UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`SAMSUNG ELECTRONIC CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. &
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC.
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2014-01367
`Patent 6,009,469
`
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`III.
`
`B.
`C.
`
`B.
`
`Introduction & Summary Of Arguments.........................................................1
`Background And Overview Of The ‘469 Patent.............................................5
`A.
`The Problems And Solutions Identified By The ‘469 Patent ...............5
`1.
`How To Determine (1) Whether A Network Application
`Is Available On-line; and (2) If So, That Application’s
`Address on the Network..............................................................5
`Interface Elements For Facilitating The Creation Of
`Point-To-Point Communications Between Processes ................9
`The Challenged ‘469 Patent Claims....................................................10
`The ‘469 Patent’s Prosecution History ...............................................12
`1.
`The Original Prosecution ..........................................................12
`2.
`The Ex Parte Reexaminations...................................................13
`The ‘479 Patent’s Relevant Litigation History ...................................14
`D.
`Samsung’s References Do Not Disclose The “Interface Element
`Representing A First Callee Process” Limitations Found In
`Challenged Claims 11, 12, 14, 16, 22, 23, 27, 30, and 31.............................15
`A.
`The Microsoft Manual & NetBIOS Do Not Disclose The
`“Interface Element Representing A First Callee Process”
`Limitations (Ground 1)........................................................................16
`The Palmer And Pinard Combinations Cannot Remedy The
`Microsoft Manual & NetBIOS’s Failure To Disclose The
`“Interface Element Representing A First Callee Process”
`Element................................................................................................19
`1.
`Grounds 2-4 Are Redundant Of Ground 1................................20
`2.
`Samsung Fails To Provide The Necessary Support For
`The Proposed Palmer and Pinard Combinations ......................22
`a.
`Samsung identifies no basis for combining Palmer with the
`Microsoft Manual and NetBIOS References (Grounds 2-4)23
`Samsung identifies no basis for combining Pinard, with the
`Microsoft Manual, NetBIOS, & Palmer References
`(Grounds 3-4) ....................................................................25
`
`2.
`
`b.
`
`i
`
`

`
`IV.
`
`V.
`
`B.
`
`C.
`
`B.
`
`Samsung’s References Do Not Disclose The “Connected To The
`Network”/”On-Line”/”Accessible” Elements Found In Challenged
`Claims 3, 6, 9, 14, 17, 18...............................................................................30
`A.
`The Correct Claim Construction Analysis of “On-line” and
`“Connected To The Computer Network” ...........................................31
`1.
`The Correct Claim Construction Standard................................31
`2.
`Samsung Has Not Overcome The Heavy Presumption
`That “On-Line” and “Connected To The Computer
`Network” Should Be Given Their Ordinary Meaning..............34
`a.
`Samsung’s Proposed Construction Is Not The Ordinary
`Meaning Of Connected To the Computer Network”/”On-
`Line”..................................................................................34
`b. The ‘469 Specification Confirms That The Ordinary
`Meaning Should Apply Here ............................................35
`The Prosecution History Confirms That The Ordinary
`Meaning Should Apply Here ............................................39
`The Microsoft Manual & NetBIOS Do Not Disclose The
`“Connected to The Network”/”On-Line” Elements Found In
`Every Challenged ‘469 Patent Claim..................................................40
`The Pitkin Combination Cannot Remedy The Microsoft Manual
`and NetBIOS’s Failure To Disclose The “On-line” And
`“Connected To The Computer Network” Elements ...........................43
`1.
`Samsung identifies no basis for combining Pitkin with
`the Microsoft Manual, NetBIOS, Palmer, and Pinard
`References.................................................................................44
`Pitkin Does Not Teach The Missing “On-line” And
`“Connected To The Computer Network” Elements .................45
`Samsung’s References Do Not Disclose The “Process” and “Callee
`Process” Elements .........................................................................................47
`A.
`Samsung Has Not Overcome The Heavy Presumption That
`“Process” Should Be Given Its Ordinary Meaning.............................48
`1.
