 4–5. Petitioner
`
`specifically argues that “Microsoft Manual is based on NetBIOS, compatible
`
`with the NetBIOS protocol specifications, and interoperable with other
`
`NetBIOS-compliant implementations,” and, therefore, Microsoft Manual
`
`and NetBIOS should be treated as a single anticipatory reference.
`
`Pet. 34 n.4. Although Petitioner lists this ground in the Petition (Pet. 4–5),
`
`contrary to 37 C.F.R. § 42.104, Petitioner does not provide any evidence,
`
`argument, or discussion as to how these claims are anticipated by Microsoft
`
`Manual. We, accordingly, are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in this challenged
`
`ground.
`
`D. Claims 9, 10, 14, 17, and 18 — Obvious over Microsoft Manual,
`NetBIOS, and Palmer
`
`Petitioner contends that claims 9, 10, 14, 17, and 18 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Microsoft Manual, NetBIOS, and
`
`Palmer. Pet. 43–49.
`
`1. Palmer (Ex. 1020)
`
`Palmer discloses multi-way video teleconferencing among networked
`
`computer workstations. Ex. 1020, 1:34–35. Palmer discloses a graphical
`
`user interface for controlling a video conferencing session, where when a
`
`user invokes the application to begin a video conference, a session window
`
`
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`16
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`appears on the user’s workstation monitor. Id. at 16:48–65. The session
`
`window includes “pushbuttons” that cause the creation of a second level
`
`pop-up window to offer the user next level of functional choices associated
`
`with the “pushbutton.” Id. at 17:3–31. A “connections” pushbutton
`
`establishes video teleconference connections between workstations. Id. at
`
`18:36–38. The selection of the “connections” pushbutton causes the creation
`
`of a second level “call list” pop-up window that allows a user to add, delete,
`
`activate, or modify network video teleconferencing connections to other
`
`networked workstations. Id. at 18:38–43. To establish a connection with
`
`another workstation, a user enters the target workstation host name in to the
`
`“network host” field and activates the corresponding “connect” pushbutton.
`
`Id. at 19:22–27.
`
`2. Analysis – Claims 10, 14, 17, and 18
`
`The evidence set forth by Petitioner indicates there is a reasonable
`
`likelihood that Petitioner will prevail in showing that claims 10, 14, 17, and
`
`18 are unpatentable under 35 U.S.C. § 103(a) as obvious over Microsoft
`
`Manual, NetBIOS, and Palmer. Pet. 45–46, 48–49. For example, claim 10
`
`recites “the method of claim 8.” Ex. 1001, 43:1. Claim 8 recites limitations
`
`substantially similar to those recited in claim 1, and, therefore, we find that
`
`Petitioner has demonstrated a reasonable likelihood that the combination of
`
`Microsoft Manual and NetBIOS discloses the limitations of claim 8 for the
`
`same reasons. Claim 10 further recites “generating a user-interface element
`
`representing a second communication line.” Id. at 43:2–3. Petitioner
`
`contends that Palmer discloses a “call list” that includes a list of
`
`workstations a user can enter the target workstation host name to establish a
`
`connection. Pet. 46–47 (citing Ex. 1020, 19:19–27, Fig. 20). Petitioner
`
`
`
`17
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`IPR2014-01367
`Patent 6,009,469 C1
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`asserts that a three-way video teleconference between three workstations can
`
`be established via a connection between two workstations and joining the
`
`third workstation to the call. Ex. 1020, 24:3–36. Petitioner further contends
`
`that Palmer describes a videoconferencing application for the Windows NT
`
`operating system and uses transport level protocols such as TCP/IP and
`
`UDP/IP, and, therefore, a person with ordinary skill in the art would have
`
`combined Palmer’s TCP/IP compatible application with Microsoft Manual
`
`because Microsoft Manual also uses TCP/IP and NetBIOS features. Pet. 43–
`
`44 (citing Ex. 1004 ¶ 93).
`
`Patent Owner contends that Petitioner fails to identify a basis for
`
`combining Palmer with Microsoft Manual and NetBIOS because Petitioner
`
`fails to address how the Palmer application could register itself and send
`
`queries to the WINS server. Prelim. Resp. 22–25. Patent Owner further
`
`contends that Petitioner has not identified any reason why a person of
`
`ordinary skill in the art would have combined Palmer with Microsoft Manual
`
`and NetBIOS. Id. at 24–25.
`
`We disagree with Patent Owner. Petitioner asserts that Palmer
`
`describes a videoconferencing application for the Microsoft Windows NT
`
`operating system and Microsoft Manual describes the Microsoft Windows
`
`NT operating system. Pet. 43–44 (citing Ex. 1020, 7:5–11; Ex. 1012, 10, 20,
`
`59–64). Petitioner further asserts that both Microsoft Manual, which
`
`includes NetBIOS over TCP/IP, and Palmer use TCP/IP for transport
`
`protocols. Id. Petitioner, accordingly, concludes that a person with ordinary
`
`skill in the art would have readily combined Palmer with Microsoft Manual
`
`and NetBIOS because Palmer describes an application that is intended to be
`
`compatible with the Microsoft Windows NT operating system, which
`
`
`
`18
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`IPR2014-01367
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`includes NetBIOS interfaces. Pet. 43–44. We determine that Petitioner has
`
`demonstrated a reasonable likelihood that a person with ordinary skill in the
`
`art would have combined Palmer with Microsoft Manual and NetBIOS.
`
`3. Analysis – Claim 9
`
`Petitioner contends that claim 9 is unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Microsoft Manual, N
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