UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., AVAYA INC.,
`VERIZON SERVICES CORP., and VERIZON BUSINESS NETWORK
`SERVICES INC.,
`Petitioner,
`v.
`
`
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
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`
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`PETITIONER’S SUPPLEMENTAL BRIEF IN SUPPORT OF PETITION
`
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
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`1018419
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`1 IPR2015-01397 and IPR2015-01407 have been joined with this proceeding.
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`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., AVAYA INC.,
`VERIZON SERVICES CORP., and VERIZON BUSINESS NETWORK
`SERVICES INC.,
`Petitioner,
`v.
`
`
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`____________
`
`Case IPR2015-001981
`Patent No. 6,009,469 C1
`____________
`
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF IN SUPPORT OF PETITION
`
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`
`
`
`
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`1018419
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`1 IPR2015-01397 and IPR2015-01407 have been joined with this proceeding.
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`
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`Pursuant to the Board’s Order (Paper No. 43), Petitioner respectfully
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`Case No. IPR2015-00198
`Patent No. 6,009,469 C1
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`submits this brief to explain the impact of the Federal Circuit’s decision in Straight
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`Path IP Group, Inc. v. Sipnet EU S.R.O. on this proceeding. In its decision, the
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`Federal Circuit construed a single term in U.S. Patent No. 6,108,704. The prior art
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`references of record render the instituted claims obvious under that construction.
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`Indeed, the prior art ensures that a queried process “is connected to the computer
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`network at the time that the query is transmitted to the server” in precisely the
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`same way as and using the same methods disclosed in the patent. Because the
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`instituted claims of the ’469 patent recite elements found entirely within the prior
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`art, the instituted claims are obvious, and therefore unpatentable.
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`I.
`“The ultimate test of patent validity is one of law, but resolution of the
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`LEGAL STANDARD
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`obviousness issue necessarily entails several basic factual inquiries.” Sakraida v.
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`Ag Pro, Inc., 425 U.S. 273, 280 (1976). The Board’s factual determinations in
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`support of obviousness are reviewed for substantial evidence. Randall Mfg. v. Rea,
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`733 F.3d 1355, 1362 (Fed. Cir. 2013).
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`II.
`FEDERAL CIRCUIT CONSTRUCTION
`In its decision in the Sipnet appeal, the Federal Circuit concluded that “is
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`connected to the computer network” means “is connected to the computer network
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`at the time that the query is transmitted to the server.” Slip Op. at 13. In
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`construing the term, the Federal Circuit relied upon four particular features
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`Patent No. 6,009,469 C1
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`disclosed in the specification. First, the Federal Circuit analyzed the disclosure of
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`registration.
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`Second, the Federal Circuit relied on the ’704 patent’s disclosure of
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`timestamps. The Federal Circuit noted that the connection server “‘may use []
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`timestamps to update the status of each processing unit’ over time to try to keep the
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`‘on-line status information stored in the database [] relatively current.” Id. at 10
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`(citing the ’704 patent at 5:39-42).
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`Third, the Federal Circuit relied on the specification’s disclosure of
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`searching the database at the time of the query. The Court explained that “when a
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`first unit sends a query to the connection server, the latter ‘searches the database to
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`determine whether the callee is logged-in by finding any stored information
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`corresponding to the callee’s E-mail address indicating that the callee is active and
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`on-line.” Id. at 11 (citing the ’704 patent at 5:57–60).
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`Fourth, the Federal Circuit cited to the disclosure of deregistration when a
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`user logs off or goes off-line. The Court noted that “[w]hen a user logs off or goes
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`off-line from the Internet, the connection server updates the status of the user in the
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`database; for example, by removing the user’s information, or by flagging the user
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`as being off-line.” Id. (citing the ’704 patent 6:6–9). The Federal Circuit also
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`cited the patent’s disclosure that the “server [] may be instructed to update the
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`Patent No. 6,009,469 C1
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`user’s information in the database by an offline message . . . sent automatically
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`from the processing unit of the user prior to being disconnected from the
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`connection server.’ Id. (citing the ’704 patent at 6:10–14).
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`The term the Federal Circuit construed—“is connected to the computer
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`network”—is absent from a number of the claims over which the Board instituted
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`review in this proceeding. In particular, Claims 1, 2, and 5 of the ’469 patent do
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`not contain the construed limitation or any equivalent.
