CASE NO. IPR2013-00246
`US PATENT 6,108,704
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SIPNET EU S.R.O.
`Petitioner
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`
`
`Patent No. 6,108,704
`
`Filing Date: September 25, 1995
`
`Issue Date: August 22, 2000
`
`Title: POINT-TO-POINT INTERNET PROTOCOL
`
`___________________________
`
`Inter Partes Review No. IPR2013-00246, Filing Date April 11, 2013
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
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`Samsung - Exhibit 1023 - Page 1
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`

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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`Table of Contents
`
`INTRODUCTION ..................................................................................................... 1
`
`I.
`
`BACKGROUND FACTS ............................................................................... 4
`
`II.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW AND
`THE BOARD’S DECISION TO INSTITUTE ............................................... 5
`
`ARGUMENT ............................................................................................................. 7
`
`I.
`
`STALKER SOFTWARE IS A REAL PARTY-IN-INTEREST IN
`THE PROCEEDING; THEREFORE THE PROCEEDING SHOULD
`BE DISMISSED .............................................................................................. 8
`
`A.
`
`B.
`
`C.
`
`Stalker Software is Estopped from Initiating an Inter Partes
`Review under 37 CFR § 42.101 ............................................................ 8
`
`Stalker Software is a Real Party-in-Interest Because Stalker
`Software Provided the WINS Prior Art to Petitioner ............................ 9
`
`Dismissal of the Proceeding and Sanctions are Appropriate
`Under 37 CFR § 42.12 Due to Sipnet’s Misrepresentation of the
`Real Party-in-Interest ..........................................................................14
`
`II.
`
`THE PRIOR ART DOES NOT TEACH A QUERY OR A
`DETERMINATION AS TO THE ON-LINE STATUS OF A
`PROCESS, AS REQUIRED BY EACH CHALLENGED CLAIM .............16
`
`A.
`
`Legal Standards ...................................................................................18
`
`B.
`
`C.
`
`Each Challenged Claim Require a Query or a Determination as
`to On-Line Status of the Second Process ............................................19
`
`The Specification Fully Supports that the Challenged Claims
`Require a Query or a Determination as to On-Line Status .................25
`
`D. Neither NetBIOS nor WINS Teaches a Query or a
`Determination as to the On-Line Status of the Second Process ..........31
`
`
`
`i
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`Samsung - Exhibit 1023 - Page 2
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`

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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`1.
`
`2.
`
`3.
`
`4.
`
`In NetBIOS, Registration of a Node Does Not
`Teach a Query or a Determination as to the On-
`Line Status of the Second Process ..................................33
`
`Petitioner Fails to Demonstrate That NetBIOS
`Teaches a Query or a Determination of the On-
`Line Status of the Second Process ..................................36
`
`In WINS, Registration of a Computer Does Not
`Teach a Query or a Determination as to the On-
`Line Status of the Second Process ..................................39
`
`Petitioner Fails to Demonstrate That WINS
`Teaches a Query or a Determination of the On-
`Line Status of the Second Process ..................................44
`
`E.
`
`F.
`
`Neither NetBIOS Nor WINS Teach Additional Limitations
`Found in Dependent Claims 5, 6, and 7 ..............................................46
`
`Claims 33-37 Are Not Rendered Obvious by NetBIOS in View
`of WINS...............................................................................................49
`
`III. NETBIOS DOES NOT TEACH DYNAMIC ADDRESS
`ALLOCATION, AS REQUIRED BY EACH CHALLENGED
`CLAIM...........................................................................................................50
`
`A.
`
`The Claims and Specification Require Dynamic Address
`Allocation ............................................................................................50
`
`B.
