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 No. IPR2014-013671
`U.S. Patent No. 6,009,469
`________________
`
`
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`
`
`
`1 IPR2015-01007 has been joined with this proceeding.
`
`
`
`
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 1
`
`
`________________
`
`
`
`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 No. IPR2014-013671
`U.S. Patent No. 6,009,469
`________________
`
`
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`
`
`
`1 IPR2015-01007 has been joined with this proceeding.
`
`
`
`
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 1
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Background and Qualifications ....................................................................... 1
`
`III. Materials Considered ....................................................................................... 3
`
`IV. Person of Ordinary Skill in the Art .................................................................. 4
`
`V.
`
`Legal Standards ............................................................................................... 4
`
`VI. Background of the ‘469 Patent ........................................................................ 5
`
`A.
`
`The Challenged Claims of the ’469 Patent .........................................11
`
`VII. Claim Construction ........................................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“process”..............................................................................................14
`
`“point-to-point communication link” ..................................................16
`
`“connected to the computer network” / “on-line” ...............................18
`
`“network protocol address” .................................................................19
`
`“is” and “status” ..................................................................................20
`
`VIII. Microsoft Manual ..........................................................................................20
`
`IX. NetBIOS.........................................................................................................27
`
`X.
`
`PALMER .......................................................................................................31
`
`
`
`i
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`I, Dr. Stuart Stubblebine, being of legal age, hereby declare, affirm, and state the
`following:
`
`I.
`
`Introduction
`
`
`
`1.
`
`The facts set forth below are known to me personally and I have
`
`firsthand knowledge of them.
`
`2.
`
`I have been retained as an independent expert witness by Straight Path
`
`IP Group, Inc. (“Patent Owner”) to make this declaration in support of Patent
`
`Owner’s Response to Petition for Inter Partes Review of U.S. Patent No.
`
`6,009,469. I am being compensated for my time at a rate of $850 per hour. My
`
`compensation is not dependent in any way upon the outcome of this Inter Partes
`
`Review.
`
`II. Background and Qualifications
`
`
`
`3.
`
`I received a Bachelor of Science degree in Computer Science and
`
`Mathematics from Vanderbilt University in May 1983. Later that year and into
`
`1984, I completed graduate level courses in Teleprocessing Systems (including
`
`computer networks and distributed processing) and Radio Systems Design at the
`
`US Army Signal Center. In December 1988, I received a Master of Science degree
`
`in Electrical Engineering from the University of Arizona; my area of focus was
`
`computer engineering with an emphasis in networking and distributed systems. I
`
`received my Doctorate in Electrical Engineering in August 1992 from the
`
`University of Maryland; my area of focus was computer engineering, and my
`
`1
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`dissertation was on Message Integrity in Cryptographic Protocols. My CV is
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`attached as Exhibit 1.
`
`4.
`
`I have been working as an independent consultant since March 2000,
`
`specializing in computer and network security evaluations, detailed design and
`
`formal analysis, applied research, technical due diligence reviews, and in the
`
`provision of expert witness services, particularly in patent litigation. My clients
`
`range from domestic start-ups to international Fortune 500 companies, and include
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`American Express, AMD, British Telecom, First Data Corporation, IBM, and
`
`Microsoft, as well as the New York City Department of Education and the New
`
`York City Police Department.
`
`5.
`
`Previously, I worked as a research scientist with Stubblebine Research
`
`Labs, LLC, where I conduct research in the areas of security and privacy
`
`technology. Some of this research has been funded by the National Science
`
`Foundation.
`
`6.
`
`Between July 2002 and June 2004, I was a Professional Researcher—
`
`a position that was the equivalent of a Full Professor—at the University of
`
`California at Davis. I was affiliated with the Computer Science Department and my
`
`research was focused in the areas of security, cryptography, and secure software
`
`engineering.
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`2
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`III. Materials Considered
`
`7.
`
`In forming the opinions set forth in this report, I have considered and
`
`relied upon my education, knowledge of the relevant field, and my experience. I
`
`have also reviewed and considered U.S. Patent No. 6,009,469, its prosecution
`
`history, and documents produced by both Patent Owner and Petitioner.
`
`Specifically, I have considered the following materials:
`
` U.S. Patent No. 6,009,469 (the “’469 patent”).
`
` File history for the ’469 patent.
`
` Reexamination history for the ’469 patent.
