UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`SAMSUNG ELECTRONIC 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 C1
`
`________________
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`1 IPR 2015-01007 has been joined with this proceeding.
`
`
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`SAMSUNG ELECTRONIC 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 C1
`
`________________
`
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`1 IPR 2015-01007 has been joined with this proceeding.
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Background And Overview Of The ’469 Patent ............................................. 2
`
`A.
`
`The Problems And Solutions Identified By The ’469 Patent ............... 3
`
`1.
`
`2.
`
`3.
`
`The Problem Identified By The ’469 Patent ............................... 3
`
`The ’469 Patent’s Solution .......................................................... 4
`
`The ’469 Patent Also Describes the Use of a Display
`
`Screen and Various Interface Elements. ..................................... 8
`
`B.
`
`The Challenged ’469 Patent Claims. ..................................................... 8
`
`1.
`
`The challenged claims concerns computer programs, not
`
`computers. ................................................................................... 9
`
`2.
`
`Challenged claims require the determination of whether a
`
`process is currently connected to the computer network,
`
`not whether it was previously connected. ................................. 10
`
`3.
`
`Challenged claims also require “a user interface element
`
`representing a first callee process.” .......................................... 11
`
`4.
`
`Challenged claim 1 also requires transmitting to the
`
`server a “unique identifier of the first process.” ....................... 12
`
`C.
`
`The ’469 Patent’s Prosecution History ............................................... 12
`
`1.
`
`The Original Prosecution .......................................................... 12
`
`i
`
`
`
`2.
`
`The Ex Parte Reexaminations .................................................. 13
`
`III. The Microsoft Manual and NetBIOS References ......................................... 14
`
`A. NetBIOS and Microsoft Manual both disclose a name server for
`
`registering the name of a computer, not a computer application. ....... 14
`
`B.
`
`Neither NetBIOS nor Microsoft Manual discloses a means for
`
`determining whether a computer is actually connected to the
`
`network at the time another computer seeks to communicate
`
`with it. .................................................................................................. 16
`
`IV. Claim Constructions ...................................................................................... 21
`
`A.
`
`The Material Claim Construction Issues Facing The Board ............... 21
`
`B.
`
`The Correct Claim Construction Analysis Under The District
`
`Court Standard ..................................................................................... 22
`
`V.
`
`Samsung’s References Do Not Disclose The “Process” Elements ............... 24
`
`A.
`
`Samsung Has Not Overcome The Heavy Presumption That
`
`“Process” Should Be Given Its Ordinary Meaning ............................. 25
`
`1.
`
`Samsung’s Construction of “Process” Is Inconsistent
`
`With Its Ordinary Meaning And The Claims ........................... 26
`
`ii
`
`
`
`2.
`
`The Applicants Did Not Redefine Or Disclaim “Process”
`
`In The ’469 Patent’s Specification Or Prosecution
`
`History ....................................................................................... 27
`
`B.
`
`Samsung Failed To Prove That The Microsoft Manual and
`
`NetBIOS Disclose the Claimed “Process” Elements .......................... 29
`
`VI. Samsung’s References Do Not Disclose The “Is Connected To The
`
`Network”/”On-Line Status”/”Accessible” Claim Elements ......................... 35
`
`A.
`
`Samsung Has Not Overcome The Heavy Presumption That “Is
`
`Connected to the Computer Network” And “On-line Status”
`
`Should Be Given Their Ordinary Meaning ......................................... 35
`
`1.
`
`The Ordinary Meaning “Is Connected To The Computer
`
`Network” And “On-line Status” Does Not Included
`
`Registered With a Server .......................................................... 37
`
`2.
`
`Samsung And Its Expert Admit That The Patentees Did
`
`Not Disclaim Or Specially Define The Ordinary Meaning ...... 41
`
`B.
`
`Samsung Failed To Prove That NetBIOS and the Microsoft
`
`Manual Disclose The “Is Connected To The Network,” “Is
`
`Accessible,” And “On-Line Status” Elements. ................................... 46
`
`iii
`
`
`
`VII. Samsung’s References Do Not Disclose The “Interface Element
`
`Representing A First Callee Process” Limitations Found In
`
`Challenged Claims 9, 10, 14, 17, and 18 ....................................................... 50
`
`A.
