UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SONY CORPORATION
`Petitioner
`v.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, INC.
`(now STRAIGHT PATH IP GROUP, INC.)
`Patent Owner
`
`
`
`Patent No. 6,009,469
`
`Filing Date: September 25, 1996
`
`Issue Date: December 28, 1999
`
`Title: GRAPHIC USER INTERFACE FOR
`INTERNET TELEPHONY APPLICATION
`___________________________
`
`Inter Partes Review No. IPR2014-00231, Filing Date December 5, 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`Samsung - Exhibit 1026 - Page 1
`
`

`

`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... 1
`
`I.
`
`
`THE ’469 PATENT ......................................................................................... 2
`
`II.
`
`
`THE ’469 PATENT EX PARTE REEXAMINATION ................................... 3
`
`III.
`
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW ....................... 5
`
`
`
` LEGAL STANDARD ..................................................................................... 7 IV.
`
`ARGUMENT ............................................................................................................. 8
`
`I.
`
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’469 PATENT ....................................................... 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Challenged Claims Require Either Querying into On-Line
`Status of a Second Process, Dynamic Addressing, or
`Forwarding a Unique Identifier of a Process to a Server ...................... 9
`
`Petitioner’s Suggestion that “On-Line” Means “Registered with
`a Server” Is Improper ..........................................................................14
`
`Petitioner’s Suggestion that “Accessible” Means “Registered
`with a Server” Is Baseless ...................................................................21
`
`Petitioner’s Alternative Constructions for “Query” Have No
`Basis in the Claims or Specification ...................................................22
`
`Petitioner’s Construction for “Determining the Currently
`Assigned Network Protocol Address [] Upon Connection to the
`Computer Network” Eliminates Claim 1’s Dynamic Addressing
`Requirement ........................................................................................25
`
`II.
`
`
`PETITIONER HAS FAILED TO DEMONSTRATE THAT EACH
`LIMITATION OF THE CHALLENGED CLAIMS IS FOUND IN
`THE ASSERTED PRIOR ART ....................................................................29
`
`A.
`
`The Challenged Claims are Patentable over the Microsoft
`Manual in View of Either Palmer or Pinard ........................................30
`
`
`
` Page i
`
`Samsung - Exhibit 1026 - Page 2
`
`

`

`
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Microsoft Manual Only Discloses a Database of
`Registered Computer Names, and Does Not Query the
`On-Line Status of a Process ......................................................31
`
`The Microsoft Manual in Combination with Palmer Does
`Not Render Obvious Claims 3, 9-10, and 17-18 Because
`the References Do Not Teach a Query into the On-Line
`Status of a Process.....................................................................35
`
`The Microsoft Manual in Combination with Palmer and
`Pinard Does Not Render Obvious Claims 9-10 and 17-18
`Because the References Do Not Teach a Query into the
`On-Line Status of a Process ......................................................37
`
`The Microsoft Manual in Combination with Palmer Does
`Not Render Obvious Claims 1-3 Because the References
`Do Not Teach Transmitting a Unique Identifier of a
`Process.......................................................................................38
`
`B.
`
`The Claims Require Either a Query into On-Line Status or
`Dynamic Addressing, and are Therefore Patentable over
`VocalChat, Alone or in Combination with Pinard or RFC 1541 ........40
`
`1.
`
`2.
`
`3.
`
`VocalChat Does Not Teach a Query into On-Line Status
`of a Process ...............................................................................41
`
`VocalChat, Alone or in Combination with Pinard, Does
`Not Render Obvious the Query into On-Line Status of
`Claims 3, 9-10, and 17-18 .........................................................47
`
`VocalChat, Alone or in Combination with RFC 1541,
`Does Not Render Obvious the Dynamic Addressing or
`Unique Identifier Requirement of Claims 1-3 ..........................47
`
`a.
`
`b.
`
`The VocalChat References Do Not Render
`Obvious Claims 1-3 Because VocalChat Does Not
`Teach Dynamic Addresses or Unique Identifiers ...........48
`
`Petitioner Has Not Established the Obviousness of
`Combining RFC 1541 with VocalChat ..........................50
`
` Page ii
`
`Samsung - Exhibit 1026 - Page 3
`
`

