UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`
`
`Case IPR2014-013671
`U.S. Patent No. 6,009,469
`
`________________
`
`
`
`
`
`PATENT OWNER’S SUBMISSION OF OPINION FROM STRAIGHT PATH
`IP GROUP, INC. V. SIPNET EU S.R.O., No. 15-1212 (FED. CIR.)
`
`
`
`
`
`
`
`1 IPR2015-01007 has been joined with this proceeding.
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`Pursuant to the Board’s March 27, 2015 Conduct of the Proceeding Order
`
`(the “Order”) in the above captioned case, Patent Owner Straight Path IP Group,
`
`Inc. (“Straight Path”) hereby submits the Federal Circuit’s November 25, 2015
`
`Opinion in Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 (Fed.
`
`Cir.), which is Straight Path’s appeal of the Final Written Decision in related case
`
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc., IPR2013-00246.
`
`
`Dated: December 4, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (admitted pro
`hac vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`2
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a copy of Patent Owner’s Submission of Opinion from Straight
`
`Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 (Fed. Cir.) is being served
`
`by electronic mail on the following counsel for the Petitioners:
`
`For Samsung Electronics Co., Ltd.
`
`For Cisco Systems, Inc. and AVAYA Inc.
`
`DLA Piper LLP
`Brian Erickson (Reg. No. 48,895)
`brian.erickson@dlapiper.com
`Jeff Cole (Reg. No. 56,052)
`jeff.cole@dlapiper.com
`Samsung-SP-IPR@dlapiper.com
`
`Wilmer Cutler Pickering Hale
`and Dorr LLP
`David L. Cavanaugh (Reg. No. 36,476)
`Jason D. Kipnis (Reg. No. 40,680)
`david.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`For AVAYA Inc.
`
`Fish & Richardson
`Dorothy P. Whelan (Reg. No. 33,814)
`Christopher O. Green (Reg. No. 52,964)
`Whelan@fr.com
`cgreen@fr.com
`
`
`
`
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (admitted pro hac
`vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`
`
`
`
`Dated: December 4, 2015
`
`
`44426889v.1
`
`
`
`3
`
`

`
`ATTACHMENT A
`
`ATTACHMENT A
`
`

`
`Case: 15-1212 Document: 54-1 Page: 1 Filed: 11/25/2015
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED:
`
` The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
` Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
`
` Costs are taxed against the appellee in favor of the appellant under Rule 39. The party entitled to costs is
`provided a bill of costs form and an instruction sheet with this notice.
` The parties are encouraged to stipulate to the costs. A bill of costs will be presumed correct in the absence of a
`timely filed objection.
` Costs are payable to the party awarded costs. If costs are awarded to the government, they should be paid to
`the Treasurer of the United States. Where costs are awarded against the government, payment should be made to
`the person(s) designated under the governing statutes, the court's orders, and the parties' written settlement
`agreements. In cases between private parties, payment should be made to counsel for the party awarded costs or, if
`the party is not represented by counsel, to the party pro se. Payment of costs should not be sent to the court. Costs
`should be paid promptly.
` If the court also imposed monetary sanctions, they are payable to the opposing party unless the court's opinion
`provides otherwise. Sanctions should be paid in the same way as costs.
`
` Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(g) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`
`
`
`
`
`
`FOR THE COURT
`
`
`/s/ Daniel E. O'Toole
`Daniel E. O'Toole
`Clerk of Court
`
`
`
`
`
`
`
`
`
`
`
`15-1212 - Straight Path IP Group, Inc. v. Sipnet EU S.R.O.
`United States Patent and Trademark Office, Case No. IPR2013-00246
`
`

`
`Case: 15-1212 Document: 54-2 Page: 1 Filed: 11/25/2015
`
`
`
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`STRAIGHT PATH IP GROUP, INC.,
`Appellant
`
`v.
`
`SIPNET EU S.R.O.,
`Appellee
`______________________
`
`2015-1212
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00246.
`
`______________________
`
`Decided: November 25, 2015
`______________________
`
`JAMES M. WODARSKI, Mintz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C., Boston, MA, argued for appel-
`lant. Also represented by WILLIAM MEUNIER, NICHOLAS
`ARMINGTON, SANDRA BADIN, MICHAEL NEWMAN, MICHAEL
`T. RENAUD, ADAM PHILLIP SAMANSKY.
`
`SANJAY PRASAD, Prasad IP, PC, Los Altos, CA, argued
`for appellee. Also represented by PAVEL POGODIN, Trans-
`Pacific Law Group, Palo Alto, CA.
`
`
`