`
`Samsung Has Not Overcome The Heavy Presumption That
`
`“Representing” Should Be Given Its Ordinary Meaning .................... 51
`
`B.
`
`Ground 1: Samsung Has Failed To Prove That The Microsoft
`
`Manual & NetBIOS Disclose an “Interface Element
`
`Representing A First Callee Process.” ................................................ 52
`
`C.
`
`Ground 2: Palmer Cannot Remedy The Microsoft Manual &
`
`NetBIOS’s Failure To Disclose The “Interface Element
`
`Representing A Second Callee Process” ............................................. 53
`
`VIII. Samsung Has Failed to Prove That NetBIOS And WINS Disclose The
`
`“unique identifier” Required By Claim 1. ..................................................... 56
`
`IX. Samsung’s Remaining Proposed Constructions Are Not Material To
`
`The IPR .......................................................................................................... 57
`
`X.
`
`Conclusion ..................................................................................................... 60
`
`iv
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`ACTV, Inc. v. Walt Disney Company,
`346 F.3d 1082 (Fed. Cir. 2003) .......................................................................... 40
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) .................................................................... 23, 24
`
`In re Chaganti,
`554 Fed. Appx. 917 (Fed. Cir. 2014) .................................................................. 54
`
`Cisco Systems, Inc. v. AIP Acquisition, LLC,
`IPR2014-00247, Paper 20 (PTAB Jul. 10, 2014)… ........................................... 22
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) .......................................................................... 24
`
`Hockerson-Halberstadt, Inc. v. Converse, Inc.,
`183 F.3d 1369 (Fed. Cir. 1999) .......................................................................... 40
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) .......................................................................... 24
`
`In re Karn,
`441 F.3d 997 (Fed. Cir. 2006) ............................................................................ 55
`
`Laryngeal Mask Co. Ltd. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) .......................................................................... 24
`
`NeuLion, Inc. v. Filippo Costanza, et al.,
`IPR2014-00526, Paper 23 (PTAB Sep. 3, 2014)… ............................................ 55
`
`Phillips v. AWH Corp.,
`415 F.3d 1301 (Fed. Cir. 2005) .......................................................................... 22
`
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) .............................................................................. 22
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ................................................................ 1, 22, 24
`
`v
`
`
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) .......................................................................... 24
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00127, Paper 32 (PTAB Jun. 30, 2014)… .......................................... 23
`
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, Paper 12 (PTAB Apr. 8, 2013)… ........................................... 29
`
`
`
`vi
`
`
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`CASE IPR2014-01367
`
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`2004
`
`2005
`2006
`2007
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`Copy of Wonderland Nurserygoods Co. v. Thorley Indus., LLC,
`2014 U.S. Dist. LEXIS 148788 (W.D. Pa. Oct. 20, 2014)
`Copy of Straight Path IP Group, Inc. v. Bandwidth.com, Inc.,
`2014 U.S. Dist. LEXIS 25394 (E.D. Va. Feb. 25, 2014)
`Joint Claim Construction And Prehearing Statement
`ICT v. Vivox (2:12-cv-00007) and ICT v. Stalker Software (2:12-cv-
`00009), October 26, 2012 Opinion and Order
`Excerpt from Webster’s Third New International Dictionary
`Excerpt from Dictionary of Computer Words (Rev. ed. 1994)
`Excerpt from Que’s Computer & Internet Dictionary (6th ed. 1995)
`Excerpt from Microsoft Computer Dictionary (4th ed. 1999)
`Declaration of Michael C. Newman in Support of Unopposed
`Motion for Pro Hac Vice Admission
`Biography of Michael C. Newman
`Webster’s Third New International Dictionary, 1993 – definitions of
`“unique”; “identifier”
`
`Reserved
`
`Reserved
`
`1990–1994: Windows 3.0–Windows NT—Getting the graphics
`2015 Old Computer Museum - Microsoft Windows NT 3.5
`
`Reserved
`
`2017 Modifying WINS Server Defaults
`
`2018
`
`"Microsoft makes its move with Windows NT SDK". InfoWorld 14
`(28): 1, 92.
