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., and AVAYA INC.,
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`________________
`
`Case IPR2015-001981
`Patent 6,009,469 C1
`________________
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S ADDITIONAL BRIEFING
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., and AVAYA INC.,
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`________________
`
`Case IPR2015-001981
`Patent 6,009,469 C1
`________________
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S ADDITIONAL BRIEFING
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`
`
`Case No. IPR2015-00198
`
`TABLE OF CONTENTS
`
`I.
`
`III.
`
`The CAFC’s Construction Of “is connected” Is
`Controlling. ...................................................................................................... 1
`II. WINS and NetBIOS Do Not Teach The “is
`connected” Limitations Under The CAFC’s
`Construction. .................................................................................................... 1
`A. WINS and NetBIOS do not track or rely on whether a
`computer is connected to the network. ....................................... 2
`B. Whether a name has been released does not indicate
`whether any particular computer is connected to the
`computer network. ...................................................................... 3
`The WINS and NetBIOS name servers return a requested
`IP address regardless of whether the target computer is
`online or whether the queried name has been released. .............. 4
`Petitioner Identified No Evidence Of The “is
`connected to the computer network” Limitations
`Under The CAFC’s Construction. ................................................................... 5
`
`
`C.
`
`i
`
`
`
`Case No. IPR2015-00198
`
`
`
`TABLE OF AUTHORITIES
`
`Cases Page(s)
`Phonometrics, Inc. v.Westin Hotel Co.,
`350 F.3d 1242 (Fed. Cir. 2003) ............................................................................ 1
`
`Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,
`No. 15-1212 (Fed. Cir. Nov. 25, 2015) ........................................................ 1, 6, 7
`
`
`
`
`
`ii
`
`
`
`
`TABLE OF ABBREVIATIONS
`
`
`
`
`WORD PHRASE
`Petitioner’s Supplemental Brief
`Court of Appeals for the Federal Circuit
`Petitioner’s Petition for Inter Parties Review
`Straight Path’s Patent Owner Preliminary
`Response
`Straight Path’s Patent Owner Response
`Federal Circuit Opinion in Straight Path IP Group,
`Inc. v. Sipnet EU S.R.O., No. 15-1212
`(Fed. Cir. Nov. 25, 2015) (Exhibit 2042)
`
`Case No. IPR2015-00198
`
`ABBREVIATION
`Br.
`CAFC
`Pet.
`PR
`
`R
`Sipnet
`
`iii
`
`
`
`Case No. IPR2015-00198
`
`I.
`
`The CAFC’s Construction Of “is connected” Is Controlling.
`
`Challenged claim 3 of U.S. Patent No. 6,009,469 is directed to a “computer
`
`program product” that, (1) transmits to the server a “query as to whether the second
`
`process is connected to the computer network,” and (2) receives the second
`
`process’s network protocol address from the server “when the second process is
`
`connected to the computer network.” (R at 35; ’469 patent at claim 3; see also
`
`claims 6, 9, 10, 14, 17, and 18).
`
`In Sipnet, the CAFC construed this same “is connected to the computer
`
`network” limitation “and the counterpart claim phrases that the parties agree bear
`
`the same meaning . . . to mean ‘is connected to the computer network at the time
`
`that the query is transmitted to the server.’” Sipnet at 13 (emphasis added). The
`
`CAFC’s construction is controlling here, and Petitioner does not argue otherwise.
`
`See, e.g., Phonometrics, Inc. v. Westin Hotel Co., 350 F.3d 1242, 1244-1245 (Fed.
`
`Cir. 2003).
`
`II. WINS and NetBIOS Do Not Teach The “is connected” Limitations
`Under The CAFC’s Construction.
`
`Unlike the challenged claims under the CAFC’s construction, WINS and
`
`NetBIOS do not describe any mechanisms for tracking or determining whether a
`
`computer (much less the claimed process) is connected to the computer network at
`
`the time of the query, nor do they describe any mechanism for sending the
`
`requested target’s address dependent on if that target is in fact connected to the
`
`1
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`Case No. IPR2015-00198
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`computer network at the time of the query. (R at 1-2, 19-21, 46-50). Indeed, the art
`
`explicitly admits it cannot: “[a]ny name-to-IP address mapping registered with a
`
`WINS server can be provided reliably as a response to a name query. However, a
`
`mapping in the database does not ensure that the related device is currently
`
`running.” (Ex. 1003 at 73; R at 18-20, 49-50).
`
`This is because whether a computer is online is not tracked or considered by
`
`the WINS and NetBIOS name servers. (Id.; Ex. 1003 at 64-67, 69, 72-75; Ex.
`
`1004v2 at 377-78, 394-98). Rather, name servers have a different purpose, i.e.,
`
`enabling one computer to request another target computer’s IP address by name.
`
`(Ex. 1003 at 64-67, 69, 72-75, 121; Ex. 1004v2 at 377-78, 394-98, 406; R at 18-
`
`19). To this end, the WINS and NetBIOS name servers have two primary
`
`functions: (1) Registration, by which the name server ensures that two different
`
`computers do not claim the same name and (2) Resolution, by which the name
`
`server determines and returns a computer’s address when that address is requested
`
`using the computer’s name. (Ex. 1003 at 64-67, 69, 72-75; Ex. 1004v2 at 377-78,
`
`394-98, 406-09; R at 18-21, 32-33, 47-49). In performing these functions, the
`
`WINS and NetBIOS servers do not check or rely on whether any particular
`
`computer (or process) is online. (Ex. 1003 at 64-67, 69, 72-75; Ex. 1004v2 at 394-
`
`98, 406-09; R at 19-21, 35-36, 46-50).