`Samsung’s Implicit Construction of “Process” Is
`Inconsistent With Its Ordinary Meaning And The Claims.......49
`The Applicants Did Not Redefine “Process” In The ‘469
`Patent’s Specification or Prosecution History ..........................51
`The Microsoft Manual & NetBIOS Do Not Disclose The
`“Process” Elements Found In All Challenged Claims........................53
`
`c.
`
`2.
`
`2.
`
`ii
`
`

`
`1.
`
`2.
`
`Samsung Fails To Identify Where The Claimed
`“Process” Allegedly Is In the References.................................53
`Samsung Cannot Identify The “Process” Elements
`Because The Microsoft Manual and NetBIOS References
`Concern Registering A Computer, Not A “Process”................54
`The Microsoft Manual & NetBIOS Do Not Disclose The
`“Callee Process” Elements Found In Challenged Claims 9, 10,
`14, 17, and 18 ......................................................................................57
`
`C.
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Ariosa Diagnostics v. Verinata Health, Inc., et al.,
`IPR2013-00276, Paper 43 (PTAB Oct. 23, 2014)..............................................23
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ..........................................................................32
`
`Callcopy v. Verint Americas, et al.,
`IPR2013-00486, Paper 11 (PTAB Feb. 5, 2014)................................................22
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..........................................................................33
`
`Heart Failure Technologies, LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (PTAB Jul. 31, 2013)...................................21, 27, 28
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper 26 (PTAB Jun. 11, 2013) ..............................................20
`
`In re Chaganti,
`554 Fed. Appx. 917 (Fed. Cir. 2014)............................................................23, 25
`
`In re Karn,
`441 F.3d 997 (Fed. Cir. 2006) ......................................................................23, 25
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ............................................................................36
`
`In re Rambus,
`694 F.3d 42 (Fed. Cir. 2012) ..............................................................................31
`
`Innolux Corp. v. Semiconductor Energy Lab.,
`IPR2013-00064, Paper 11 (PTAB Apr. 30, 2013) .............................................31
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..........................................................................33
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)......................................................................................22, 23
`
`iv
`
`

`
`Laryngeal Mask Co. Ltd. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) ..........................................................................32
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 (Oct. 25, 2012) ........................................................20
`
`Linear Tech Corp. v. Int’l Trade Comm’n,
`566 F.3d 1049 (Fed. Cir. 2009) ..........................................................................32
`
`Microsoft Corp. v. Secure Web Conference Corp.,
`IPR2014-00745, Paper 12 (PTAB Sep. 29, 2014)............................27, 28, 29, 30
`
`NeuLion, Inc. v. Filippo Costanza, et al.,
`IPR-2014-00526, Paper 23 (PTAB Sep. 3, 2014) ........................................25, 26
`
`Primos, Inc. v. Hunter’s Specialties, Inc.,
`451 F.3d 841 (Fed. Cir. 2006) ............................................................................38
`
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180, Paper 18 (PTAB Aug. 26, 2013).............................................20
`
`Straight Path IP Group, Inc. v. Bandwidth.com, Inc.,
`2014 U.S. Dist. LEXIS 25394 (E.D. Va. Feb. 25, 2014) (Ex. 2002) ...........15, 49
`
`Symantec Corp. v. RPost Communications Ltd.,
`IPR2014-00355, Paper 12 (PTAB Jul. 15, 2014)...............................................22
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ..........................................................................32
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ....................................................................32, 33
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00127, Paper 32 (PTAB Jun. 30, 2014) ........................................16, 31
`
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................39
`
`Wonderland Nurserygoods Co. v. Thorley Indus., LLC,
`2014 U.S. Dist. LEXIS 148788 (W.D. Pa. Oct. 20, 2014)...................................3
`
`v
`
`

`
`Wowza Media Systems LLC, et al. v. Adobe Systems, Inc.,
`IPR2013-00054, Paper 12 (PTAB Apr. 8, 2013) ........................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.104(b)(4)....................................................................................53, 54
`
`vi
`
`

`
`TABLE OF EXHIBITS
`
`Exhibit
`2001
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`
`Description
`Copy of Wonderland Nurserygoods Co. v. Thorley Indus., LLC,
`2014 U.S. Dist. LEXIS 148788 (W.D. Pa. Oct. 20, 2014)
`Copy of Straight Path IP Group, Inc. v. Bandwidth.com, Inc.,
`2014 U.S. Dist. LEXIS 25394 (E.D. Va. Feb. 25, 2014)
`Joint Claim Construction And Prehearing Statement
`October 26, 2012 Opinion and Order
`Excerpt from Webster’s Third New International Dictionary
`Excerpt from Dictionary of Computer Words (Rev. ed. 1994)
`Excerpt from Que’s Computer & Internet Dictionary (6th ed. 1995)
`Excerpt from Microsoft Computer Dictionary (4th ed. 1999)
`
`vii
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`I.