`
`2019
`
`Reserved
`
`2020 What is status? (computerhope.com)
`
`2021 Microsoft Computer Dictionary (1997) – “process” and “status”
`
`2022
`
`5-26-2015 Deposition Transcript of Henry Houh
`
`2023
`
`Stuart Stubblebine’s Declaration (6/8/15)
`
`vii
`
`
`
`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`I.
`
`Introduction
`
`In the Board’s Institution of Inter Partes Review Decision (Paper No. 12,
`
`“Institution Decision”), it instituted inter partes review of Straight Path IP Group’s
`
`U.S. Patent No. 6,009,469 on only the following Grounds, references, and claims
`
`identified in Samsung’s Petition:
`
`Ground
`
`References
`
`Basis
`
`Challenged Claims
`
`Microsoft Manual &
`NetBIOS
`
`§ 103(a)
`
`1-3, 5, 6, and 9
`
`Microsoft Manual, NetBIOS,
`& Palmer
`
`§ 103(a)
`
`10, 14, 17, and 18
`
`Samsung has not met its burden of proving any of these challenged claims
`
`1
`
`2
`
`
`
`are unpatentable under these Grounds for at least the following reasons:
`
`
`
`“Process” vs. Computer: Samsung’s own expert, Dr. Henry Houh,
`
`admitted at his deposition that each claimed “process” element should be construed
`
`as an “application,” not a computer as Samsung proposes. Dr. Houh also admitted
`
`that the NetBIOS/Microsoft registration system relied on by Samsung for these
`
`“process” elements can register only a computer, not a “process”/application as
`
`required by all of the challenged claims.
`
`
`
`“Is Connected” vs. Registration: Dr. Houh also admitted that,
`
`contrary to Samsung’s proposed construction, all of the challenged claims require a
`
`1
`
`
`
`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`query as to whether a process is connected to the computer network at the time of
`
`the query, which the Samsung references admittedly cannot do.
`
`
`
`No “Representing” Interface: The references do not disclose the
`
`“interface element representing a first callee process.” This limitation is required
`
`by all of the challenged claims except claim 1, but it was not construed by
`
`Samsung, its expert, or the Board.
`
`
`
`Unique Identifier: The references do not teach the “unique
`
`identifier” required by claim 1.
`
`II. Background And Overview Of The ’469 Patent
`
`The ’469 patent concerns a system for enabling “realtime point-to-point
`
`communications” between running computer programs and applications connected
`
`to the same computer network, such as programs and applications for allowing
`
`“realtime video teleconferencing” or other “point-to-point communications in
`
`realtime of voice and video.” (Ex. 1001 at 1:60-4, 2:31-8, 9:25-34, 10:14-5). Many
`
`different computer programs can be installed on a computer, but not all of them are
`
`typically running and available at the same time. (Ex. 2023 (Declaration of Stuart
`
`Stubblebine) at ¶ 12). At any given time, even if a computer is itself connected to
`
`a network such as the Internet (i.e., is “on-line”), at least some of the computer’s
`
`programs may still be off-line and unavailable for communication over the
`
`network. (Id.; see also Ex. 2022 (Deposition of Henry Houh) at 63:5-64:13).
`
`2
`
`
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`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`Because real-time point-to-point communications between computer programs can
`
`only be established between programs that are on-line at the time the desired
`
`communication is sought, (Ex. 1001 at 7:57-9), the ’469 patent discloses a realtime
`
`point-to-point Internet communications protocol that enables: (1) a first computer
`
`program to query a connection server to determine if a second 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 it is sought. (Ex. 2023 at ¶ 13; Ex.
`
`1001 at 3:15-27, 5:18-32, 6:56-7:59, 11:64-12:28, claims 1, 2, 3, 5, 6).
`
`A. The Problems And Solutions Identified By The ’469 Patent
`
`1.
`
`The Problem Identified By The ’469 Patent
`
`The ’469 patent issued from a continuation-in-part application claiming
`
`priority to the application that issued as U.S. Patent No. 6,108,704, which was filed
`
`on September 25, 1995, when the Internet was in its infancy. (Ex. 1001 at [63]).