`
` Microsoft Windows NT Server Version 3.5 TCPIP.HLP.
`
` Technical Standard: Protocols for X/Open PC Interworking: SMB,
`
`Version 2.
`
` Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Concept and Methods, RFC 1001 (Mar. 1987).
`
` Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Detailed Specifications, RFC 1002 (Mar. 1987).
`
` U.S. Patent No. 5,375,068 (“Palmer”).
`
` “Modifying WINS server defaults”
`
`https://technet.microsoft.com/en(cid:173)us/library/cc785736(d=printer,v=ws.
`
`10).aspx
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`3
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` “Microsoft makes its move with Windows NT SDK”. InfoWorld 14
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`(28): http://windows.microsoft.com/en-us/windows/history#T1=era3.
`
` http://www.oldcomputermuseum.com/os/windows_nt3.5.html.
`
`I have also reviewed all of the papers filed at the Federal Circuit Court of Appeals
`
`in the Straight Path IP Group, Inc. v. Sipnet EU S.R.O appeal.
`
`IV. Person of Ordinary Skill in the Art
`
`
`8.
`
`A person of ordinary skill in the art in the field of the ’469 patent in
`
`the early 1990s would typically have the knowledge acquired by a person having a
`
`Bachelor’s degree in computer science or computer engineering or related field. I
`
`believe a person of ordinary skill in the art of the ’469 patent could also have
`
`obtained the requisite knowledge through 1-2 years of professional experience as a
`
`software developer designing and constructing distributed applications or systems.
`
`V. Legal Standards
`
`
`
`9.
`
`It is my understanding that a claim is invalid by anticipation when a
`
`single prior art reference (as defined by 35 U.S.C. § 102) existed prior to the
`
`claim’s priority date and teaches every element of the claim. (Verizon Servs. Corp.
`
`v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). I also
`
`understand that under 35 U.S.C. § 103, the combined teachings of more than one
`
`prior art reference can be used to demonstrate that all of the elements of a claim
`
`were known at the time of the invention. I understand this is often referred to as
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`4
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`“obviousness,” and such obviousness must be assessed at the time the invention
`
`was made. (Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1073 (Fed. Cir.
`
`2012)). I understand that, under 35 U.S.C. § 103, a patent cannot be obtained “if
`
`the differences between the subject matter to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art.” (35 U.S.C. § 103).
`
`
`10.
`
`I understand that, in an inter partes review proceeding, claim terms
`
`should be given their broadest reasonable construction consistent with the
`
`specification. However, I understand that, if a patent has expired, claim terms
`
`should be construed according to the standard of a district court, and that under
`
`such a standard, a claim term should be construed according to its “ordinary and
`
`customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. It is my further understanding that claim
`
`terms are given their ordinary and accustomed meaning as would be understood by
`
`one of ordinary skill in the art, unless the inventor, as a lexicographer, has set forth
`
`a special meaning.
`
`VI. Background of the ’469 Patent
`
`11. The ’469 patent discloses a system that enables real-time point-to-
`
`point communications between running computer programs or applications that are
`
`connected to a computer network. Such programs include programs or applications
`
`5
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`supporting real-time video teleconferencing and other real-time point-to-point
`
`video and voice communications. (Ex. 1001 at 1:60-2:4; 2:30-7; 9:25-34; 10:11-
`
`15).
`
`12. Applications supporting such point-to-point communication may be
`
`installed on a computer, but just because a computer is running does not ensure
`
`that a program or application supporting point-to-point communication installed on
`
`that computer is also running. Additionally, just because a computer is connected
`
`to the Internet (i.e., is “on-line”) it does not mean that a program or application
`
`installed on that computer is even running much less that it is actually on-line. In
`
`fact a computer that is connected to the Internet may have programs installed on it
`
`that are not connected to the Internet, off-line, and not available for
`
`communication. Some programs may be running and online, while others may be
`
`“closed” (or not running) and offline.
`
`13. Because communication can only be established between computer
`
`programs that are on-line at the time the desired communication is sought, it is
`
`desirable for a user of a first computer program seeking communication with a user
`
`of a second computer program to know when the second user’s program is on-line
`
`and thus available for communication. (Ex. 1001 at 7:57-9). The ’469 patent
`
`discloses a real-time point-to-point Internet communications protocol that enables:
`
`(1) a first computer program to query a connection server to determine if a second
`
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`computer program is currently connected to the network, and (2) if the second
`
`computer program is connected, to obtain its existing network address so that the
`
`desired point-to-point communication can be established at the time
`
`communication is sought. (Ex. 1001 at 3:15-27; 5:18-32; 6:56-7:59; 11:64-12:28;
`
`claims 1, 2, 3, 5, 6).