`
`Introduction & Summary Of Arguments
`
`The Patent Trial and Appeal Board should deny Samsung’s petition
`
`requesting inter partes review of Straight Path IP Group’s U.S. Patent No.
`
`6,009,469 because each of Samsung’s “Grounds For Unpatentability” fails to
`
`establish the required reasonable likelihood that Samsung would prove that the
`
`challenged claims 1-3, 5-6, 9-10, 14, 17, or 18 are unpatentable.
`
`Ground
`
`References
`
`Basis
`
`Challenged Claims
`
`1
`
`2
`
`Microsoft Manual &
`NetBIOS
`
`Microsoft Manual, NetBIOS,
`& Palmer
`
`§ 103(a) 1
`
`1-3, 5-6, 9
`
`§ 103(a)
`
`9, 10, 14, 17, 18
`
`
`1 Samsung’s “Identification of Challenges” (Pet. 4-5) does not match its actual
`
`Invalidity Grounds. For example, Samsung initially describes a basis for its
`
`Ground 1 as anticipation by the Microsoft Manual, but it later concedes that it is
`
`relying solely on obviousness and presents no arguments concerning anticipation.
`
`(See Pet. 4; 34, n4; 34-43). Similarly, the challenged claims identified in the
`
`“Identification of Challenges” are not the ones actually analyzed and addressed in
`
`Samsung’s Grounds and Petition. This Preliminary Response correctly identifies
`
`Samsung’s invalidity theories and challenged claims actually addressed in
`
`Samsung’s Grounds and Petition.
`
`1
`
`

`
`Ground
`
`References
`
`3
`
`4
`
`Microsoft Manual, NetBIOS,
`Palmer, & Pinard
`
`Microsoft Manual, NetBIOS,
`Palmer, Pinard, & Pitkin2
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`The reasons for denying the Petition include:
`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`Challenged Claims
`
`1, 9, 14
`
`3, 6, 9
`
`
`
`Samsung’s references do not disclose the “interface element
`
`representing a first callee process”: Challenged claims 9, 10, 14, 17, and 18 all
`
`require “an interface element representing a first callee process.” Although
`
`Samsung argues this limitation is taught by the Microsoft Manual and NetBIOS
`
`(Ground 1), the empty “dialog box” relied on by Samsung does not represent a first
`
`callee process, and Samsung provides no analysis or evidence to support its
`
`argument. Samsung also fails to identify any evidence supporting its conclusory
`
`assertion that it would be obvious to combine the Microsoft Manual and NetBIOS
`
`with Palmer (Ground 2) and Palmer and Pitkin (Grounds 3 and 4). In addition,
`
`Samsung’s Grounds 2-4 are improperly redundant with its Ground 1 on this issue.
`
`For each and all of these reasons, the Petition should be denied in its entirety for
`
`these challenged claims.
`
`
`2 Straight Path does not concede that the references relied on by Samsung are in
`
`fact prior art, and reserves the right to raise such issues in any initiated IPR.
`
`2
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`
`
`Samsung’s Petition applies and hinges upon the wrong claim
`
`construction standard: Samsung incorrectly argues the claim terms will be given
`
`“their broadest reasonable interpretation” in the requested IPR. (Pet. 20). But an
`
`expired patent is construed under the district court construction standard, not the
`
`broadest reasonable interpretation standard. Because the ‘469 patent will expire in
`
`September 2015, well before the Board would issue a final written decision were
`
`Samsung’s Petition granted, the question here is whether Samsung has established
`
`a reasonable likelihood of prevailing under the district court claim construction
`
`standard. Samsung’s limited “analysis” under the inapplicable broadest reasonable
`
`interpretation standard provides no basis for instituting the requested IPR: as one
`
`district court has noted, “constructions [under the broadest reasonable
`
`interpretation standard] may differ from or, indeed, be diametrically opposed to
`
`those of district courts.” 3 Samsung acknowledges that the “broadest reasonable
`
`interpretation standard” may result in constructions “different from the proper
`
`constructions in court,” but it nonetheless fails to apply or meet that correct
`
`district court standard in its Petition. (Pet. 21).