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`III. PRIOR ART
`The combination of WINS and NetBIOS render the instituted claims of the
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`’469 patent obvious under the Federal Circuit’s construction. Reply 21; Ex. 1041
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`¶¶ 34-44. Indeed, each of the features to which the Court referred in formulating
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`its construction are disclosed in the prior art. First, in WINS and NetBIOS, a “unit
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`is active and online—available for communication—at the time it registers.” Slip
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`Op. at 9. WINS “provides a distributed database for registering and querying
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`dynamic computer name-to-IP address mappings in a routed network
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`environment.” (Ex. 1003 at 69; see also Pet. 15-22; Ex. 1002 ¶¶ 55-59.) NetBIOS
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`discloses that “[a]n application . . . registers one or more names that it wishes to
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`use.” (Ex. 1004 at 378; see also Reply 8-9; Ex. 1041 ¶¶ 30-33.)
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`Second, the WINS Server and NetBIOS Name Server (“NBNS”) use
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`Patent No. 6,009,469 C1
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`“‘timestamps to update the status of each processing unit’ over time to try to keep
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`the ‘on-line status information stored in the database [] relatively current.’” Slip
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`Op. at 10. “The name registration request is sent directly to the WINS server to be
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`added to the database.. . . WINS accepts the entry and adds it to its local database
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`together with a timestamp . . . .” (Ex. 1003 at 74; see also Pet. 18-22; Ex. 1002 ¶¶
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`55-59.) If a network device fails to re-register its name within the set renewal
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`time, “the WINS server will mark the name as released and available for use.”
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`(Ex. 1003 at 75; see also Pet. 18-22; Ex. 1002 ¶¶ 55-59.) Likewise, “[n]ames held
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`by an NBNS are given a lifetime during name registration. The NBNS will
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`consider a name to have been silently released if the end-node fails to send a name
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`refresh message to the NBNS before the lifetime expires.” (Ex. 1004 at 396; see
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`also Pet. 26-27; Ex. 1002 ¶¶ 65-66.)
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`Third, “when a first unit sends a query to the [WINS/NetBIOS] server, the
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`latter ‘searches the database to determine whether the callee is logged-in by finding
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`any stored information corresponding to the callee’s [WINS or NetBIOS name]
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`indicating that the callee is active and on-line.” Slip Op. at 11 (citing’704 patent at
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`5:57–60). WINS discloses that “a name query request is sent first to the WINS
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`server . . . . If the name is found in the WINS database, the client can establish a
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`session based on the address mapping received from WINS.” (Ex. 1003 at 73; see
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`also Pet. 22-23; Ex. 1002 ¶¶ 61.) Likewise, NetBIOS discloses that when a “name
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`query request” is sent to the NBNS, it will return a “negative response” “if the
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`NBNS has no information about the name” and a “positive response” “when the
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`NBNS does have information about the name.” (Ex. 1004 at 407-08; Pet. 27-28;
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`Ex. 1002 ¶¶ 67.)
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`Fourth, in a WINS/NetBIOS system, “[w]hen a user logs off or goes off-
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`line from the Internet, the connection server [] updates the status of the user in the
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`database; for example, by removing the user’s information, or by flagging the user
`
`as being off-line.” (’704 patent 6:6–9.) The “server [is] instructed to update the
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`user’s information in the database by an offline message . . . sent automatically
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`from the processing unit of the user prior to being disconnected from the
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`connection server.” (Id. at 6:10–14.) WINS teaches that “[w]henever a computer
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`is shut down properly, it releases its name to the WINS server, which marks the
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`related database entry as released … because it knows that the old client is no
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`longer using that name.” (Ex. 1003 at 75; see also Pet. 48; Ex. 1002 ¶ 59.)
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`NetBIOS likewise discloses that during a “graceful” shutdown, the “explicit name
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`deletion function” informs the NBNS that “[t]he application no longer requires use
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`of the name.” (Ex. 1004 at 378; see also Pet. 27; Ex. 1002 ¶ 66; Ex. 1041 ¶¶ 31.)
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`NetBIOS also discloses mechanisms for tracking the on-line status of a
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`process that has undergone a non-graceful shutdown. “A common way to stop
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`using a PC is to turn it off; in this case, the graceful give-back mechanism,
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`provided by the Delete Name function, is not used.” (Ex. 1004 at 378; see also
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`Reply 18-19; Ex. 1041 ¶¶ 31, 40.) Instead, NetBIOS implements “silent release.”
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`“Silent release typically occurs when an end-node fails or is turned off.” (Id. at
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`395; see also Reply 18-19; Ex. 1041 ¶ 40.) “Names held by an NBNS are given a
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`lifetime during name registration. The NBNS will consider a name to have been
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`silently released if the end-node fails to send a name refresh message to the NBNS
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`before the lifetime expires.” (Id. at 396; see also Pet. 49-50; Ex. 1002 ¶ 66.)