`
`14. As explained in the ’469 patent specification, the prior art made it
`
`possible to establish point-to-point communications between devices and programs
`
`that had permanent Internet Protocol (“IP”) addresses. (Ex. 1001 at 2:30-5). But,
`
`some devices do not have a permanent and stable address on the Internet and
`
`instead repeatedly log on and off of the Internet potentially receiving a new
`
`dynamically allocated IP address each time they reconnect to the network. (Id. at
`
`2:17-29; 6:56-7:3; 7:49-59).
`
`15. Dynamic assignment of IP addresses made it difficult to establish real-
`
`time point-to-point video or voice communications between computer programs
`
`that are not permanently connected to the network, because a first user seeking to
`
`communicate with a second user would not necessarily know the IP address
`
`associated with the second user’s computer program as it could be dynamically
`
`assigned a different IP address from time to time. (Ex. 1001 at 2:30-8).
`
`16. The ’469 patent solved the problems caused by dynamic allocation of
`
`IP addresses to computers continually connecting and disconnect from the Internet
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`7
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`by providing a real-time point-to-point Internet communications protocol for: (1)
`
`determining whether a particular, computer program is currently running and
`
`connected to a network; (2) determining that computer program’s address on the
`
`network at the time the communication is sought; and (3) establishing a point-to-
`
`point communication with that computer program. (Ex. 1001 at 3:15-27; 6:56-
`
`7:59; 9:25-34; 11:64-12:28; claims 1, 2, 3, 5, 6).
`
`17.
`
`In one embodiment, a first user, who is connected to the Internet and
`
`who wishes to communicate with another user over the Internet launches a
`
`program on her computer and connects that program to the network. (Ex. 1001 at
`
`5:18-24; 6:1-7; 6:62-5; 11:64-12:1). The current IP address of the first user’s
`
`computer is then transmitted to the claimed connection server which determines
`
`whether a given program is on-line and available for communication and can
`
`facilitate communication between different on-line programs. (Id. at 6:66-7:5;
`
`7:30-59; 11:64-12:12). Upon receiving this transmission, the connection server
`
`stores the first user’s then-current IP address in a database, thus establishing the
`
`first user’s computer program as an “active on-line party” in the connection server
`
`database. (Id. at 6:66-7:9; 7:30-5; 7:44-59).
`
`18. The first user’s computer program may later disconnect from the
`
`network, and thus no longer be an “active on-line party” available for
`
`communication. (Ex. 1001 at 7:44-57). The specification discloses that “[w]hen a
`
`8
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`user logs off or goes off-line from the Internet 24, the connection server 26 updates
`
`the status of the user in the database 34; for example by removing the user’s
`
`information, or by flagging the user as being off-line.” (Id.). The user’s on-line
`
`status is updated when she logs off the network so that the connection server can
`
`keep an up to date accounting of which users are connected to the network and
`
`available for communication and which are not connected and thus disabled from
`
`engaging in point-to-point communication. (See id. at 7:44-57). Like the first user,
`
`a second user, or callee, may also start a computer program on his computer and
`
`thereby store his then-current IP address in the connection server database and thus
`
`establish his computer program as active and on-line. (Id. at 7:9-13; 11:64-12:1).
`
`19. To initiate a point-to-point communication with a second user, a first
`
`user, after connecting her computer program to the Internet and sending her then-
`
`current IP address to the connection server, may send a request to the connection
`
`server regarding the availability for communication of a second user. (Ex. 1001 at
`
`5:18-20; 7:20-30; 11:64-12:1, 12:18-23). In response to the first user’s request, the
`
`connection server will search its database to determine if the second user’s
`
`computer program is on-line. (Id. at 7:33-6; 12:18-25). If it is, the connection
`
`server then forwards the IP address of the second user’s computer program to the
`
`first user’s computer program, which then uses that IP address to establish a point-
`
`to-point communication between the first and second users’ computer programs.
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`9
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`(Id. at 5:18-20; 7:36-43; 12:1-9, 23-8). This communication is not intermediated by
`
`the connection server. (See id.).