`
`
`3 Wonderland Nurserygoods Co. v. Thorley Indus., LLC, 2014 U.S. Dist. LEXIS
`
`148788 at *8 (W.D. Pa. Oct. 20, 2014) (citing In re Am. Acad. of Sci. Tech Ctr.,
`
`367 F.3d 1359, 1364 (Fed. Cir. 2004) (Ex. 2001).
`
`3
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`
`
`Samsung’s references do not teach a determination of “on-line”
`
`status: Challenged claims 3, 6, 9, 14, 17, and 18 require a query and or
`
`determination of whether a process is “connected to the computer network” or
`
`some variation thereon, such as “on-line” or “accessible.” But no asserted
`
`reference actually teach such a determination or query, so Samsung argues that the
`
`element should be rewritten to mean a process that simply was previously
`
`“registered with a server,” regardless of whether that process is in fact on-line,
`
`accessible, or connected to the network as the claim language explicitly requires.
`
`This construction would defeat a purpose of the claimed subject matter, which is
`
`to provide point-to-point communications between active processes in real time –
`
`whether a process is “registered” is of no importance if the target process is
`
`registered but offline. Samsung has not met its burden of overcoming the “heavy
`
`presumption” that claim language should be given its ordinary meaning, and it has
`
`not identified any reference that teaches the claimed determination of a process’s
`
`on-line status under the ordinary meaning of that element.
`
`
`
`Samsung’s references concern computers, not the claimed
`
`processes running on those computers: Each challenged claim explicitly
`
`distinguishes between the claimed “process” (which Samsung previously agreed
`
`means “a running instance of a computer program or application”) and a
`
`“computer” executing that process/application. Samsung ignores this distinction
`
`4
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`and attempts to satisfy the “process” limitations by reference to computers rather
`
`than to the required processes/applications. Samsung argues that its references
`
`disclose a system that can determine the on-line status of a computer. Even if true
`
`– which it is not – the Petition should be denied because the claims require a
`
`determination of the on-line status of a “process,” not of a computer. Put another
`
`way, a determination of whether a computer is on-line is not a determination of
`
`whether a particular application on that computer is running and on-line. A
`
`computer may be on-line while an application on that computer remains closed and
`
`offline, and Samsung’s references therefore do not disclose the subject matter of
`
`the challenged claims.
`
`II.
`
`Background And Overview Of The ‘469 Patent
`
`A.
`
`The Problems And Solutions Identified By The ‘469 Patent
`
`1.
`
`How To Determine (1) Whether A Network Application Is
`Available On-line; and (2) If So, That Application’s Address
`on the Network
`
`The ‘469 patent addresses the following problem: “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.” (‘469 patent, previously submitted as Ex. 1001, at 2:35-38).
`
`The patent describes the increased popularity in the early 1990s of on-line
`
`applications, such as “applications to provide multimedia, including video and
`
`5
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`voice clips, to on-line users.” (‘469 patent at 1:60-64). According to the patent, the
`
`prior art could successfully create point-to-point communications between such
`
`applications (to allow video teleconferencing, for example) using permanent
`
`Internet Protocol (“IP”) addresses to identify the applications’ respective locations
`
`on the Internet. (See ’469 patent at 2:30-35). As the patent describes, however,
`
`some users do not have a permanent and stable address on the Internet. Instead,
`
`such users may receive a new and temporary IP address each time they connect to
`
`the Internet. (See ‘469 patent at 2:17-29; 6:56-7:3; 7:49-59). These “dynamic” IP
`
`addresses create a difficulty in establishing point-to-point communications
`
`between voice and video applications. (‘469 patent at 2:35-37).