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`Unlike the ’469 patent, which only discloses deregistration and timestamps,
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`NetBIOS discloses two additional mechanisms for keeping the on-line status in its
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`database current: name challenge and periodic polling. Name challenge “detect[s]
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`whether a node has silently released its claim to a name [by] challeng[ing] that
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`node’s current ownership. If the node defends the name then the node is allowed
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`to continue possession. Otherwise it is assumed that the node has released the
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`name.” (Ex. 1004 at 396; see also Reply 18-19; Ex. 1041 ¶ 41.) In periodic
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`polling, “NBNS poll[s] nodes . . . to verify that their name status is the same as that
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`registered in the NBNS.” (Ex. 1004 at 401; see also Reply 19; Ex. 1041 ¶ 42.)
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`Case No. IPR2015-00198
`Patent No. 6,009,469 C1
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`In the face of these extensive prior art disclosures, Patent Owner is reduced
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`to arguing that the WINS/NetBIOS system cannot “guarantee” that a name present
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`in its database is online. (Resp. 19-20.) Patent Owner’s argument does not
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`distinguish its purported invention from the prior art. The record evidence is
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`undisputed that the embodiments on which Patent Owner and the Federal Circuit
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`relied cannot “guarantee” that a process that is registered as “on-line” with the
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`connection server at the time of the query is actually online. Indeed, the Federal
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`Circuit concluded that the “connection server” does “not completely eliminate any
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`gap between recorded status and true status.” Slip Op. at 11. Patent Owner’s
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`demand for perfection is one that he did not meet, and regardless, is not required to
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`find his patent obvious.
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`Dated: January 12, 2016
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`1018419
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`Respectfully submitted,
`
`KEKER & VAN NEST LLP
`
`By:
`
`
`/s/ Sharif E. Jacob
`SHARIF E. JACOB
`633 Battery Street
`San Francisco, CA 94111-1809
`Telephone: 415 391 5400
`Facsimile: 415 397 7188
`
`Attorneys for Petitioner HULU, LLC
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`7
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`Case No. IPR2015-00198
`Patent No. 6,009,469 C1
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`CERTIFICATE OF SERVICE
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`
`
`I hereby certify that on January 12, 2016, I caused a true and correct copy of
`this PETITIONER’S SUPPLEMENTAL BRIEF IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`to be served upon the Patent Owner by filing this document through the Patent
`Review Processing System as well as by delivering a copy via email to the
`following attorneys of record for the Patent Owner:
`Counsel for Straight Path IP Group, Inc.
`William A. Meunier (Lead Counsel) (Registration No. 41,193)
`Matthew D. Durell (Backup Counsel) (Registration No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center
`Boston, Massachusetts 02111
`Email:
`StraightPathIPRs@mintz.com
`
`Counsel for Hulu, LLC
`Leo Lam (Registration No. 38,528)
`Matthias Kamber
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, California 94111
`Email:
`llam@kvn.com
`
`mkamber@kvn.com
`
`Counsel for Toshiba
`Clint Conner (Registration No. 52,764)
`Paul Meiklejohn (Registration No. 26,569)
`Jennifer Spaith (Registration No. 51,916)
`Dorsey & Whitney
`50 South Sixth Street, Suite 1500
`Minneapolis, Minnesota 55402
`Email:
`conner.clint@dorsey.com
`
`meiklejohn.paul@dorsey.com
`
`spaith.jennifer@dorsey.com
`
`
`
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`Case No. IPR2015-00198
`Patent No. 6,009,469 C1
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`
`
`Counsel for VIZIO
`Kevin O’Brien (Registration No. 30,578)
`Richard V. Wells (Registration No. 53,757)
`Baker & McKenzie LLP
`815 Connecticut Avenue, N.W.
`Washington, D.C. 20006
`Email:
`kevin.obrien@bakermckenzie.com
`
`
`richard.wells@bakermckenzie.com
`
`Counsel for Avaya Inc.
`Dorothy P. Whelan (Registration No. 33,814)
`Fish & Richardson
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`Email:
`whelan@fr.com
`
`Christopher O. Green (Registration No. 52,964)
`Fish & Richardson
`1180 Peachtree Street NE, 21st Floor
`Atlanta, Georgia 30309
`Email:
`cgreen@fr.com
`
`Counsel for CISCO Systems
`David L. Cavanaugh (Registration No. 36,476)
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Email:
`david.cavanaugh@wilmerhale.com
`
`Jason D. Kipnis (Registration No. 40,680)
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, California 94304
`Email:
`jason.kipnis@wilmerhale.com
`
`
`
`
`
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`Dated: January 12, 2016
`
`Respectfully submitted,
`
`Case No. IPR2015-00198
`Patent No. 6,009,469 C1
`
`
`
`/Rajeev Gupta/
`Darren M. Jiron (Registration No.
`45,777)
`Rajeev Gupta (Registration No.
`55,873)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
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