`

`
`
`C.
`
`Little-1994 in Combination with RFC 791, RFC 1541, Little-
`1993, or Pinard Does Not Teach the Required Point-to-Point
`Communication with a Second Process ..............................................53
`
`1.
`
`2.
`
`Petitioner Has Admitted that Little-1994 Should Not Be
`Considered by the Board ...........................................................54
`
`The Asserted References Do Not Teach the Required
`Connection Between Two Processes ........................................54
`
`a.
`
`b.
`
`Little-1994 Does Not Teach a Point-to-Point
`Communication with a Second Process, Receiving
`the Network Protocol Address of a Second
`Process, or Establishing a Communication
`Responsive to the Network Protocol Address ................55
`
`Little-1994 in Combination with RFC 791, RFC
`1541, Little-1993, or Pinard Do Not Render
`Obvious Claims 1-3, 9-10, or 17-18 Because the
`References Do Not Teach Communication with a
`Second Process ...............................................................58
`
`3.
`
`Little-1994 in Combination with RFC 791 and RFC 1541
`Does Not Render Obvious Claims 1-3 Because Petitioner
`Has Not Established the Obviousness of Combining RFC
`1541 with Little-1994 ...............................................................59
`
`CONCLUSION ........................................................................................................60
`
`
`
`
`
`
`
`
`
`
`
` Page iii
`
`Samsung - Exhibit 1026 - Page 4
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................................. 7
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ................................................................................ 8
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ..............................................................................45
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .............................................................................. 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 8, 52, 60
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`602 F.3d 1325 (Fed. Cir. 2010) .............................................................................. 7
`
`Statutes
`35 U.S.C. § 314(a) .................................................................................................2, 7
`
`Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`
`
`
`
`
`
`
` Page iv
`
`Samsung - Exhibit 1026 - Page 5
`
`

`

`
`
`
`
`Straight Path IP Group, Inc., formerly Innovative Communications
`
`Technologies, Inc. (“Patent Owner”), respectfully submits this Preliminary
`
`Response opposing the Petition for Inter Partes Review filed by Sony Corporation
`
`(“Petitioner” or “Sony”) concerning U.S. Patent No. 6,009,469 (“the ’469 Patent”).
`
`INTRODUCTION
`
`The ’469 Patent relates to point-to-point communication between two on-
`
`line processes, in which a first process queries a server to determine the on-line
`
`status of a second process before establishing this point-to-point communication.
`
`A 2010 ex parte reexamination confirmed claims 1-3, 9, and 17-18 of the ’469
`
`Patent. Notwithstanding this confirmation, Petitioner now challenges the same
`
`claims (as well as claim 10) on the basis of three primary references: (1) the
`
`Microsoft Manual; (2) VocalChat; and (3) Little-1994. None of these references,
`
`whether alone or in combination with Sony’s other cited references, anticipate or
`
`render obvious these claims.
`
`The Microsoft Manual only teaches a query into the address of a computer,
`
`rather than the claimed query into the on-line status of a process running on that
`
`computer. Likewise, Sony itself has admitted that VocalChat does not disclose a
`
`query into the on-line status of a process, and that it also does not disclose the
`
`dynamic addressing requirement of claims 1-3. Moreover, Petitioner has admitted
`
`that Little-1994 should not be considered by the Board, as its invalidity contentions
`
`
`
` Page 1
`
`Samsung - Exhibit 1026 - Page 6
`
`