`
`20.
`
`If the second user’s computer program is not on-line at the time the
`
`first user’s computer program makes its query, the connection server, after
`
`checking its database, will determine that the second computer program is not
`
`currently on-line and will send back to the first user an “off-line” signal or
`
`message. (Ex. 1001 at 7:44-59; 12:4-12). The connection server will send the first
`
`user’s computer program an “off-line” signal or message when the second user’s
`
`program is not currently connected to the network, even if that second program is
`
`still registered with the connection server, i.e., if the second program’s name
`
`remains stored in the connection server. (Id.). Thus, whether a computer program
`
`is currently on-line is not and cannot be determined by whether it is registered with
`
`a connection server, because the program may be registered but also off-line. (Id.
`
`at 7:44-57).
`
`21. During ex parte reexamination of the ‘469 Patent’s parent, U.S. Patent
`
`No. 6,108,704, the applicants addressed whether the active on-line status of a
`
`process – whether the process is currently connected to the computer network – is
`
`the same as the status of having been on-line at some point in the past to establish
`
`an active name registration. (Ex. 1022 at 1078-79.). This is the question presented
`
`by the NetBIOS reference. The applicants submitted an Office Action Response
`
`10
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`explaining that the active name registration disclosed in NetBIOS is not the on-line
`
`status disclosed in the patent claims because having registered a name with the
`
`connection server at some previous time does not indicate that the registered
`
`computer is currently on-line:
`
`While NetBIOS uses name entries with ‘active’ statuses as part of its
`name management process, an analysis of how that “active” status is
`used shows that “an active name” is not synonymous with “an on-
`line status” with respect to the computer network. An active name
`simply refers to a name that has been registered and that has not
`yet been de-registered, independent of whether the associated
`computer is or is not on-line.
`
`(Id. at 1073 (emphasis added)). The PTO subsequently affirmed the patentability of
`
`each of the claims at issue in this appeal. (Id. at 1928).
`
`A. The Challenged Claims of the ’469 Patent
`
`22. Each of the challenged claims at issue in this appeal concerns a
`
`method, apparatus, or “computer program product” for establishing a point-to-
`
`point communication between a first (or caller) process and a second (or callee)
`
`process. (Ex. 1001 at claims 1, 2, 3, 5, 6, 9, 14, 17, 18). Each challenged claim
`
`concerns communications between processes, not merely computers, and each
`
`concerns determining whether those processes are currently on-line, not whether
`
`they were on-line at some undetermined point in the past. (See id.).
`
`23. Each of the challenged claims concerns processes—computer
`
`programs or applications—not merely the computers on which those processes
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`may (or may not) be running. The preamble of independent claim 1, for example,
`
`makes this distinction clear, and shows that the patentees distinctly and
`
`deliberately chose to direct their claims towards a “process” not a “computer.”
`
`Claim 1 differentiates between the computer (“computer system”) that executes
`
`“the first process” and the “first process” itself: “A computer program product for
`
`use with a computer system having a display, the computer system capable of
`
`executing a first process . . . .” (Ex. 1001 at claim 1 (emphasis added)). And the
`
`remainder of claim 1, reproduced in its entirety below, pertains to the on-line status
`
`of, and communications between, processes, not merely the computers that execute
`
`those processes:
`
`1.
`
`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, 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;
`
`b. program code for determining the currently assigned network protocol
`
`address of the first process upon connection to the computer network;
`
`12
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`c. 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
`
`d. program code, responsive to user input commands, for establishing a
`
`point-to-point communications with another process over the
`
`computer network.
`
`(Ex. 1001 at claim 1 (emphasis added); see claims 2, 3, 5, 6, 9, 14, 17, 18).
`
`24. All of the challenged claims except for claims 1, 2, and 5 require a
`
`query and/or determination of whether the target process is currently connected to
`
`the computer network (is currently “on-line” or “accessible”) not whether the
`
`process was connected at some previous time. For example, in the method of
`
`claims 6, a first process only receives a second process’s address if that second
`
`process is connected to the computer network, and claim 6 includes the steps:
`
`D.1 transmitting, from the first process to the server process, a query as to
`
`whether a second process is connected to the computer network; and
`
`D.2 receiving a network protocol network address of the second process
`
`from the server process, when the second process is connected to the network.