`
`Case: 15-1212 Document: 54-2 Page: 2 Filed: 11/25/2015
`
`
`
` 2
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`BRIAN K. ERICKSON, DLA Piper US LLP, Austin, TX,
`for amici curiae Samsung Electronics Co., LTD, Samsung
`Electronics America Inc., Samsung Telecommunications
`America LLC. Also represented by AARON FOUNTAIN,
`Houston, TX; MARK D. FOWLER, East Palo Alto, CA.
`______________________
`
`Before DYK, TARANTO, and HUGHES, Circuit Judges.
`Opinion for the court filed by Circuit Judge TARANTO.
`Opinion concurring in part and dissenting in part
`filed by Circuit Judge DYK.
`TARANTO, Circuit Judge.
`Straight Path IP Group, Inc. owns U.S. Patent No.
`6,108,704, entitled “Point-to-Point Internet Protocol,”
`which describes certain protocols for establishing commu-
`nication links through a network. On a petition for inter
`partes review filed by Sipnet EU S.R.O., the Patent Trial
`and Appeal Board cancelled claims 1–7 and 32–42 of the
`’704 patent based on determinations of anticipation and
`obviousness. Sipnet EU S.R.O. v. Straight Path IP Group,
`Inc., IPR 2013-246, 2014 WL 5144564 (PTAB Oct. 9,
`2014). We now reject a claim construction on which the
`Board relied for its decision. We reverse the Board deci-
`sion, and we remand for further proceedings under the
`correct construction.
`
`BACKGROUND
`The ’704 patent identifies a deficiency in what the
`prior art taught about real-time voice or video communi-
`cations between two processing units over a network, such
`as the Internet. According to the specification, the prior
`art disclosed successful protocols for such point-to-point
`communication between users and devices that main-
`tained permanent network addresses. ’704 patent, col. 1,
`lines 48–52. But for systems in which addressing is
`dynamic, i.e., in which devices obtain only temporary
`
`

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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`3
`
`addresses on a network, “point-to-point communications
`in realtime of voice and video have been generally difficult
`to attain.” Id., col. 1, lines 53–56. To solve the problem,
`the summary of the invention identifies a “point-to-point
`Internet protocol” that “exchanges Internet Protocol (IP)
`addresses between processing units to establish a point-
`to-point communication link,” based on the first unit’s
`querying “a connection server to determine the on-line
`status of” a second unit. Id., col. 1, lines 59–61, col. 2,
`lines 1–2. The summary also identifies a second protocol,
`which involves email signaling. Id., col. 2, lines 10–21.
`The specification provides some details of operation—
`whose significance for claim construction is disputed, as
`discussed below. A processing unit, upon joining a net-
`work such as the Internet, automatically transmits its
`temporary network address and email address to a con-
`nection server. Id., col. 5, lines 25–29. The server stores
`the addresses in a database and timestamps them, id.,
`col. 5, lines 29–31, thus “establish[ing]” the unit as “an
`active on-line party available for communication using the
`disclosed point-to-point Internet protocol,” id., col. 5, lines
`32–34; see id., col. 5, lines 35–38 (same for a second unit).
`To reduce the staleness of the status information, the
`server “may use the timestamps to update the status of
`each processing unit; for example, after 2 hours, so that
`the on-line status information stored in the database 34 is
`relatively current.” Id., col. 5, lines 39–44. Another,
`seemingly even better means of keeping the database
`information accurate about true on-line status is this:
`When a user logs off or goes off-line from the In-
`ternet 24, the connection server 26 updates the
`status of the user in the database 34; for example,
`by removing the user’s information, or by flagging
`the user as being off-line. The connection server
`26 may be instructed to update the user’s infor-
`mation in the database 34 by an off-line message,
`such as a data packet, sent automatically from the
`
`