`
`NetBIOS Does Not Teach Dynamic Addressing ................................53
`
`IV. PETITIONER HAS FAILED TO ESTABLISH THAT WINS IS
`PRIOR ART ...................................................................................................54
`
`CONCLUSION ........................................................................................................60
`
`
`
`ii
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`Samsung - Exhibit 1023 - Page 3
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`Table of Authorities
`
`Cases
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`713 F.3d 1369 (Fed. Cir. 2013) ............................................................................19
`
`Bruckelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir. 2006) ............................................................................54
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) ............................................................................19
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ............................................................................58
`
`Finjan, Inc. v. Symantec Corp.,
`2013 WL 5302560 (Sept. 19, 2013 D. Del.) ........................................................58
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ..............................................................................19
`
`In re Guan Inter Partes Reexamination Proceeding,
`Control No. 95/001,045, “Decision Vacating File Date,” (Aug. 25, 2008)
` ............................................................................................................... 1, 9, 10, 12
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ..............................................................................58
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ..................................................................... 18, 19
`
`In re Wyer,
`655 F.2d 221 (CCPA 1981) ..................................................................................54
`
`Norian Corp. v. Stryker Corp.,
`363 F.3d 1321 (Fed. Cir. 2004) ............................................................................55
`
`Northern Telecom, Inc. v. Datapoint Corp.,
`908 F.2d 931 (Fed. Cir. 1990) ..............................................................................54
`
`Rackable Systems, Inc. v. Super Micro Computer Inc.,
`2007 WL 1223807 (April 25, 2007 N.D. Cal.) ....................................................59
`
`
`
`iii
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`Samsung - Exhibit 1023 - Page 4
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`

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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`ResQNet.com, Inc. v. Lansa, Inc.,
`533 F. Supp. 2d 397 (S.D.N.Y. 2008) ..................................................................54
`
`ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed. Cir. 2010) ..............................................................................55
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`602 F.3d 1325 (Fed. Cir. 2010) ............................................................................19
`
`Vizio, Inc. v. ITC,
`605 F.3d 1330 (Fed. Cir. 2010) ............................................................................49
`
`Statutes
`35 U.S.C. § 312 ........................................................................................................18
`
`35 U.S.C. § 316 ........................................................................................................18
`
`Regulations
`37 C.F.R. § 42.101 ............................................................................................ 1, 8, 9
`
`37 C.F.R. § 42.104 ...................................................................................................18
`
`37 C.F.R. § 42.22 .....................................................................................................18
`
`
`
`iv
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`Samsung - Exhibit 1023 - Page 5
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`

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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`Straight Path IP Group, Inc., formerly Innovative Communications
`
`Technologies, Inc. (“Patent Owner”) respectfully submits this Response opposing
`
`the Petition for Inter Partes Review filed by SIPNET EU S.R.O. (“Petitioner”) in
`
`connection with U.S. Patent No. 6,108,704 (“the ’704 Patent”).
`
`
`
`This response presents four issues for the Board’s consideration:
`
`INTRODUCTION
`
`1. Under 37 C.F.R. § 42.101(b), a real party-in-interest is estopped from filing
`
`a petition for inter partes review if the entity had been served with a complaint for
`
`patent infringement more than one year earlier. Patent Owner served Stalker
`
`Software, Inc. with a complaint for patent infringement of the ’704 Patent more
`
`than a year prior to the filing of the instant petition. Although Petitioner
`
`represented that Sipnet is the only real party-in-interest of this proceeding,
`
`Petitioner has now admitted that Stalker Software provided Petitioner with the
`
`WINS reference that has been used to challenge the patentability of claims 1-7 and
`
`32-42. Under In re Guan, an entity that provides the prior art on which the inter
`
`partes review is to be based is a real party-in-interest. Stalker Software is thus a
`
`real party-in-interest and the proceeding should be dismissed in its entirety
`
`pursuant to 37 C.F.R. § 42.101(b). In addition, sanctions are warranted in the form
`
`of a dismissal and attorney fees under 37 CFR § 42.12 as a result of Petitioner’s
`
`misrepresentation that Sipnet is the only real party-in-interest.
`
`1
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`Samsung - Exhibit 1023 - Page 6
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`2. The challenged claims of the ’704 Patent each require a query or a
`
`determination regarding the on-line status of a process in order to establish a point-
`
`to-point communication link between two processes. The NetBIOS and WINS
`
`references do not teach ascertaining the on-line status of a process (a computer
`
`program running on a computer), or even the on-line status of the computer itself.