`

`
`
`relating to Little-1994 require the adoption of an unsupported claim construction.
`
`Ultimately, Petitioner’s conclusory arguments rest on hindsight, fail to account for
`
`the fact that the cited references do not disclose all the claims’ requirements (even
`
`in combination), and ignore the difficulties that these references otherwise describe
`
`in combining the claimed features.
`
`Therefore, Petitioner has not established a reasonable likelihood of
`
`prevailing on its invalidity contentions, as required by 35 U.S.C. § 314(a).
`
`Accordingly, Patent Owner respectfully submits that Petitioner’s Request for Inter
`
`Partes Review be denied, for the reasons explained more fully below.
`
`
`I.
`
`THE ’469 PATENT
`
`The ’469 Patent is entitled “Graphic user interface for internet telephony
`
`application,” and was filed September 25, 1996 and issued on December 28, 1999.
`
`As stated in the Abstract of the ’469 Patent, the claimed invention relates generally
`
`to “[a] communication utility for establishing real-time, point-to-point
`
`communications between processes over a computer network.”1 To achieve the
`
`objective of facilitating a point-to-point communication link between the two
`
`processes, the ’469 Patent teaches “transmitting from a client process to a server a
`
`query as to whether a second client process is connected to the computer
`
`
`1 ’469 Patent at Abstract.
`
`
`
` Page 2
`
`Samsung - Exhibit 1026 - Page 7
`
`

`

`
`
`network.”2 If the server determines that the second process is on-line, it will
`
`provide the requesting process with the network protocol address of the requested
`
`process in order to establish a point-to-point communication link between the two
`
`processes. Significantly, the invention of the ’469 Patent was explicitly created to
`
`facilitate this communication in the context of dynamically assigned addresses.3
`
`
`II.
`
`THE ’469 PATENT EX PARTE REEXAMINATION
`
`The ’469 Patent was previously the subject of a third-party request for ex
`
`parte reexamination initiated on February 23, 2009 (Control No. 90/010,422). The
`
`request challenged claims 1-3, 5-6, 8-9, and 14-18 on the basis of six groups of
`
`references, including VocalChat and the Pinard reference relied upon by
`
`Petitioner.4 On May 10, 2010, the Patent Office issued a Reexamination
`
`Certificate confirming the patentability of claims 5 and 6, and determining claims
`
`1-3, 9, 14-18 to be patentable as amended.5 In the reexamination, Patent Owner
`
`demonstrated that claim 1’s limitation of “program code for determining the
`
`
`2 ’469 Patent at 3:19-21
`
`3 ’469 Patent at 2:35-38. (“Due to the dynamic nature of temporary IP addresses of
`
`some devices accessing the Internet, point-to-point communications in real-time of
`
`voice and video have been generally difficult to attain.”).
`
`4 Ex. 2002, Request for Ex Parte Reexamination at 1-3.
`
`5 Ex. 2003, ’422 Reexamination Certificate at 16.
`
`
`
` Page 3
`
`Samsung - Exhibit 1026 - Page 8
`
`

`

`
`
`currently assigned network protocol address of the first process upon connection to
`
`the computer network” established a dynamic element not present in the prior art.6
`
`The Examiner also noted that VocalChat did not teach dynamic addressing, and
`
`attempted to combine VocalChat with DHCP to allegedly render obvious the
`
`“dynamic addressing” limitation.7 The Examiner also stated that claim 9 was
`
`allowable because the “prior art does not explicitly teach a method for establishing
`
`a point-to-point communication including querying the server process as to the on-
`
`line status of the first callee process.”8
`
`The reexamination thus established that the submitted prior art failed to
`
`disclose limitations of the challenged claims. The Examiner also ultimately
`
`dismissed VocalChat from consideration because the requestor had failed to
`
`establish the public availability of the references.9
`
`
`6 Ex. 2004, Notice of Intent to Issue a Reexamination Certificate at 4-5; see also
`
`Ex. 2005, Final Rejection at 14 (“Examiner first notes that claim 8 does not require
`
`any dynamic addressing limitations, unlike claims 1 and 5.”) (emphasis added).
`
`7 Ex. 2006, Reexam-Non-Final Action at 22.
`
`8 Ex. 2004, Notice of Intent to Issue Ex Parte Reexamination Certificate at 5.
`
`9 Ex. 2005, Final Rejection at 12-13.
`
`
`
` Page 4
`
`Samsung - Exhibit 1026 - Page 9
`
`