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`Case: 15-1212 Document: 54-2 Page: 4 Filed: 11/25/2015
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` 4
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`processing unit of the user prior to being discon-
`nected from the connection server 26. According-
`ly, an off-line user is effectively disabled from
`making and/or receiving point-to-point Internet
`communications.
`Id., col. 6, lines 6–16.
`When a first unit seeks to set up a point-to-point
`communication link with a second unit, it “sends a query,
`including the E-mail address of the callee, to the connec-
`tion server 26,” which “searches the database 34 to de-
`termine whether the callee is logged-in by finding any
`stored information corresponding to the callee’s E-mail
`address indicating that the callee is active and on-line.”
`Id., col. 5, lines 55–60. “If the callee is active and on-line,
`the connection server 26 then performs the primary point-
`to-point Internet protocol; i.e., the IP address of the callee
`is retrieved from the database 34 and sent to the first
`processing unit 12.” Id., col. 5, lines 60–64. The protocol
`does not include the actual establishing of the point-to-
`point communication, but once the IP address is sent to
`the first unit, the first unit “may then directly establish”
`communication with the callee using the latter’s IP ad-
`dress. Id., col. 5, lines 64–67. And: “If the callee is not on-
`line when the connection server 26 determines the callee’s
`status, the connection server 26 sends an OFF-LINE
`signal or message to the first processing unit 12.” Id., col.
`6, lines 1–4.
`The specification then describes the “secondary point-
`to-point Internet protocol,” which involves the sending of
`messages to an email server—either as a supplement to or
`independently of the “primary” protocol using the connec-
`tion server. See, e.g., id. at col. 6, line 17, to col. 7, line 31.
`And it states that, using the described protocols, real-time
`point-to-point audio, video, and voice communication can
`“be established and supported without requiring perma-
`
`

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`Case: 15-1212 Document: 54-2 Page: 5 Filed: 11/25/2015
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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`5
`
`nent IP addresses to be assigned to either” the caller or
`callee. Id., col. 7, lines 32–36.
`Claim 1 of the ’704 patent is representative of the as-
`serted claims:
`1. A computer program product for use with a
`computer system, the computer system executing
`a first process and operatively connectable to a
`second process and a server over a computer net-
`work, the computer program product comprising:
`a computer usable medium having program
`code embodied in the medium, the program
`code comprising:
`program code for transmitting to the server a
`network protocol address received by the
`first process following connection to the
`computer network;
`program code for transmitting, to the server,
`a query as to whether the second process is
`connected to computer network;
`program code for receiving a network protocol
`address of the second process from the serv-
`er, when the second process is connected to
`the computer network; and
`program code, responsive to the network pro-
`tocol address of the second process, for es-
`tablishing a point-to-point communication
`link between the first process and the sec-
`ond process over the computer network.
`’704 patent, col. 11, lines 2–22 (emphasis added to high-
`light the key claim phrase at issue).
`In its petition for inter partes review of the ’704 pa-
`tent under 35 U.S.C. § 312, Sipnet requested cancellation
`of claims 1–7 and 32–42 as anticipated by and obvious
`
`

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` 6
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`over several prior-art references, most significantly “Net-
`BIOS” and “WINS.” The Board, under authority delegat-
`ed by the Director of the Patent and Trademark Office,
`instituted inter partes review under § 314. The Board
`then conducted the review pursuant to § 316 and reached
`a final decision cancelling the challenged claims under
`§ 318. Sipnet, supra.
`Of central importance on appeal, the Board adopted
`Sipnet’s proposed construction of the claim language
`highlighted above. Although the parties agreed that the
`language requires “being on-line,” they disagreed about
`whether, as Straight Path contended, the language refers
`to a present-tense status, J.A. 299–302, 305–10, or
`whether, as Sipnet contended, it “simply requires being
`registered with the server.” Sipnet, 2014 WL 5144564, at
`*3. The Board adopted Sipnet’s view as the broadest
`reasonable construction based on the specification: “ ‘con-
`nected to the computer network’ encompasses a pro-
`cessing unit that is ‘active and on-line at registration.’ ”
`Id. at *4. As is not disputed here, what the Board meant
`was that, to come within the query claim language, all the
`query from the first unit need do is request whatever the
`connection server has listed about a second unit’s on-line
`status, even if the listed information is not accurate at the
`time of the query, i.e., even if it lists the second unit as
`online when, at that time, it is in fact not online.
`Based on that construction, the Board concluded that
`claims 1–7, 32, and 38–42 were anticipated by NetBIOS,
`claims 1–7 and 32–42 were anticipated by WINS, and
`claims 33–37 were invalid for obviousness over NetBIOS
`and WINS. Id. at *8–15. Straight Path appeals under 35
`U.S.C. §§ 141, 319, challenging the claim construction just
`described and also presenting an argument about the
`term “process” in the claims. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`
`