`
`As confirmed by technical expert Professor Ketan Mayer-Patel, the references each
`
`teach that the identified query only requests the network address of a second
`
`computer, and in addition, that the response to the query is sent without
`
`determining whether the second computer is on-line with the network. WINS,
`
`which is an implementation of the NetBIOS protocol, specifically teaches that a
`
`query of its database is not a query or a determination as to the on-line status of a
`
`process running on a computer or whether the computer itself is running. WINS
`
`“does not ensure that the related device is currently running, only that a computer
`
`claimed the particular IP address” is in its database.1 As a result, neither NetBIOS
`
`
`1 Ex. 1004, Windows NT 3.5, TCP/IP User Guide (“WINS”) at 57. Ex. 1004
`
`includes page numbers indicated by the publication itself and different page
`
`numbers provided by Petitioner. All references herein will be to the page numbers
`
`as printed in WINS itself, not the page numbers provided by Petitioner.
`
`2
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`Samsung - Exhibit 1023 - Page 7
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`nor WINS alone or in combination teaches a query or a determination as to the on-
`
`line status of a process.
`
`3. The challenged claims of the ’704 Patent each require that the network
`
`address be assigned “following connection to the computer network.” The
`
`Examiner in a previous reexamination concluded that this language required
`
`dynamic assignment of network addresses, and Professor Mayer-Patel agrees with
`
`that conclusion. The Board has already identified that the NetBIOS reference does
`
`not teach dynamic address assignment. Therefore, NetBIOS does not anticipate
`
`any challenged claim.
`
`4. Petitioner has the burden to establish that the WINS reference was a publicly
`
`available document and therefore qualifies as prior art. Petitioner has admitted that
`
`it only obtained the WINS reference from Stalker Software. Patent Owner has
`
`requested confirmation from Petitioner that the WINS reference was a publicly
`
`available document. Petitioner has repeatedly failed to provide evidence to address
`
`the public availability of WINS. As Petitioner has been unable to satisfy its
`
`burden, the WINS reference cannot form the basis of Petitioner’s anticipation and
`
`obviousness arguments
`
`Accordingly, Straight Path respectfully requests confirmation of the
`
`challenged claims, for the reasons explained more fully below.
`
`3
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`Samsung - Exhibit 1023 - Page 8
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`

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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`I.
`
`BACKGROUND FACTS
`
`The ’704 Patent is entitled “Point-to-point internet protocol,” and was filed
`
`September 25, 1995 and issued on August 22, 2000. As stated in the Abstract of
`
`the ’704 Patent, the claimed invention relates generally to “[a] point-to-point
`
`Internet protocol [that] exchanges Internet Protocol (IP) addresses between
`
`processing units … that have an on-line status with respect to the Internet …,
`
`transmitting a query . . . to determine the on-line status of a second processing
`
`unit, . . . for establishing a point-to-point communication link between the first and
`
`processing units.”2
`
`The ’704 Patent was previously the subject of Ex Parte Reexamination
`
`Control No. 90/010,416, initiated on February 17, 2009 (the “Previous
`
`Reexamination”). The Patent Office instituted the ex parte reexamination and
`
`initially rejected claims 1-7, 11-20, and 22-42 as being obvious over NetBIOS in
`
`combination with at least one other reference.3 On October 26, 2010, the Patent
`
`Office issued a Reexamination Certificate confirming the patentability of claims 1-
`
`7 and 32-42 over NetBIOS.4
`
`
`2 U.S. Patent No. 6,108,704 (“’704 Patent”) at Abstract (emphasis added).
`
`3 Ex. 2002, Request for Ex Parte Reexamination at 1.
`
`4 Ex. 2003, Reexamination Certificate.
`
`4
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`Samsung - Exhibit 1023 - Page 9
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`CASE NO. IPR2013-00246
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`In the Previous Reexamination, Patent Owner demonstrated that the
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`limitations including “network protocol address[es] received … following
`
`connection to the computer network” established a dynamic element that was not
`
`present in the submitted prior art.5 Specifically, Patent Owner noted that the
`
`asserted NetBIOS reference did not demonstrate actions “following connection to
`
`the computer network” as required by claims 1-7 and 32-42. The Patent Office
`
`ultimately confirmed the patentability of the claims under reexamination. The
`
`Office explained that the prior art did not teach or disclose the dynamic addressing
`
`limitation required by the challenged claims.6
`
`II.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW
`AND THE BOARD’S DECISION TO INSTITUTE
`
`Sipnet’s Petition requested cancellation of claims 1-7 and 32-42 as
`
`anticipated and/or obvious in view of nine different references. The Board’s
`
`Decision narrowed the issues for inter partes review to (1) anticipation of claims 1-
`
`
`5 See, e.g., Ex. 2004, Response to Non-Final Rejection in a Re-Examination at 7.