`
`Just two years before the inventors filed the ’469 Patent Application there were
`
`only a hundred or so web servers in existence, and about one year before the first
`
`live internet video was initiated from a website. (Ex. 2022 at 14:14 – 15:4). The
`
`’469 patent specification explains that the increased popularity of on-line services
`
`such as America Online spurred the development of computer programs that
`
`3
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`
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`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
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`provide on-line services such as realtime video conferencing. (Ex. 1001 at 1:60-
`
`2:4, 2:30-7, 9:25-34, 10:14-5).
`
`The specification describes that the prior art made it possible to create point-
`
`to-point communications between devices and programs that had permanent
`
`Internet Protocol (“IP”) addresses. (Ex. 2023 at ¶ 14; Ex. 1001 at 2:30-5). But
`
`some devices and computer programs do not have a permanent and stable address
`
`on the Internet. Instead, they repeatedly log on and off of the Internet and may
`
`receive a new, temporary (or “dynamically allocated”) IP address each time they
`
`reconnect to the network. (Ex. 2023 at ¶ 14; Ex. 1001 at 2:17-29, 6:56-7:3, 7:49-
`
`59).
`
`Unlike permanent IP addresses that do not change, these “dynamic” IP
`
`addresses made it difficult to establish realtime point-to-point voice and video
`
`communications between computer programs that (a) are not permanently
`
`connected to the network and (b) may have a new, as-yet-unknown IP address
`
`when they reconnect to the network. (Ex. 2023 at ¶ 15; Ex. 1001 at 2:30-8). The
`
`’469 patent solved these two problems. (Ex. 2023 at ¶ 16; Ex. 1001 at 3:15-27,
`
`6:56-7:59, 9:25-34, 11:64-12:28, claims 1, 2, 3, 5, 6).
`
`2.
`
`The ’469 Patent’s Solution
`
`The ’469 patent solved the problem of realtime point-to-point
`
`communications between voice and video computer programs that are not
`
`4
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`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
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`permanently connected to a network and may have a new, as-yet-unknown IP
`
`address when they reconnect to a network by providing a real-time point-to-point
`
`Internet communications protocol for: (1) determining whether a specific, targeted
`
`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; see also Ex. 2022 at 14-21).
`
`In one embodiment, the disclosed protocol works as follows: a first user who
`
`is connected to the Internet or other computer network (the caller) and who wishes
`
`to communicate with another user over the Internet launches a program on her
`
`computer or her Personal Digital Assistant (“PDA”) and connects that program to
`
`the network. (Ex. 2023 at ¶ 17; Ex. 1001 at 5:18-24, 6:1-7, 6:62-5, 11:64-12:1).
`
`This program, which can be written in C++, then transmits its IP address to a
`
`“connection server,” which, among other things, may then determine whether other
`
`programs are on-line and available for communication, and if so, facilitate
`
`communications between different on-line programs. (Ex. 2023 at ¶¶ 17, 26; Ex.
`
`1001 at 5:18-32, 6:66-7:5, 7:30-59, 11:64-12:12). From this initial transmission,
`
`the connection server obtains and stores the first user’s then-current dynamic IP
`
`address in a database. (Ex. 2023 at ¶ 17; Ex. 1001 at 6:66-7:5). This initial
`
`5
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`U.S. Patent No. 6,009,469 C1
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`transmission also establishes the first user’s computer program as an “active on-
`
`line party” in the connection server database. (Ex. 2023 at ¶ 17; Ex. 1001 at 7:5-9,
`
`7:31-6, 7:44-59).
`
`But the first user’s computer program may later disconnect from the
`
`network, and therefore no longer be an “active on-line party” available for a point-
`
`to-point communication. (Ex. 2023 at ¶ 18; Ex. 1001 at 7:44-57). Accordingly, to
`
`enable determining whether the user’s program is actually connected to the
`
`network and available for communication at a particular time, the specification
`
`discloses that “[w]hen 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.” (Ex. 2023 at ¶ 18; Ex. 1001 at 7:44-57). The
`
`connection server could also use a status flag to identify that a registered program
`
`is offline. (Id.)
`
`Like the first user, a second user (the callee) may also start a computer
`
`program on his connected computer or PDA, thereby storing his then-current IP
`
`address in the connection server database and establishing his computer program as
`
`active and on-line. (Ex. 2023 at ¶ 19; Ex. 1001 at 7:9-13, 11:64-12:1). The first
`
`user’s computer program can attempt to initiate a point-to-point connection with
`
`the second user’s computer program by sending a request to the connection server.