`
`The ‘469 patent solves this problem by describing and claiming apparatus
`
`and methods for, among other things: (1) determining whether a computer
`
`application is running and connected to a network; (2) determining that
`
`application’s address on the network; and (3) establishing a point-to-point
`
`communication with that application. (See, e.g., ‘469 patent at 3:15-27; 6:56-7:59;
`
`11:64-12:47; 20:45-54; 24:11-14).
`
`The ‘469 specification describes an embodiment of the inventive point-to-
`
`point protocol that can be implemented for and by a computer program or
`
`application, i.e., a “process”: “The first processing unit [] may operate the
`
`disclosed point-to-point Internet protocol by a computer program described herein
`
`6
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`below in conjunction with FIG. 6 . . . and which may be downloaded to the first
`
`processing unit 12 from an external computer.” (‘469 patent at 5:18-32; see also
`
`4:28-58; 6:1-7; 6:67-7:59; 11:64-12:28). That this application is downloaded to the
`
`computer confirms that it is distinct from the computer on which it is running: the
`
`only way this downloading could happen is if the computer and its operating
`
`system were already connected to a network. It is the application, not the computer
`
`or its operating system, that is the subject of claims in the ‘469 patent.
`
`When a user initiates the computer application on, for example, her Personal
`
`Digital Assistant (“PDA”), the user’s then-current dynamic IP address is
`
`transmitted to a connection server. (‘469 patent at 4:59-62; 5:18-32; 11:64-12:5).
`
`From this initial transmission, the connection server obtains and stores the current
`
`dynamic IP address in a database. (‘469 patent at 4:59-62; 7:3-5; 12:13-18).
`
`This transmission also establishes the user’s application as an “active on-line
`
`party” in the connection server database. (See ‘469 patent at 7:5-13). In one
`
`example, when the application disconnects from the Internet, it sends the
`
`connection server an “off-line message” before disconnecting. (See ‘469 patent at
`
`7:49-59). The message causes the connection server to update its database to
`
`reflect that the user and application are not on-line, and are unavailable for a point-
`
`to-point communication from another PDA user. (See ‘469 patent at 7:44-59). In
`
`another embodiment, the application polls the server to determine whether it is on-
`
`7
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`line. (See, e.g., ‘469 patent at 8:51-56).
`
`In practice, a first user (the caller) initiates a computer application on her
`
`PDA when logged on to the Internet, thereby causing the application to perform
`
`the disclosed point-to-point Internet protocol and send the user’s current dynamic
`
`IP address to the connection server. The connection server stores that IP address
`
`and establishes the first application as active and on-line. (See ‘469 patent at 5:34-
`
`35; 5:18-21; 6:1-7; 6:67-7:13; 11:64-12:5). A second user (the callee) may have
`
`also similarly initiated a computer program on his PDA, thereby storing his current
`
`IP address in the connection server database and establishing his application as
`
`active and an on-line. (See ‘469 patent at 7:9-13; 11:64-12:5).
`
`The first user can then attempt to initiate a point-to-point connection
`
`between the computer application on her PDA and another application by sending
`
`a request to the location server. (See ‘469 patent at 5:18-21; 7:20-32; 11:64-12:1;
`
`12:18-24). In response to the first user’s request, the location server will search its
`
`database to determine if the second application is on-line. (See ‘469 patent at 7:32-
`
`36; 12:18-28). If so, the location server will then forward the second application’s
`
`IP address to the application running on the first user’s PDA, which uses that IP
`
`address to establish the point-to-point communication between itself and the
`
`second application. (See ‘469 patent at 5:18-21; 7:36-43; 12:1-9; 12:23-28). On the
`
`other hand, if the second application is not on-line when the connection server
`
`8
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`checks its database, the connection server sends an “off-line” signal or message to
`
`the first user’s computer application. (See ‘469 patent at 7:44-59; 12:4-12). Even
`
`when it is offline, this application’s information is stored in the connection server.
`
`That is, the application remains in the database (it remains “registered” according
`
`to Samsung) but is flagged as offline. (See ‘469 patent at 7:44-59). “Online” cannot
`
`therefore be synonymous with “registered,” as registered applications can have
`
`“offline” status flags.