`
`(“NetBIOS does not provide dynamic addressing or on-line status…[T]he claim
`
`mapping does not allege, much less prove, that NetBIOS teaches ‘the network
`
`protocol address of each respective process forwarded to the database following
`
`connection to the computer network.’”) (emphasis in original).
`
`6 Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 2-3.
`
`5
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`Samsung - Exhibit 1023 - Page 10
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`7, 32, and 38-42 by NetBIOS, (2) anticipation of claims 1-7 and 32-42 by WINS,7
`
`and (3) obviousness of claims 33-37 by NetBIOS in view of WINS. The Board
`
`noted that an obviousness argument was required for claims 33-37 because
`
`independent claim 33 recited a “dynamic assignment of addresses,” which is not
`
`taught by the NetBIOS reference.
`
`Petitioner requested that, under this broadest reasonable construction
`
`standard, “‘connected/online’ is simply ‘online.’”8 The Board’s Decision to
`
`Institute stated that “‘connected to the computer network’ encompasses being ‘on-
`
`line.’”9 The Board noted that “the ’704 Patent specification discloses ‘…the
`
`
`7 The Board’s Decision to Institute concluded that the Petition was granted as to
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`“Anticipation of claims 1-7 and 38-42 by WINS.” See Decision at 20. However,
`
`in the body of the Decision, the Board stated, “With respect to the remaining
`
`dependent claims 2-7 and 32-42, we have reviewed Petitioner’s supporting
`
`evidence and determine that Petitioner has met its burden under 35 U.S.C. § 314(a)
`
`[with respect to WINS].” See Decision at 14. Out of an abundance of caution,
`
`Patent Owner provides arguments that all of the challenged claims, including
`
`claims 32-37 are not anticipated by WINS.
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`8 IPR2013-00246, Paper No. 1 Petition for Inter Partes Review (“Petition”) at 6.
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`9 IPR2013-00246, Paper No. 11 Decision: Institution of Inter Partes Review
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`(“Decision”) at 5.
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`6
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`Samsung - Exhibit 1023 - Page 11
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`second processing unit 22, upon connection to the Internet 24 through a connection
`
`service provider, is processed by the connection server 25 to be established in the
`
`database 34 as an active on-line party,’” and that a construction of “connected to
`
`the computer network” as “being ‘on-line’” “is both reasonable and consistent with
`
`the ’704 patent specification.”10 The Board also found that for the purposes of its
`
`Decision to Institute, “‘point-to-point communications link’…include[s] direct
`
`communications between two processes over a computer network that are not
`
`intermediated by a server.”11
`
`ARGUMENT
`
`As explained below, challenged claims 1-7 and 32-42 should be confirmed
`
`as patentable because (1) Stalker Software, the real party-in-interest of the
`
`proceeding, is estopped from asserting an inter partes review against the ’704
`
`Patent; (2) Petitioner has failed to demonstrate that NetBIOS and WINS teach a
`
`query or a determination as to the on-line status of the second process; (3)
`
`Petitioner has failed to demonstrate that NetBIOS teaches dynamic addressing; and
`
`(4) Petitioner has failed to establish WINS as a publicly available prior art
`
`reference.
`
`
`10 Decision at 6.
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`11 Decision at 6-7.
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`7
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`Samsung - Exhibit 1023 - Page 12
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`I.
`
`STALKER SOFTWARE IS A REAL PARTY-IN-INTEREST IN
`THE PROCEEDING; THEREFORE THE PROCEEDING
`SHOULD BE DISMISSED
`
`Stalker Software, Inc. (“Stalker Software”) is a real party-in-interest in this
`
`proceeding. Because Stalker Software is estopped from participating in this
`
`proceeding and because Sipnet has misrepresented the real party-in-interest of the
`
`proceeding, Patent Owner respectfully requests that this inter partes review be
`
`dismissed in its entirety and that the Board sanction Petitioner by awarding
`
`attorney fees.
`
`A.