`
`(Ex. 2023 at ¶ 19; Ex. 1001 at 5:18-20, 7:20-30, 11:64-12:1, 12:18-23).
`
`6
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`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. (Ex. 2023
`
`at ¶ 19; Ex. 1001 at 7:33-6, 12:18-25). If it is on-line, the connection server will
`
`then forward 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 the point-to-
`
`point communication between itself and the second user’s program (without
`
`intermediation by the connection server). (Ex. 2023 at ¶ 19; Ex. 1001 at 5:18-20,
`
`7:36-43, 12:1-9, 23-8). If, however, the second user’s computer program is not on-
`
`line at the time the first computer program makes its query, then the connection
`
`server checks its database, determines that the second computer program is not
`
`currently on-line, and sends the first user’s program an “off-line” signal or
`
`message. (Ex. 2023 at ¶ 20; 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 and is flagged
`
`as off-line, even if that second program’s name and address remain stored in (or
`
`registered with) the connection server. (Ex. 2023 at ¶ 20; Ex. 1001 at 7:44-59,
`
`12:4-12). Thus, as described in the ’469 patent specification, whether a computer
`
`program is currently connected to the network or on-line is not and cannot be
`
`determined by whether its name and address are registered with a connection
`
`7
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`
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`server, for the program may be so registered and yet be off-line. (Ex. 1001 at 7:44-
`
`57).
`
`3.
`
`The ’469 Patent Also Describes the Use of a Display Screen
`and Various Interface Elements.
`
`The ’469 patent also describes the use of a display screen and various
`
`interface elements to help a user to implement point-to-point communications. For
`
`example, Figures 5 and 6 depict exemplary display screens that include icons
`
`“configured to substantially simulate a telephone handset or a cellular telephone
`
`interface to facilitate ease of use, as well as to simulate function keys of a
`
`keyboard.” (Ex. 1001 at 10:34-54, FIGS. 5 and 6).
`
`The specification describes providing interface elements representing a
`
`communication “line” and a callee process. For example, a communication line
`
`could be represented by an icon such as the L1-L4 icons depicted in Figure 6. (See
`
`Ex. 1001 at 10:63-11:1). Similarly, a particular callee process could be represented
`
`by, for example, one of a list of names or aliases presented as “an entry in a
`
`directory . . . where the directory entries may be scrolled using the status area 38
`
`and the down arrow icon 40 [shown in Figure 6].” (Ex. 1001 at 11:19-26).
`
`B.
`
`The Challenged ’469 Patent Claims.
`
`Samsung challenges the validity of independent claim 1 (and its dependent
`
`claims 2 and 3), independent claim 5 (and its dependent claim 6), independent
`
`8
`
`
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`Case IPR2014-01367
`U.S. Patent No. 6,009,469 C1
`
`
`claim 9 (and its dependent claims 14, 17, and 18), and claim 10 (which depends
`
`from claim 8).
`
`1.
`
`The challenged claims concerns computer programs, not
`computers.
`
`Each challenged claim concerns a method or computer application for
`
`establishing a point-to-point communication between a first (or caller) “process”
`
`and another “process” (or callee). Samsung’s own expert, Dr. Houh, admitted at
`
`his deposition that, contrary to Samsung’s current argument that “process” means
`
`“computer,” “process” should be construed to mean “a running instance of a
`
`computer program or application.” (Ex. 2022 at 192:21 – 193:15). Samsung itself
`
`previously admitted the same thing. Straight Path has accused Samsung of
`
`infringing the ’469 patent in the United States District Court for the Eastern
`
`District of Texas (Civil Action No. 6:13-cv-00604). On September 12, 2014, the
`
`parties submitted to the District Court a “Joint Claim Construction And Prehearing
`
`Statement,” in which Samsung agreed that the correct construction of the claim
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`term “process” is a “running instance of a computer program or application.” (Ex.
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`2003 at 10, Exhibit A). This is the same construction that Straight Path proposes
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`here, and it is directly at odds with the construction of “process” on which
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`Samsung now bases all of its Grounds for invalidity.