`

`
`
`
`III.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW
`
`Sony’s Petition requests cancellation of claims 1-3, 9-10, and 17-18 as
`
`obvious in view of the following prior art references. Notably, Petitioner has
`
`asserted an obviousness argument for each of its invalidity contentions, although
`
`the Petition is devoid of any significant obviousness analysis. For ease of
`
`reference, Sony’s invalidity grounds are summarized below:
`
`Primary
`Reference
`
`Microsoft
`Manual
`
`
`
`VocalChat
`References
`
`
`
`
`
`
`
`Asserted Reference(s)
`
`Claims
`
`(1) Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”); and (2) U.S. Patent No.
`5,375,068 to Palmer et al. (“Palmer”)
`(1) Microsoft Manual; (2) Palmer; and (3) U.S. Patent
`No. 5,533,110 to Pinard et al. (“Pinard”)
`
`(1) VocalChat Version 2.0 trouble.hlp; (2) VocalChat
`Version 2.0 readme.txt; (3) VocalChat Version 2.0
`User’s Guide; (4) VocalChat Version 2.0 info.hlp; and
`(5) VocalChat Version 2.0 voclchat.hlp (collectively,
`“VocalChat References”)
`(1) VocalChat References; and (2) Droms, R.,
`Dynamic Host Configuration Protocol, RFC 1541
`(Oct. 1993) (“RFC 1541”)
`(1) VocalChat References; and (2) Pinard
`
`1-3, 9-10,
`and 17-18
`
`9-10 and
`17-18
`
`1-3, 9-10,
`and 17-18
`
`1-3
`
`9-10 and
`17-18
`
` Page 5
`
`Samsung - Exhibit 1026 - Page 10
`
`

`

`
`
`Little-
`1994
`
`
`
`
`
`
`
`
`(1) Little, T.D.C., et al., “Client-Server Metadata
`Management for the Delivery of Movies in a Video-
`On-Demand System,” First International Workshop on
`Services in Distributed and Networked Environments,
`June 27-28, 1994 (“Little-1994”); and (2) Postel, J.,
`Internet Protocol, RFC 791 (Sept. 1981) (“RFC 791”)
`(1) Little-1994; (2) RFC 791; and (3) RFC 1541
`(1) Little-1994; and (2) Little, T.D.C., et al., “A Digital
`On-Demand Video Service Supporting Content-Based
`Queries,” Proc. 1st ACM International Conference on
`Multimedia, August 1993 (“Little-1993”); and
`(3) RFC 791
`(1) Little-1994; (2) Pinard; and (3) RFC 791
`
`1-2, 3
`
`1-3
`9-10 and
`17-18
`
`9-10 and
`17-18
`
`As shown above, each obviousness contention is based on (1) the Microsoft
`
`Manual; (2) VocalChat; or (3) Little-1994. As more fully discussed below, these
`
`three references are missing significant limitations required by the’469 claims:
`
` The Microsoft Manual and VocalChat lack a query into the on-line status of
`
`a process. Each reference establishes connections with any computer or
`
`process that has previously been registered in its system, rather than
`
`determining whether that process is currently on-line. As will be shown
`
`below, a previous registration does not indicate the current on-line status of a
`
`process.
`
` The Microsoft Manual and VocalChat do not teach the transmission of a
`
`unique identifier of a computer process.
`
` Petitioner has admitted that Little-1994 should not be considered, because
`
`the Board should not consider Little-1994 unless it adopts an unsupported
`
`claim construction.
`
`
`
` Page 6
`
`Samsung - Exhibit 1026 - Page 11
`
`