`
`Stalker Software is Estopped from Initiating an Inter Partes
`Review under 37 CFR § 42.101
`
`37 C.F.R. § 42.101(b) estops any entity from filing a petition for inter partes
`
`review regarding a particular patent one year after the entity is served with a
`
`complaint for patent infringement: “A person who is not the owner of a patent
`
`may file with the Office a petition to institute an inter partes review of the patent
`
`unless…[t]he petition requesting the proceeding is filed more than one year after
`
`the date on which the petitioner, the petitioner’s real party-in-interest, or a privy of
`
`the petitioner is served with a complaint alleging infringement of the patent.”
`
`Stalker Software, Inc. sells CommuniGate Pro, a software product that
`
`utilizes the system of the ’704 Patent. Patent Owner’s predecessor in interest,
`
`Innovative Communication Technologies, Inc., filed a lawsuit against Stalker
`
`Software on January 4, 2012, alleging that Stalker Software infringed various
`
`8
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`Samsung - Exhibit 1023 - Page 13
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`claims of the ’704 Patent through the use of its CommuniGate Pro software.12 The
`
`Complaint was served on February 21, 2012.13 After nearly a year of contentious
`
`litigation, the parties settled. As a result of the litigation, under 37 C.F.R.
`
`§ 42.101(b), Stalker is estopped from filing an inter partes review against the
`
`claims of the ’704 Patent after February 21, 2013. The instant inter partes review
`
`was filed on April 11, 2013, and therefore Stalker Software was estopped from
`
`filing the current inter partes review.
`
`B.
`
`Stalker Software is a Real Party-in-Interest Because Stalker
`Software Provided the WINS Prior Art to Petitioner
`
`The Office Patent Trial Practice Guide identifies that, “[a]t a general level,
`
`the ‘real party-in-interest’ is the party that desires review of the patent itself.” 14 In
`
`re Guan Inter Partes Reexamination Proceeding sets out the standard for
`
`determining whether an entity is the real party-in-interest in inter partes review
`
`
`12 Ex. 2021, Complaint against Stalker Software, Inc. at ¶ 3 (“Defendant
`
`CommuniGate has infringed and is infringing the ’704 Patent, by at least selling,
`
`offering to sell, and using VoIP products and/or services, such as CommuniGate
`
`Pro Server, that infringe one or more claims of the ’704 Patent.”).
`
`13 Ex. 2022, Summons Issued as to Stalker Software, Inc.
`
`14 Office Patent Trial Practice Guide at 16.
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`9
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`Samsung - Exhibit 1023 - Page 14
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`proceedings.15 Specifically, In re Guan states that an entity “cannot do any of the
`
`following and not identify the other entity as real party in interest: . . . 3). Allow
`
`another entity to direct or control the content, (e.g., provide the prior
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`patents/printed publications on which the reexam is to be based).”16
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`Petitioner Sipnet is a reseller of Voice over IP (“VOIP”) services in the
`
`Czech Republic, Russia and Ukraine.17 Sipnet’s VOIP offerings are “Powered by
`
`CommuniGate Pro.” 18 Stalker Software and Sipnet have an ongoing business
`
`relationship through Sipnet’s use and reselling of the CommuniGate Pro
`
`software.19 When the infringement litigation was filed against Stalker in January
`
`2012, Stalker contacted Petitioner to inform the company of the impending
`
`
`15 See In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045,
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`“Decision Vacating File Date,” (Aug. 25, 2008). The Patent Office has adopted the
`
`real party-in-interest analysis in In re Guan in the inter partes review proceedings.
`
`See Office Patent Trial Practice Guide at 14-19.
`
`16 In re Guan, “Decision Vacating Filing Date” at 8.
`
`17 See Ex. 2024, Sipnet-Contacts.
`
`18 See Ex. 2025, Sipnet.net.
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`19 See Ex. 2025, Sipnet.net; see also Ex. 2026, Dec. 10, 2013 Petitioner’s Response
`
`to Patent Owner’s Narrowed Discovery Requests of Dec. 6, 2013 at 2.
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`10
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`Samsung - Exhibit 1023 - Page 15
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`litigation.20 By Sipnet’s own admission, Stalker Software then provided Petitioner
`
`with Exhibit 1004, the WINS reference.21 Petitioner then utilized the WINS
`
`reference for the basis of its anticipation challenges to claims 1-7 and 32-42, and
`
`its obviousness challenges to claims 33-37.22 Under In re Guan, the fact that
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`WINS was provided to Sipnet by Stalker Software demonstrates that Stalker
`
`Software is a real party-in-interest of the current inter partes review.