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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`7
`
`DISCUSSION
`A
`There being no dispute here about findings or evi-
`dence of facts extrinsic to the patent, whether facts about
`outside-the-patent understandings of technical words or
`other facts, we conduct a de novo review of the Board’s
`determination of the broadest reasonable interpretation of
`the claim language. See In re Cuozzo Speed Technologies,
`LLC, 793 F.3d 1268, 1279–80 (Fed. Cir. 2015); Microsoft
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
`2015). Straight Path notes that the patent has now
`expired and on that basis asks us to determine the gov-
`erning construction under the principles of Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc),
`because the Board applies Phillips, rather than the
`broadest-reasonable-interpretation standard, for expired
`patents. See In re Rambus, Inc., 753 F.3d 1253, 1256
`(Fed. Cir. 2014). We need not explore the issues raised by
`that request, however, because we conclude that the
`Board adopted a claim construction that is erroneous even
`under the broadest-reasonable-interpretation standard.
`We start with the claim language—which has a mean-
`ing that can only be called plain. The present tense “is” in
`“is connected to the computer network” plainly says that
`the query transmitted to the server seeks to determine
`whether the second unit is connected at that time, i.e.,
`connected at the time that the query is sent. The ques-
`tion asked by the query is whether the device “is” con-
`nected, not whether it was connected or whether it is still
`registered as being connected even if that registration
`information is no longer accurate. It is not a reasonable
`interpretation of the claim language, considering its plain
`meaning, to say that it is satisfied by a query that asks
`only for registration information, regardless of its current
`accuracy.
`
`

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`Case: 15-1212 Document: 54-2 Page: 8 Filed: 11/25/2015
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` 8
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`The Board said nothing that either recognizes or dis-
`putes the plain present-tense meaning of the claim lan-
`guage on its face. Indeed, the Board’s construction—
`“active and on-line at registration,” Sipnet, 2014 WL
`5144564, at *4 (emphasis added)—implicitly recognizes
`that being online is a status that can change over time:
`having the status “at registration” is having it at a partic-
`ular time. The query required by the claim language asks
`if the callee “is” online, which is a question about the
`status at the time of the query. But the Board did not
`address the facially clear meaning, instead turning im-
`mediately to the specification.
`Sipnet does much the same thing. Sipnet repeatedly
`recognizes and stresses the difference between “past
`online status” and “current online status,” the latter being
`“opposed to the past status at registration.” Sipnet Br. at
`21 (emphases in original); see id. at 8–9. Yet Sipnet offers
`no argument that, as a matter of plain meaning, the claim
`language “is” calls for anything but present-status infor-
`mation. Nor does it point to anything in other claim
`language that contradicts that plain meaning. Like the
`Board, Sipnet relies entirely on the specification.
`When claim language has as plain a meaning on an
`issue as the language does here, leaving no genuine
`uncertainties on interpretive questions relevant to the
`case, it is particularly difficult to conclude that the speci-
`fication reasonably supports a different meaning. The
`specification plays a more limited role than in the com-
`mon situation where claim terms are uncertain in mean-
`ing in relevant respects. The reason is that, unless there
`is a disclaimer or redefinition, whether explicit or implicit,
`the proper construction of any claim language must,
`among other things, “stay[] true to the claim language,”
`and, in order to avoid giving invention-defining effect to
`specification language included for other descriptive and
`enablement purposes, “the court’s focus remains on un-
`derstanding how a person of ordinary skill in the art
`
`

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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`9
`
`would understand the claim terms.” Phillips, 415 F.3d at
`1316, 1323, 1324 (internal quotation marks omitted); id.
`at 1321. Reflecting the distinct but related roles of the
`claims and specification, the governing approach to claim
`construction thus maintains claim language’s key (not
`always decisive) role in claim construction: it stresses the
`importance of the specification in identifying and resolv-
`ing genuine uncertainties about claim language, and in
`stating redefinitions or disavowals, id. at 1315–17, while
`it rejects a sequenced, dictionary-driven, burden-shifting
`approach to claim construction, id. at 1320–24. Under
`our Phillips approach, the plainness of the claim language
`necessarily affects what ultimate conclusions about claim
`construction can properly be drawn based on the specifi-
`cation. For that reason, the court has repeatedly stated
`since Phillips that redefinition or disavowal is required
`where claim language is plain, lacking a range of possible
`ordinary meanings in context. See Pacing Technologies,
`LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir.
`2015) (citing authorities).
`Here, the specification does not provide a basis for
`reasonably adopting a construction that contradicts the
`plain meaning of the claim language. The Board relied on
`just one passage from the specification—which says that
`“a second user operating the second processing unit, upon
`connection to the Internet through a connection service
`provider, is processed by the connection server to be
`established in the database as an active on-line party.”
`’704 patent, col. 5, lines 34–38 (emphasis added); see id.,
`col. 5, lines 31–34 (similarly as to the first unit: registra-
`tion establishes it “as an active on-line party available for
`communication” using the disclosed protocol). But that
`passage says no more than that the unit is active and
`online—available for communication—at the time it
`registers. It does not expressly or implicitly redefine “is
`connected” to mean “is still registered, once was connect-
`ed, and may or may not still be connected,” and it does not
`
`