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`The correct construction of “process” is currently at issue in Straight Path’s
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`appeal of the Board’s Final Written Decision in the inter partes review of the ’704
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`patent brought by Sipnet EU S.R.O. (“Sipnet”). (App. No. 15-1212). On appeal,
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`Sipnet concedes to the Federal Circuit that Straight Path’s construction of
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`“process” is correct, that “a process is not itself a computer but a program running
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`on a computer.” (See Paper No. 20, Attachment A, at 17 (“Sipnet Opp. Br.”)).
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`Sipnet also admits that Straight Path’s construction is “consistent with the ordinary
`
`meaning of the terms ‘process’ as it is used in the art.” (Id.).
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`The correct construction of “process” was also addressed in several other
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`prior lawsuits. In Straight Path IP Group, Inc. v. Bandwidth.com, Inc., 2014 U.S.
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`Dist. LEXIS 25394, at *13 (E.D. Va. Feb. 25, 2014), the district court construed
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`“process” in U.S. Patent No. 6,513,066, a continuation of the ’704 patent
`
`application, as a “running instance of a computer program or application.” (Ex.
`
`2002 at 3-4). In ICT v. Vivox (2:12-cv-00007) and ICT v. Stalker Software (2:12-
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`cv-00009), the parties agreed that “the claim term ‘process,’ found throughout the
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`patents-in-suit, means “a running instance of a computer program or application.”
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`(Ex. 2004 at 3, October 26, 2012 Opinion and Order).
`
`2.
`
`Challenged claims require the determination of whether a
`process is currently connected to the computer network, not
`whether it was previously connected.
`
`All of the challenged claims except for claims 1, 2, and 5 require a query
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`and/or determination of whether the target process is currently connected to the
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`computer network (is currently “on-line” or “accessible”) not whether the process
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`was connected at some previous time. (Ex. 1001 at claim 6, see also id. at claims 3,
`
`9, 10, 14, 17, 18). Contrary to Samsung’s proposal and IPR, its expert, Dr. Houh
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`admitted at his deposition that the challenged claims require a query as to whether
`
`a process is connected to the computer network at the time of the query. (Ex.
`
`2022 at 14-21).
`
`This claim construction dispute is currently at issue in Straight Path’s appeal
`
`of the Board’s Final Written Decision in the Sipnet IPR on the ’704 patent. Like
`
`the challenged ’469 patent claims, the ’704 patent claims at issue in the appeal
`
`include limitations such as a query to “the address server as to whether the second
`
`process is connected to the computer network” and receiving the second process’s
`
`dynamic address “when the second process is connected to the network.” In light
`
`of these limitations, on appeal, Sipnet has conceded to the Federal Circuit that the
`
`“challenged claims themselves . . . disclose[] ‘(1) determining whether a specific,
`
`targeted computer program is currently running and connected to a network.’”
`
`(Sipnet Opp. Br. at 17 (quoting Straight Path’s opening brief)) (emphasis added).
`
`3.
`
`Challenged claims also require “a user interface element
`representing a first callee process.”
`
`Challenged claims 9, 10, 14, 17, and 18 also require user interface elements
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`that allow a user to initiate a point-to-point communication link between processes.
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`For example, claim 9 requires “a user interface element representing a first callee
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`process.”(Ex. 1001 at claim 9) (emphasis added).
`
`4.
`
`Challenged claim 1 also requires transmitting to the server
`a “unique identifier of the first process.”
`
`Claim 1’s requirements further include program code for transmitting to the
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`server “a unique identifier of the first process:” (Ex. 1001 at claim 1).
`
`C. The ’469 Patent’s Prosecution History
`
`The ’469 patent issued from a continuation-in-part application claiming
`
`priority to the application that issued as the ’704 patent, which was filed on
`
`September 25, 1995. The ’469 patent is part of a family of patents claiming priority
`
`to the September 25, 1995 filing, including U.S. Patent No. 6,131,121. Like the
`
`’469 patent, the related ’704 and ’121 patents are the subjects of co-pending IPRs
`
`filed by Samsung.
`
`1.