`
`Petitioner only revealed Stalker’s involvement in the instant inter partes
`
`review after repeated discovery requests by Patent Owner. First, Patent Owner
`
`requested information on the real party-in-interest when the Petition was initially
`
`filed, but Petitioner refused, claiming that the request would only be proper after
`
`institution of inter partes review.23 After institution, Patent Owner again attempted
`
`to understand the relationship between Sipnet and Stalker Software.24 Petitioner
`
`
`20 See Ex. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1.
`
`21 See Ex. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1.
`
`22 Paper No. 1, Petition.
`
`23 Ex. 2011, Correspondence from P. Haughey to P. Lee (“With regard to your
`
`letter’s specific requests for discovery, these are all premature. The period for
`
`patent owner discovery will begin after the Patent Office initiates an Inter Partes
`
`Review.”).
`
`24 See Ex. 2027, Oct. 28, 2013 Patent Owner’s First Set of Interrogatories at 7.
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`11
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`Samsung - Exhibit 1023 - Page 16
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`again objected, this time claiming that Patent Owner’s requests were overbroad.25
`
`Patent Owner then narrowed its discovery requests, and Petitioner was finally
`
`forced to reveal that Stalker Software provided Sipnet with the WINS reference.26
`
`Petitioner has continued to refuse to answer discovery requests regarding the
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`financial relationship between Sipnet and Stalker Software, which would present
`
`further evidence establishing Stalker Software as the inter partes review’s real
`
`party-in-interest.27
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`In addition, other circumstantial evidence strongly indicates that Stalker
`
`Software is controlling this inter partes review. First, two of Petitioner’s
`
`evidentiary witnesses regarding the WINS reference have connections to Stalker
`
`Software that were not disclosed by Petitioner. German Myzovsky is the Sipnet
`
`
`25 Ex. 2028, Nov. 26, 2013 Petitioner’s Objections to Patent Owner’s First Set of
`
`Interrogatories.
`
`26 Ex. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1 (“In October
`
`2012 German Myzovsky contacted Stalker Software, Inc. and asked for a copy of
`
`the “Microsoft Windows NT Server 3.5, TCP/IP manual’ referred to in the
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`litigation. An electronic copy was provided to him.”); see also In re Guan,
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`“Decision Vacating Filing Date” at 8.
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`27 Ex. 2029, Dec. 20, 2013 Petitioner’s Response to Patent Owner’s Supplemental
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`Discovery Requests of Dec. 11, 2013 at 6.
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`12
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`Samsung - Exhibit 1023 - Page 17
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`employee who was provided the WINS reference by Sipnet. Petitioner stated that
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`Mr. Myzovsky “has no relationship with Stalker Software, Inc. other than as a
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`customer,” but Mr. Myzovsky had worked with Stalker Software at Tario
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`Communications for several years before joining Sipnet.28 Yuri Kolesnikov, the
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`declarant who has attempted to establish the public availability of WINS, has no
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`apparent connection to Sipnet but use to be featured on Stalker Software’s website
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`as a promoter of its CommuniGate software.29 Second, Sipnet is a Czech
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`Republican company with offices in the Czech Republic, Russia, and Ukraine, but
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`maintains no presence in the United States.30 Sipnet has asserted that it is planning
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`to expand into the U.S. market and as a result wants to invalidate the ’704 Patent.31
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`However, Sipnet has rejected Straight Path’s offer of a license of the ’704 Patent
`
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`28 See, e.g., Ex. 2030, CommuniGate- Tario Communications.
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`29 See Ex. 2031, CommuniGate- Yuri Kolesnikov.
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`30 See Ex. 2024, Sipnet- Contacts.
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`31 Ex. 2032, Dec. 4, 2013 Telephonic Hearing Before the Administrative Patent
`
`Judges, at 18:9-17. Notably, Sipnet would in fact be a licensee of Straight Path if
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`Sipnet wished to enter the U.S. market, as a result of the Stalker litigation, which
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`resulted in a license to Stalker to the ’704 Patent for the CommuniGate Pro
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`software. See Ex. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1.