`
`13
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`(Ex. 1001 at claim 6; see also id. at claims 3, 9, 10, 14, 17, 18). These claims’
`
`temporal focus on the process’s on-line status at the time the desired
`
`communication is sought accords with the realtime focus of the point-to-point
`
`communications protocol disclosed in the ’469 patent. (Id. at 2:31-8; 9:25-34,
`
`10:14-5). One way the patent describes this focus on realtime communications, is
`
`by polling the second processing unit every 3-5 seconds. (Id. at Fig. 2).
`
`VII. Claim Construction
`
`
`A. “process”
`
`
`
`25.
`
`I agree with Straight Path’s proposed construction of the claim term
`
`“process” as meaning “a running instance of a computer program or application,”
`
`because this construction comports with the intrinsic record. Also, I note it has
`
`been agreed to by Petitioner in prior proceedings relating to the ’469 patent and by
`
`Petitioner’s expert, Dr. Henry Houh, in this proceeding. (Ex. 2022 at 192:21-
`
`192:15).
`
`26. As explained above, the claims of the ’469 patent show that the
`
`patentees deliberately chose to direct their claims towards a running instance of a
`
`computer program, or “process” rather than the machine on which a process runs,
`
`i.e., a computer. The specification of the ’469 patent supports this construction.
`
`The specifically expressly states that the disclosed point-to-point internet protocol
`
`can be a “computer program described herein below in conjunction with FIG. 6,
`
`14
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`which may be implemented from compiled and/or interpreted source code in the
`
`C++ programming language, and which may be downloaded…. (Ex. 1001 at 5:18-
`
`33). Further, the specification states that the claimed “process,” also referred to as
`
`a “processing unit” in the specification, can be implemented in a PDA, which
`
`supports the interpretation of process as a piece of software. (See id. at 6:1-7 (“In
`
`addition, either of the first processing unit 12 and the second processing unit 22
`
`may be implemented in a personal digital assistant…”)).
`
`27. Additionally, the claim term “process” was construed in several prior
`
`lawsuits in which Straight Path asserted the ’469 patent or a related patent. In
`
`Straight Path IP Group, Inc. v. Bandwidth.com, Inc., a case involving U.S. Patent
`
`No. 6,513,066, a continuation of the parent ’704 patent application, the United
`
`States District Court for the Eastern District of Virginia construed “process” as “a
`
`running instance of a computer program or application.” (Ex. 2004 at *13.)
`
`Consistent with the Bandwidth decision, Samsung, in Straight Path IP Group, Inc.
`
`v. Blackberry, Ltd., a case involving the ’469 patent, agreed that the proper
`
`construction of the term process is “a running instance of a computer program or
`
`application.” (Ex. 2003)
`
`28. Furthermore, during his deposition, Samsung’s expert, Dr. Houh,
`
`agreed that the proper construction of the term “process” is “a running instance of
`
`a computer program or application.” (Ex. 2022 at 192:21-193:15).
`
`15
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 17
`
`
`
`B. “point-to-point communication link”
`
`29. Construction of this term is not necessary to my opinions in this
`
`declaration, but to the extent the Board construes the term “point-to-point
`
`communication link,” I agree with Straight Path that this term should be interpreted
`
`to mean “a connection between two processes over a computer network that is not
`
`intermediated by a connection server.”
`
`30. As explained above, the invention provides users with a protocol with
`
`which to establish real-time, point-to-point communications over computer
`
`networks. The ’469 patent specification explains that the invention “provide[s]
`
`computer users with a powerful protocol in which to directly establish real-time,
`
`point-to-point communications over computer networks directly without server
`
`required linking.” (Ex. 1001 at 26: 31-38) (emphasis added). The specification
`
`also explains that the server referred to is the connection or address server
`
`disclosed in the specification. (Ex. 1001 at 12: 48-53 (“[t]he primary and
`
`secondary point-to-point Internet protocols previously described enable users to
`
`establish real-time direct communication links over the Internet or other computer
`
`networks without the need for any interaction with [the] connection server [],
`
`the connection server providing only directory and information related
`
`services”)) (emphasis added). A proper construction of the term “point to point”
`
`16
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 18
`
`
`
`must recognize that it is the connection or address server that does not intermediate
`
`the claimed point to point communication.