`
`The Original Prosecution
`
`In the original prosecution of the ’469 patent application, the applicants
`
`made explicit their intent to claim systems and methods directed towards
`
`processes, rather than computers. Applicants’ original claims were directed
`
`towards programs for establishing a “point-to-point communication link with
`
`another computer” and “establishing a point-to-point communication link between
`
`the first processor and the second processor.” (See, e.g., Ex. 1002 at 107, original
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`claims 1, 2). But the applicants subsequently amended these claims so they were
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`directed to “processes” instead of computer/processors. (Ex. 1002 at 368-69).
`
`These amendments were consistent with the parent application, in which the
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`applicants explained that in their system, “[o]ther processes wishing to contact a
`
`desired target process simply query the address directory server to determine
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`whether the target process is on-line and the current network protocol address at
`
`which the target process is located.” (Ex. 1024 at 412).
`
`2.
`
`The Ex Parte Reexaminations
`
`On February 23, 2009, ex parte reexamination requests were filed for the
`
`’469, ’704, and ’121 patents. During the resulting reexaminations, applicants and
`
`the PTO addressed the claim elements concerning the on-line status of a process.
`
`In each reexamination, applicants submitted an expert declaration from Ketan
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`Mayer-Patel explaining that the name registration system disclosed in the NetBIOS
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`reference (the same reference now relied on by Samsung) does not teach the on-
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`line status element of the patent claims:
`
`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
`
`determining if the first callee process is accessible. An active name
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`simply refers to a name that has been registered and that has not yet
`
`been de-registered, independent of whether the associated computer is
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`or is not accessible.
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`(Ex. 1003, Part 1 at 90, ¶31) (emphasis added).
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`The PTO agreed and affirmed the patentability of the challenged claims
`
`stating that the “NetBIOS name registration system does not mean that a ‘first
`
`callee process is accessible’ as name registration is often permanent and the
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`correspondence between name and IP address would not always be indicative of
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`accessibility.” (Ex. 1003, Part 1 at 130).
`
`III. The Microsoft Manual and NetBIOS References
`
`The NetBIOS and Microsoft Manual references generally describe the same
`
`relevant name server technology: NetBIOS concerns a theoretical name server,
`
`while Microsoft Manual, which discloses the “Windows Internet Name Service”
`
`(“WINS”), concerns that same name server implemented with a Windows NT
`
`computer. (Ex. 2023 at ¶ 53; Ex. 1012 at 4, 11-12, 61, 65-6; Ex. 1014 at 385-6; Ex.
`
`2022 at 20:3-12).
`
`A. NetBIOS and Microsoft Manual both disclose a name server for
`registering the name of a computer, not a computer application.
`
`The Microsoft Manual reference explains the purpose of a name server:
`
`computer users prefer to use computer names instead of IP addresses, so the name
`
`server allows users to identify a computer using a unique name but still be able to
`
`determine that computer’s IP address to enable communication. (Ex. 1012 at 61;
`
`Ex. 1004 at ¶¶ 37-41). To that end, NetBIOS and Microsoft Manual describe a
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`way for computers to claim names, to manage conflicts that can arise when
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`computers on the same network claim or have the same name, and to map
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`computer names to their corresponding IP addresses. (See, e.g., Ex. 1014 at 379,
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`384-5, 395-6, 408-10, 416-8; Ex. 1012 at 61-3, 64-5, 67-8, 122; Ex. 1004 at ¶¶ 37-
`
`41).
`
`For example, Microsoft Manual describes that the “Windows Internet Name
`
`service (WINS) [is] for dynamically registering and querying computer names on
`
`an internetwork” and is a “name resolution service for easy, centralized
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`management of computer name-to-IP address resolution in medium and large
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`internetworks.” (Ex. 1012 at 4, 11 (emphasis added); Ex. 2023 at ¶ 38). Microsoft
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`Manual thus describes the purpose of WINS as the registration and resolution of
`
`computer (also known as a “node”) names: (1) “Registration is the process used to
`
`acquire a unique name for each node (computer system) on the network” and (2)
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`“Resolution is the process used to determine the specific address for a computer
`
`name.”(Ex. 1012 at 62 (emphasis added); Ex. 2023 at ¶ 39-41).
`
`NetBIOS similarly describes that it is the “dominant mechanism for personal
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`computer networking” and that it has “generally been confined to personal
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`comput
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