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`13
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`CASE NO. IPR2013-00246
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`and instead demanded to receive money and an ownership interest in Straight Path
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`in exchange for an agreement to dismiss the inter partes review.32
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`Patent Owner respectfully submits that Stalker Software, as the provider of
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`the WINS reference, is a real party-in-interest of this proceeding. Dismissal of this
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`inter partes review in its entirety is thus appropriate under 37 C.F.R. § 42.101, as
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`real party-in-interest Stalker Software is unable to maintain this proceeding.
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`C.
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`Dismissal of the Proceeding and Sanctions are Appropriate
`Under 37 CFR § 42.12 Due to Sipnet’s Misrepresentation of
`the Real Party-in-Interest
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`Dismissal of this proceeding and sanctions are also appropriate pursuant to
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`37 C.F.R. § 42.12, which provides that a proceeding may be dismissed and
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`sanctions may be imposed for “[m]isrepresentation of a fact,” as well as “[f]ailure
`
`to comply with an applicable rule.” Here, Sipnet misrepresented that it was the
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`sole real party-in-interest of the proceeding.33 Sipnet also violated 37 C.F.R.
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`§ 42.8(1) by failing to identify Stalker Software as a real party-in-interest.34
`
`
`32 Ex. 2032, Dec. 4, 2013 Telephonic Hearing at 21:16-20; see also Ex. 2020,
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`Declaration of David K. Callahan Pursuant to 37 C.F.R. § 42.53.
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`33 Paper 1, Petition at 2. Petitioner has also maintained that Stalker and Sipnet
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`have no relationship beyond the fact that “Stalker Software, Inc. is a vendor of the
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`CommuniGate Pro communication product employed in some of Sipnet EU
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`systems and offerings.” See also Ex. 2026, Dec. 10, 2013 Petitioner’s Response to
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`14
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`CASE NO. IPR2013-00246
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`Further, Petitioner’s refusal to acknowledge Stalker Software’s involvement
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`in the instant proceeding until several months into the discovery process has led to
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`the incursion of additional and unnecessary fees by Patent Owner. Patent Owner
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`attempted to resolve the issue of Stalker Software’s involvement in this proceeding
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`prior to institution of inter partes review. On June 11, 2013, Patent Owner
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`requested information regarding any other entities that could be a real party-in-
`
`interest. 35 Petitioner refused to answer Patent Owner’s inquiry and did not
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`confirm Stalker Software’s involvement in the proceeding until December 2013.36
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`In contrast to Petitioner’s actions, the Office requires the identification of a
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`petition’s real party-in-interest prior to institution of inter partes review to ensure
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`“proper application of the statutory estoppel provisions,” in order to “protect patent
`
`owners from harassment…, to prevent parties from having a ‘second bite at the
`
`
`Discovery at 2.
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`34 37 C.F.R. § 42.8(b)(1).
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`35 See Ex. 2010, June 11, 2013 Letter from P. Lee to P. Haughey.
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`36 See Ex. 2011, June 17, 2013, Correspondence from P. Haughey to P. Lee
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`(“Sipnet is the only real party in interest. With regard to your letter’s specific
`
`requests for discovery, these are all premature. The period for patent owner
`
`discovery will begin after the Patent Office initiates an Inter Partes Review.”).
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`15
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`CASE NO. IPR2013-00246
`US PATENT 6,108,704
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`apple,’ and to protect the integrity of both the USPTO and Federal Courts.”37 Had
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`Petitioner accurately represented Stalker Software’s involvement in the Petition,
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`the petition for inter partes review would have been dismissed pursuant to 37
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`C.F.R. § 42.101(b).
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`Patent Owner respectfully requests sanctions in the form of compensatory
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`expenses, including attorney fees and dismissal of the petition in its entirety, as
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`authorized by 37 C.F.R. § 42.12(b).
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`II. THE PRIOR ART DOES NOT TEACH A QUERY OR A
`DETERMINATION AS TO THE ON-LINE STATUS OF A
`PROCESS, AS REQUIRED BY EACH CHALLENGED CLAIM
`
`Substantively, the challenged claims of the ’704 Patent are patentable for at
`
`least the reason that neither NetBIOS nor WINS teach a query or a determination
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`as to the on-line status of a process. One of the objectives of the ’704 Patent is to
`
`establish a point-to-point communication link between a first and second process.
`
`In order to establish this point-to-point communication link, each challenged claim
`
`of the ’704 Patent does more than simply provide that the network address of the
`
`second process be sent to the first process; instead, the challenge