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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`otherwise establish that being active and online at the
`time of registration means, even if contrary to fact, being
`active and online when a caller’s query for a callee’s
`status comes in.1
`Indeed, the immediately following passage recognizes
`the temporal nature of the status of actually being online.
`The specification says that the connection server “may use
`the timestamps to update the status of each processing
`unit” over time to try to keep the “on-line status infor-
`mation stored in the database 34 relatively current.” Id.,
`col. 5, lines 39–42. Whether that passage refers to “regis-
`tration time-outs,” Sipnet Br. at 23, or to “actively
`check[ing] whether a process is still connected to the
`network,” J.A. 296 (Patent Owner’s Response), the pas-
`sage clearly presupposes that the database listing of a
`unit as an active online party can become false over time.
`Contrary to the Board’s construction, the specification
`thus distinguishes, rather than equates, being online and
`being (or having been) registered.
`The Board did not rely on any other basis for its con-
`struction, and Sipnet does not meaningfully do so in this
`court. Two additional passages from the specification are
`nevertheless worth noting. They confirm that there is no
`basis for departing from the plain meaning of the claim
`language.
`
`
`1 At oral argument, the following exchange occurred
`with Sipnet’s counsel: “THE COURT: It describes, of
`course, a connection server that makes a database. When
`somebody registers, that registration means, right then
`and there, they’re active and online. A: Correct. THE
`COURT: But then that doesn’t tell you what the answer
`is to the question asked a day later, ‘Are you active and
`online?’ That could be out of date. A: That’s right.” Oral
`Argument at 21:19–21:43 (discussing ’704 patent, col. 5).
`
`

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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
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`11
`
`The specification says that, when a first unit sends a
`query to the connection server, the latter “searches the
`database to determine whether the callee is logged-in by
`finding any stored information corresponding to the
`callee’s E-mail address indicating that the callee is active
`and on-line.” ’704 patent, col. 5, lines 57–60. That lan-
`guage merely describes checking the database for stored
`information. It does not state that whatever information
`is stored, no matter how the connection server operates,
`establishes whether the callee is active and online.
`Moreover, the specification immediately continues
`with a description of how a connection server might work
`so as to shrink if not completely eliminate any gap be-
`tween recorded status and true status: “[w]hen a user logs
`off or goes off-line from the Internet, the connection server
`26 updates the status of the user in the database; for
`example, by removing the user’s information, or by flag-
`ging the user as being off-line.” Id., col. 6, lines 6–9; see
`id., col. 6, lines 10–14 (the “server 26 may be instructed to
`update the user’s information in the database by an off-
`line message . . . sent automatically from the processing
`unit of the user prior to being disconnected from the
`connection server”). At oral argument, Sipnet’s counsel
`seemed to agree that the passage describes what must be
`“happening if the connection server answer is going to do
`what the claim language requires, supply an answer to
`the query whether the second process is connected to the
`computer network.” Oral Argument at 24:10–25:03. The
`specification’s indication of how a particular server pro-
`cess can provide accurate information undermines the
`notion that the specification generally redefines “is con-
`nected” to include active and online at registration, even if
`not at the time of the query.
`The plain meaning of the claim language is therefore
`not overridden by the specification. And the plain mean-
`ing is positively confirmed by the prosecution history,
`which we have indicated is to be consulted even in deter-
`
`