`

`
`
` Little-1994 only discloses communications between the first process and the
`
`server, rather than communications between the required first and second
`
`process.
`
` Neither VocalChat nor Little-1994 teach dynamic addressing.
`
`As will be shown below, Petitioner’s invalidity contentions are based in
`
`large part on unsupported and flawed claim construction proposals and a selective
`
`reading of the prior art.
`
`
`IV.
`
`LEGAL STANDARD
`
`The applicable standard for instituting an inter partes review is set forth at
`
`35 U.S.C. § 314(a), which provides in relevant part:
`
`THRESHOLD—The Director may not authorize an inter partes
`
`review to be instituted unless the Director determines that . . . there is
`
`a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.
`
`To anticipate a claim, the prior art reference “must disclose each and every
`
`limitation of the claimed invention.”10 To invalidate a claim by obviousness based
`
`on multiple references, the prior art still must disclose all the limitations of the
`
`claims.11 Moreover, “a patent composed of several elements is not proved obvious
`
`
`10 Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed.
`
`Cir. 2010).
`
`11 See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`
`
`
` Page 7
`
`Samsung - Exhibit 1026 - Page 12
`
`

`

`
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art ... [I]t can be important to identify a reason that would have prompted
`
`a person of ordinary skill in the relevant field to combine the elements in the way
`
`the claimed new invention does.” 12
`
`ARGUMENT
`
`
`I.
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’469 PATENT
`
`In an inter partes review, claims are to be given their broadest reasonable
`
`interpretation in light of the specification.13 This broadest reasonable interpretation
`
`of the claims must be “consistent with the specification.”14 A claim construction
`
`may be “unreasonably broad” if it is not “read in light of the specification and
`
`teachings in the underlying patent.”15
`
`
`(non-obviousness ruling proper when “no combination of the prior art, even if
`
`supported by a motivation to combine, would disclose all the limitations of the
`
`claims”).
`
`12 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`
`13 37 C.F.R. § 42.100(b).
`
`14 In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (quoting In re
`
`Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
`
`15 In re Suitco, 603 F.3d at 1260.
`
`
`
` Page 8
`
`Samsung - Exhibit 1026 - Page 13
`
`

`

`
`
`Given this standard, Petitioner has proposed a number of flawed claim
`
`constructions. For purposes of this Preliminary Response and as further described
`
`below, Patent Owner focuses on two key limitations, which are most relevant to
`
`the prior art asserted by Petitioner. First, Petitioner has proposed incorrect
`
`constructions for “transmitting, from the first process to the server process, a query
`
`as to whether the second process is connected to the computer network” /
`
`“querying the server process to determine if the first callee process is accessible.”
`
`Moreover, Petitioner has proposed improper constructions for “connected to the
`
`computer network” / “on-line” and “accessible,” which are part of the above
`
`limitations. Petitioner has improperly argued that “connected to the computer
`
`network” may be established by registration of a process, and effectively construed
`
`the above limitations as a query into registration rather than the required query
`
`into on-line status of a process. Second, Petitioner’s proposed construction of
`
`“program code for determining the currently assigned network protocol address of
`
`the first process upon connection to the computer network” eliminates the dynamic
`
`addressing requirement of the limitation by replacing relevant language of the
`
`limitation.
`
`A. The Challenged Claims Require Either Querying into On-
`Line Status of a Second Process, Dynamic Addressing, or
`Forwarding a Unique Identifier of a Process to a Server
`
`At issue in the Petition are claims 1-3, 9-10, and 17-18. Claims 3, 9-10, and
`
`
`
` Page 9
`
`Samsung - Exhibit 1026 - Page 14
`
`

`

`
`
`17-18 require a query as to the on-line status of a second process, not just a query
`
`into whether a computer or process is registered with a server. Each challenged
`
`claim also requires executing a process by the computer system, and claims 1-3
`
`require that a unique identifier of that process be forwarded to the server process.
`
`Claims 1-3 further require dynamic addressing, as claimed by “determining the
`
`currently assigned network protocol address…upon connection to the computer
`
`network.” The relevant limitations of each challenged claim are set forth below.
`
`Claim 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;
`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.
`
`
`Independent claim 1 first identifies that the process of the challenged claims
`
`is a computer program, via the language “[a] computer program product for use
`
`
`
` Page 10
`
`Samsung - Exhibit 1026 - Page 15
`
`