`
`31. An interpretation of this term to mean not intermediated by any server
`
`would be inappropriate because in practice a “point-to-point” communication
`
`established over the Internet are often intermediated by a hardware device
`
`providing one or more services. These devices could be included in what one of
`
`ordinary skill in the art would understand to be a server. For instance, a “point-to-
`
`point” communication may be routed as it passes through the Internet, and such
`
`routing is often performed by a computer providing services as well. One example
`
`of this is when a computer is acting as a router, but is also running a server process,
`
`such as running FTP server program, in addition to its routing functionality. Thus,
`
`interpreting a point-to-point communication not to be intermediated by any server
`
`would eliminate from the definition of “point-to-point” common point-to-point
`
`communications made over the Internet. Interpreting “point-to-point
`
`communication link” as not being intermediated by a connection server takes into
`
`account the reality that servers are commonly used to route Internet
`
`communications. Routers at the time of the invention were configurable to be
`
`servers themselves. The inventors intended use of the internet, which would
`
`necessarily have included these routers.
`
`17
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 19
`
`
`
`32. Samsung’s construction unnecessarily narrows the scope of the
`
`claims, and does so in a way that disregards the prosecution history.
`
`C. “connected to the computer network” / “on-line”
`
`33.
`
`I agree with Straight Path’s interpretation of “connected to the
`
`computer network” and “on-line” as meaning available for communication. I
`
`disagree with Petitioner’s proposed construction of these terms as meaning “on-
`
`line, e.g., registered with a server.” Petitioner’s proposed construction essentially
`
`says that at every moment a given process is registered, it is connected to the
`
`computer network, and on-line and available for communication. But, the ’469
`
`patent specification does not support this conclusion. Rather, it clearly states that a
`
`user can still be in the database (“registered”) even when it is not on-line and
`
`available for communication:
`
`When a user logs off or goes off-line from the Internet 24, the connection
`server 26 updates the status of the user in the database 34; for example, by
`removing the user’s information, or by flagging the user as being off-line.
`The connection server 26 may be instructed to update the user’s information
`in the database 34 by an off-line message, such as a data packet, sent
`automatically from the processing unit of the use prior to being disconnected
`from the connection server 26. Accordingly, an off-line user is effectively
`disabled from making and/or receiving point-to-point Internet
`communications.
`
`(Ex. 1001 at 7:49-59).
`
`
`
`34. The ’469 patent teaches that, once registered, a name of a user will
`
`remain in the database regardless of whether the user is actually on-line. The
`
`18
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 20
`
`
`
`claimed query determines whether the named user is actually on-line and available
`
`for communication at the time of the query:
`
`Upon the first user initiating the point-to-point Internet protocol when the
`first user is logged on to Internet 24, the first processing unit 12
`automatically transmits its associated E-mail address and its dynamically
`allocated IP address to the connection server…The first processing unit 12
`then sends a query, including the E-mail address of the callee, to the
`connection server 26. The connection server 26 then searches the database
`34 to determine whether the callee is logged-in by finding any stored
`information corresponding to the callee’s E-mail address indicating that the
`callee is active and on-line….if the callee is not on-line when the connection
`server 26 determines the callee’s status, the connection server 26 sends an
`OFF-LINE signal or message to the first processing unit 12.
`
`
`(Ex. 1001 at 6:66-7:46).
`
`
`35. RESERVED
`
`
`
`
`
`D. “network protocol address”
`
`36.
`
`I agree with Straight Path that the term “network protocol address”
`
`does not require construction and should be given its plain and ordinary meaning
`
`because the meaning of this term to a person having ordinary skill in the art at the
`
`time of the invention is apparent to a lay person upon review of the ’469 patent.
`
`When construing this very claim term in a prior litigation one court already found
`
`that “the ordinary and customary meaning of the claim term ‘network protocol
`
`address,’ as understood by a person of skill in the art when read in the context of
`
`the entire patent, is readily apparent even to a lay person.” (Ex. 1009 at 17).
`
`19
`
`Samsung v. Straight Path, IPR2014-01367
`Straight Path - Exhibit 2023 - Page 21
`
`
`
`
`
`
`
`E. “is” and “status”
`
`37.
`
`I agree with Dr. Houh that in the ‘649 patent the inventors did not act
`
`as a lexicographer and did not provide a special meaning for any of the claim
`
`terms. (Ex. 2002 at 188:24 – 189:15). Nothing in the claims, specification or
`
`prosecution history suggests that the inventors intended to redefine the claim term
`
`“is” or the claim term “status.” A person of ordinary skill in the
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