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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`mining a claim’s broadest reasonable interpretation. See
`Proxyconn, 789 F.3d at 1298. In distinguishing claims 1–
`7 and 32–42 over NetBIOS and its “active name” disclo-
`sure to overcome a rejection during reexamination, the
`assignee of the ’704 patent made the very distinction that
`is at issue here—between still being registered and actu-
`ally being online:
`“[A]n active name” is not synonymous with an “on-
`line status with respect to the computer network.”
`An active name simply refers to a name that has
`been registered and that has not yet been de-
`registered, independent of whether the associated
`computer is or is not on-line. . . . NetBIOS does
`not teach that an active name in NetBIOS is syn-
`onymous with “whether the second process is con-
`nected to the computer network.” An active name
`simply refers to a name that has been registered
`and that has not yet been de-registered, inde-
`pendent of whether the associated computer is or
`is not connected to the computer network.
`Reply to Office Action of August 27, 2009, reexamination
`of ’704 patent, control no. 90/010,416 (dated Nov. 27,
`2009) at 11, 14–15. After the assignee made that distinc-
`tion, the examiner withdrew the rejection and confirmed
`the claims.
` One final point about this claim-construction issue:
`Sipnet suggests in various ways that the specification
`does not adequately describe or enable the systems or
`processes involving a query about current connection
`status under Straight Path’s claim construction. But
`written-description and enablement challenges were not,
`and could not have been, part of the inter partes review
`that is now before us. See 35 U.S.C. § 311(b) (limiting
`challenges to prior-art challenges). Such challenges
`involve bottom-line or subsidiary factual issues that have
`not been litigated or adjudicated. Accordingly, Sipnet’s
`
`

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`STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`13
`
`arguments about insufficient specification support for the
`claims if they are given their plain meaning, arguments
`not adopted by the Board, do not alter our conclusion
`about claim construction. We offer no view on the merits
`of Sipnet’s suggestion of written-description or enable-
`ment problems.
`For the foregoing reasons, “is connected to the com-
`puter network” in the ’704 patent’s claims—and the
`counterpart claim phrases that the parties agree bear the
`same meaning—can only reasonably be understood to
`mean “is connected to the computer network at the time
`that the query is transmitted to the server.” The Board
`did not apply this claim construction in considering the
`prior art, including NetBIOS and WINS. It should do so
`on remand.
`
`B
`Straight Path’s second challenge to the Board’s deci-
`sion rests on the contention that the Board failed to
`construe “process.” We hold that Straight Path did not
`preserve that contention. It did not request a construc-
`tion of “process” in its preliminary response to Sipnet’s
`petition to institute inter partes review, in its response
`after the Board instituted the review, or at the oral hear-
`ing before the Board. In particular, Straight Path never
`argued for a construction of “process” under which a
`process being connected meant something other than its
`host device being connected. Nor did Sipnet. The Board
`thus committed no error in not construing “process.”
`Because Straight Path’s “process”-based challenge de-
`pends entirely on its newly proposed construction, which
`it failed to preserve before the Board, this court does not
`address the challenge.
`
`

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`
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` 14
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`CONCLUSION
`We reverse the Board’s cancellation of claims 1–7 and
`32–42 of the ’704 patent, and we remand for further
`proceedings consistent with this opinion.
`REVERSED AND REMANDED
`
`

`
`Case: 15-1212 Document: 54-2 Page: 15 Filed: 11/25/2015
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`STRAIGHT PATH IP GROUP, INC.,
`Appellant
`
`v.
`
`SIPNET EU S.R.O.,
`Appellee
`______________________
`
`2015-1212
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00246.
`
`______________________
`
`DYK, Circuit Judge, concurring-in-part, dissenting-in-
`part.
`I respectfully dissent from the majority’s claim con-
`struction of the term “is connected to the computer net-
`work” to require absolute currency
`in a real-time
`assessment of connectivity. The majority’s insistence that
`“is” requires absolute currency fails to take account of a
`common usage of the term “is” and our prior decision in
`Paragon Solutions, LLC v. Timex Corp., holding that a
`reference to “real-time” does not necessarily require
`absolute currency. 566 F.3d 1075, 1088 (Fed. Cir. 2009).
`More importantly, the majority fails to give sufficient
`
`

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`
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` 2
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` STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
`
`weight to the specification which Phillips v. AWH Corp.
`holds “is always highly relevant to the claim construction
`analysis” and is “the single best guide to the meaning of a
`disputed term.” 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
`banc) (internal quotations and citations omitted) (empha-
`sis added).1
`
`I
`The patent here claims a system, an apparatus, and
`associated methods to facilitate real time communication
`between two users over the internet. When a user logs
`onto the internet, he is assigned a dynamic IP address
`(akin to a phone number for a computer). Because this IP
`address may be different every time the user logs on,
`direct communication is nearly impossible, just as making
`a phone call to someone would be if phone numbers
`changed on every call. The present invention purportedly
`solves this problem by maintaining a database of IP
`addresses in a