`

`
`
`with a computer system…, the computer system capable of executing a first
`
`process.” It reiterates the execution of this process in step (a) (“a first process
`
`executing on the computer system”). Claim 1 further requires forwarding a
`
`“unique identifier” of this computer program to the server, rather than forwarding
`
`an identifier of the computer itself (“program code…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”). Claim 1 also requires dynamic address allocation, by
`
`claiming “program code for determining the currently assigned network protocol
`
`address of the first process upon connection to the computer network.” Last,
`
`claim 1 incorporates the ’469 Patent objective of establishing a point-to-point
`
`communication between two processes, rather than just a connection between a
`
`first process and a server (“executing a first process and connecting to other
`
`processes and a server process”; “establishing a point-to-point communications
`
`with another process over the computer network”). Claim 2 is dependent upon
`
`claim 1 and therefore incorporates the above limitations.
`
`Claim 3 The computer program product of claim 2 wherein the program code
`for establishing a point-to-point communication link further comprise:
`d.2 program code for transmitting, from the first process to the
`server process, a query as to whether the second process is
`connected to the computer network; and
`d.3 program code means for receiving a network protocol address
`of the second process from the server process, when the second
`process is connected to the computer network.
`
`
`
` Page 11
`
`Samsung - Exhibit 1026 - Page 16
`
`

`

`
`
`
`Claim 3 requires “transmitting…a query as to whether the second process is
`
`connected to the computer network” and receiving a response to the query “when
`
`the second process is connected” for the purpose of “establishing a point-to-point
`
`communication link” between the two processes. Because it depends from claim
`
`2, claim 3 also incorporates the limitations requiring (1) execution of a process, (2)
`
`transmission of a unique identifier of that process, (3) point-to-point
`
`communication between two processes, and (4) dynamic address allocation.
`
`Claim 916
`
`In a computer system having a display and capable of executing a
`process, a method for establishing a point-to-point communication
`from a caller process to a callee process over a computer network,
`the caller process capable of generating a user interface and being
`operatively connected to the callee process and a server process
`over the computer network, the method comprising the steps of:
`A. generating a user-interface element representing a first
`communication line;
`B. generating a user interface element representing a first callee
`process;
`C. querying the server process to determine if the first callee
`process is accessible; and
`D. establishing a point-to-point communication link from the
`caller process to the first callee process, in response to a user
`associating the element representing the first callee process with
`the element representing the first communication line, wherein
`step C further comprises the steps of:
`C.1 querying the server process as to the on-line status of
`the first callee process; and
`C.2 receiving a network protocol address of the first callee
`
`
`16 Claim 17 depends from claim 9 and thus requires the following limitations.
`
`Claim 18 depends from claim 17, and thus also requires the following limitations.
`
`
`
` Page 12
`
`Samsung - Exhibit 1026 - Page 17
`
`

`

`
`
`process over the computer network from the server process.
`
`
`Independent claim 9 requires “querying the server process to determine if
`
`the first callee process is accessible” in order to “establish[] a point-to-point
`
`communication from a caller process to a callee process.” Claim 9 specifies that
`
`the query into the accessibility of the callee process is performed by “querying the
`
`server process as to the on-line status” of that process, and that the first caller
`
`process then receives a network protocol address of the first callee process.
`
`Claim 9, like claim 1, also identifies that the process of the claim is a
`
`computer program rather than a computer itself (“a computer system…capable of
`
`executing a process”), and requires a point-to-point communication between two
`
`processes rather than just a connection between one process and the server
`
`(“establishing a point-to-point communication from a caller process to a callee
`
`process”; “establishing a point-to-point communication link from the caller process
`
`to the first callee process”).
`
`Claim 10 The method of claim 8 further comprising the step of:
`E. generating a user-interface element representing a second
`communication line.
`
`
`Claim 8. In a computer system having a display and capable of
`executing a process, a method for establishing a point-to-point
`communication from a caller process to a callee process over a
`computer network, the caller process capable of generating a user
`interface and being operatively connected to the callee process and a
`server process over the computer network, the method comprising the
`steps of:
`A. generating a user-interface element representing a first
`
`
`
` Page 13
`
`Samsung - Exhibit 1026 - Page 18
`
`