`
`2.
`
`Interface Elements For Facilitating The Creation Of Point-
`To-Point Communications Between Processes
`
`The ‘469 patent also describes the use of a display screen and various
`
`interface elements to help a user to implement point-to-point communications. For
`
`example, Figures 5 and 6 depict exemplary display screens that include icons
`
`“configured to substantially simulate a telephone handset or a cellular telephone
`
`interface to facilitate ease of use, as well as to simulate function keys of a
`
`keyboard.” (‘469 patent at 10:34-54, FIGS. 5 and 6).
`
`9
`
`

`
`Case IPR2014-01367
`Patent No. 6,009,469
`
`The specification describes providing interface elements representing a
`
`communication “line” and a callee process. For example, a communication line
`
`could be represented by an icon such as the L1-L4 icons depicted in Figure 6. (See
`
`‘469 patent at 10:63-11:1). Similarly, a particular callee process could be
`
`represented by, for example, one of a list of names or aliases presented as “an entry
`
`in a directory . . . where the directory entries may be scrolled using the status area
`
`38 and the down arrow icon 40 [show in Figure 6].” (‘469 patent at 12:19-26). A
`
`user may implement point-to-point communication by using these interface
`
`elements to associate a callee process with a communication line. (See ‘469 patent
`
`at 10:44-54). For example, a user can initiate a communication to, or a conference
`
`call with, a callee process by “double clicking” the callee process’ name in the
`
`directory or “dragging” a called party’s line to another line. (See ‘469 patent at
`
`11:11-35).
`
`B.
`
`The Challenged ‘469 Patent Claims
`
`Samsung challenges the validity of independent claim 1 (and its dependent
`
`claims 2 and 3), independent claim 5 (and its dependent claim 6), independent
`
`claim 9 (and its dependent claims 14, 17, and 18), and claim 10 (which depends
`
`from claim 8).
`
`Each challenged claim concerns a method or computer application for
`
`establishing a point-to-point communication between a first (or caller) “process”
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`and another “process” (or callee). For example, claim 1 describes a “computer
`
`program product for use with a computer system having a display, the computer
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`system capable of executing a first process and connecting to other processes,”
`
`where the computer program products includes, among other things, program code
`
`“for establishing point to point communications with another process over the
`
`computer network.”
`
`In addition, all of the challenged claims except for claims 1, 2, and 5 further
`
`require a query and/or determination of whether a process is “connected to the
`
`network,” “on-line,” or “accessible.” For example, in the method of claims 6, a
`
`first process only receives a second process’s address if that second process is
`
`connected to the computer network, and claim 6 includes the steps:
`
`D.1 transmitting, from the first process to the server process, a query
`as to whether a second process is connected to the computer network;
`and
`D.2 receiving a network protocol network address of the second
`process from the server process, when the second process is connected
`to the network.
`(‘469 patent at claim 6, see also claims 3, 9, 10, 14, 17, 18).
`
`Challenged claims 9, 10, 14, 17, and 18 also require user interface elements
`
`that allow a user to initiate a point-to-point communication link between processes.
`
`For example:
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` “a user interface element representing a first communication line;”
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` “a user interface element representing a first callee process;” and
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` “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.”
`
`(See ‘469 patent at claim 9).
`
`C.
`
`The ‘469 Patent’s Prosecution History
`
`The ‘469 patent issued from a continuation-in-part application claiming
`
`priority to the application that issued U.S. No. 6,108,704 patent, which was filed
`
`on September 25, 1995. The ‘704 patent and another related patent, U.S. Patent
`
`No. 6,131,121, are also the subject of pending Samsung IPR Petitions. (See
`
`IPR2014-01366; IPR2014-01368). The ‘704 patent has been the subject of
`
`numerous other petitions for inter partes review, including the IPR filed by Sipnet
`
`EU S.R.O. (IPR21013-00246).
`
`1.
`
`The Original Prosecution
`
`Samsung’s Petition ignores the original prosecution of the ‘469 patent
`
`application, in which the applicants made explicit their intent to claim systems and
`
`methods directed towards processes rather than computers, not
`
`computers/processors. Applicants’ original claims were directed towards programs
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`for establishing a “point-to-point communication link with another computer” and
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`“establishing a point-to-point communication link between the first processor and
`
`the second processor.” (See, e.g., Ex. 1002 at 107, original claims 1, 2). But the
`
`applicants subsequently amended these claims so they were directed to “processes”
`
`instead of computer/processors. (Ex. 1002 at 368-69, October 26, 1998
`
`Amendments & Response at 2-3). These amendments were consistent with the
`
`parent application, in which the applicants explained that in their system, “[o]ther
`
`processes wishing to contact a desired target process simply query the address
`
`directory server to determine whether the target process is on-line and the
`
`current network protocol address at which the target process is located.” (Ex.
`
`1024 at 412, File History – U.S. Patent No. 6,108,704, March 4, 1999 Amendment
`
`& Response, at 14).
`
`The Ex Parte Reexaminations
`2.
`On February 23, 2009, ex parte reexamination requests were filed for the
`
`‘469, ‘704, and ‘121 patents. The PTO granted those requests and reexamined the
`
`patents in light of a number of references, including the NetBIOS and Pinard
`
`references Samsung relies on in its Petition.
`
`During the reexaminations, applicants and the PTO addressed the claim
`
`elements concerning the on-line status of a process. In each reexamination,
`
`applicants submitted an expert declaration from Ketan Mayer-Patel explaining that
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`the name registration system disclosed in the NetBIOS reference (the same
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`reference now relied on by Samsung) does not teach the on-line status element of
`
`the patent claims:
`
`While NetBIOS uses name entries with ‘active’ statuses as part of its
`name management process, an analysis of how that ‘active’ status is
`used shows that ‘an active name’ is not synonymous with
`determining if the first callee process is accessible. An active name
`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 accessible.
`
`(Ex. 1003, Part 1 at 90, File History for Reexam Control No. 90/010422, Mayer-
`
`Patel Declaration, ¶31) (emphasis added).
`
`The PTO agreed and affirmed the patentability of claims now at issue in
`
`Samsung’s Petition. In doing so, the PTO explained that the “NetBIOS name
`
`registration system does not mean that a ‘first callee process is accessible’ as name
`
`registration is often permanent and the correspondence between name and IP
`
`address would not always be indicative of accessibility.” (Ex. 1003, Part 1 at 130,
`
`File History for Reexam Control No. 90/010422, Jul. 20, 2010 Ex Parte
`
`Reexamination Advisory Action at 2).
`
`D.
`
`The ‘479 Patent’s Relevant Litigation History
`
`Straight Path has accused Samsung of infringing the claims of the ‘469
`
`patent in an action pending in the United States District Court for the Eastern
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`District of Texas (Civil Action No. 6:13-cv-604). On September 12, 2014, the
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`parties submitted to the District Court a “Joint Claim Construction And Prehearing
`
`Statement,” in which Samsung agreed that the correct construction of the claim
`
`term “process” is a “running instance of a computer program or application.” (Ex.
`
`2003 at 10, Joint Claim Construction And Prehearing Statement, Exhibit A). This
`
`is the same construction that Straight Path proposes here, and it is directly at odds
`
`with the construction of “process” on which Samsung now bases all of its Grounds
`
`for invalidity.
`
`The correct construction of “process” was addressed in several other prior
`
`lawsuits. In Straight Path IP Group, Inc. v. Bandwidth.com, Inc., 2014 U.S. Dist.
`
`LEXIS 25394, at *13 (E.D. Va. Feb. 25, 2014) (Ex. 2002), the district court
`
`construed “process” in the related U.S. Patent No. 6,513,066, a continuation of the
`
`’704 patent application, as a “running instance of a computer program or
`
`application.” In ICT v. Vivox (2:12-cv-00007) and ICT v. Stalker Software, at 3
`
`(2:12-cv-00009), the parties agreed that “the claim term ‘process,’ found
`
`throughout the patents-in-suit, means ‘a running instance of a computer program or
`
`application.’” (Ex. 2004 at 3, October 26, 2012 Opinion And Order).
`
`III.
`
`Samsung’s References Do Not Disclose The “Interface Element
`Representing A First Callee Process” Limitations