`

`
`
`communication line;
`B. generating a user interface element representing a first callee
`process;
`C. guerving [sic, “querying”] the server process to determine if
`the first callee process is accessible; and
`D. establishing a point-to-point communication link from the
`caller process to the first callee process, in response to a user
`associating the element representing the first callee process with
`the element representing the first communication line.
`
`
`Claim 10 depends from claim 8, which is not included in Petitioner’s request
`
`for inter partes review. Claim 8, as identified above, requires (1) querying
`
`whether a callee process is accessible, (2) executing a process, and (3) establishing
`
`point-to-point communication between a caller and callee process. Claim 10
`
`therefore requires these same limitations.
`
`B.
`
`Petitioner’s Suggestion that “On-Line” Means “Registered
`with a Server” Is Improper
`
`Petitioner acknowledged that the broadest reasonable construction is the
`
`proper standard to apply in an inter partes review, and that “connected to the
`
`computer network” and “on-line” should therefore be construed as “on-line, e.g.,
`
`registered with a server.”17 This definition is not based on the specification, but
`
`instead misconstrues a prior Board Decision to Institute in a pending inter partes
`
`review involving related U.S. Patent 6,108,704 (“’704 Patent”).18
`
`
`17 Petition at 19.
`
`18 Petition at 19.
`
`
`
` Page 14
`
`Samsung - Exhibit 1026 - Page 19
`
`

`

`
`
`In the pending inter partes review, the Board agreed, for at least the
`
`purposes of its Decision to Institute, that the ’704 Patent specification (which is
`
`incorporated in its entirety into the ’469 Patent) supports a construction of
`
`“connected to the computer network” as “being on-line.”19 Patent Owner agrees
`
`that the claims require and the specification confirms that “connected to the
`
`computer network” requires that a process “is on-line.” The Board, however, then
`
`stated that “being ‘on-line,’ [] can be done by registering an address with the
`
`server.”20 Patent Owner respectfully disagrees with the Board’s conclusion that
`
`registration of a process can satisfy the ’469 Patent’s on-line requirement. As will
`
`be demonstrated below, the ’469 Patent does not teach that previous registration of
`
`a process is an indication of the current on-line status of that process. The Board
`
`therefore erred in determining that past registration of a process can be used in
`
`determining whether or not a process is currently on-line.
`
`Petitioner has adopted this same flawed construction, proposing that “on-
`
`line” be construed as “on-line, e.g., registered with a server.” The reason for
`
`Petitioner’s construction is that the cited prior art only teaches initial registration,
`
`but does not teach determination of on-line status. In fact, the asserted prior art
`
`demonstrates that registration is a one-time, initial enrollment of a process or
`
`
`19 Ex. 2007, IPR2013-00246 Paper No. 11, Decision to Institute at 5-6.
`
`20 Ex. 2007, IPR2013-00246 Paper No. 11, Decision to Institute at 6.
`
`
`
` Page 15
`
`Samsung - Exhibit 1026 - Page 20
`
`

`

`
`
`computer within a system. Specifically, the Microsoft Manual states that a
`
`computer “registers its name and IP address on the network during system
`
`startup.”21 Similarly, VocalChat specifies that its “Address Book contains the
`
`names of all the network users who have VocalChat installed,” and that “[t]his
`
`information is set during installation.”22 In both references, the server only relies
`
`upon this previous registration to establish connections to a second computer or
`
`process. In the Microsoft Manual, “[a]ny name-to-IP address mapping registered
`
`with a WINS server can be provided reliably as