`
`A. WINS and NetBIOS do not track or rely on whether a computer
`is connected to the network.
`2
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`Case No. IPR2015-00198
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`During “Registration,” a computer tries to register a name, and the name
`
`server then checks if another computer is already using that name. (Ex. 1003 at 64-
`
`67, 69, 72, 74-75; Ex. 1004v2 at 378, 394-98, 399-400, 402-05, 412-14; R at 18-
`
`21, 32-33, 47-50). If any computer previously registered that name, the server
`
`checks if that computer has relinquished its claim to (has “released”) that name.
`
`(Ex. 1003 at 64-67, 72, 74-75; Ex. 1004v2 at 378, 394-400, 402-05, 411, 412-14; R
`
`at 18-21, 47-50). During Resolution, a first computer asks the name server for a
`
`second computer’s address using that second computer’s name (a “name query”);
`
`the server then searches its database for an address mapped to the queried name
`
`and, if a mapping exists, returns that address to the first computer. (Ex. 1003 at
`
`564-67, 69, 73; Ex. 1004v2 at 395, 406-09, 415-17; R at 18-21, 47-50).
`
`At no time during Registration or Resolution does the WINS/NetBIOS name
`
`server try to determine if any computer is currently online. (Ex. 1003 at 64-67, 72,
`
`74-75; Ex. 1004v2 at 378, 395-400, 402-05, 411, 412-14; R at 1-2, 19-21, 46-50).
`
`B. Whether a name has been released does not indicate whether any
`particular computer is connected to the computer network.
`
`Whether a computer has released a name is no indication of, and cannot be
`
`relied on to show, whether that computer is connected to the computer network
`
`under the CAFC’s construction. (Ex. 1003 at 64-67, 69, 73; Ex. 1004v2 at 395,
`
`406-09, 415-17; R at 19-21, 47-50). A computer that is offline can still have a
`
`registered, unreleased name. (Ex. 1003 at 72, 74-75, 130, 148-49; Ex. 1004v2 at
`
`3
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`
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`Case No. IPR2015-00198
`
`378, 394-400, 402-05, 411-14; R at 19-21). Conversely, a computer that is online
`
`can release its name yet stay connected to the computer network. (Ex. 1003 at 72,
`
`74-75, 130, 148-49; Ex. 1004v2 at 378, 395, 398, 400, 411; R at 18-20, 46-50).
`
`For example, a computer may have a permanent name that is never released,
`
`even when the computer is offline. (Ex. 1003 at 136; Ex. 1004v2 at 394, 396, 411;
`
`R at 19-20, 48-49). Even a computer with a temporary name may go offline
`
`without releasing its name—which the references themselves admit is “common”
`
`and “occurs frequently”—and its name will stay unreleased until and unless a
`
`second computer attempts to register the same name and successfully challenges
`
`the first computer’s registration. (Ex. 1003 at 72, 74-75, 130, 148-49; Ex. 1004v2
`
`at 378, 394-400, 402-05, 411 412-14; R at 19-21, 47-50).
`
`C. The WINS and NetBIOS name servers return a requested IP
`address regardless of whether the target computer is online or
`whether the queried name has been released.
`
`Just as the name server does not attempt to determine whether any computer
`
`associated with a queried name is connected to the network during Resolution, it
`
`also does not attempt to determine whether the queried name has been released.
`
`(Ex. 1003 at 64-67, 72-73; Ex. 1004v2 at 394-98, 406-09, 415-17; R at 18-21, 47-
`
`50). Once a name is mapped to an IP address, the name server will continue to
`
`provide that address in response to a name query—regardless of whether the target
`
`is online or the name has been released—until that name is removed all together
`
`4
`
`
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`Case No. IPR2015-00198
`
`from the database. (Ex. 1003 at 54-67, 72-73; Ex. 1004v2 at 395, 406-09, 415-17;
`
`R at 18-21, 47-50).
`
`Thus, even if a name’s released status did somehow correspond to whether a
`
`computer was in fact online—and it does not—that name status has no effect on
`
`whether the name server will return a requested IP address. (Ex. 1003 at 64-67, 72-
`
`73; Ex. 1004v2 at 394-98, 406-09, 415-17; R at 18-21, 47-50).
`
`III. Petitioner Identified No Evidence Of The “is connected to the computer
`network” Limitations Under The CAFC’s Construction.
`
`Before Petitioner’s Supplemental Brief, the entirety of its argument that
`
`WINS and NetBIOS disclosed the “is connected” limitations under Straight
`
`Path’s—and now the CAFC’s—construction was a single sentence in its Reply,
`
`asserting that “[b]oth WINS and NetBIOS determine the online status of a process
`
`by checking the registration database at the time the query is sent to the WINS and
`
`NBNS servers.” (Reply at 21). But Petitioner’s Reply offers no supporting
`
`explanation or analysis for this assertion: it does not identify, for example, how the
`
`servers are able to allegedly make such a determination, nor does Petitioner cite to
`
`any expert testimony or opinion—not even from its own expert—to support its
`
`conclusory argument. (Id.).
`
`Instead, Petitioner cites four quotes from the references—none of which
`
`mention or concern a determination of whether a computer is online—without any
`
`explanation as to how they supposedly support Petitioner’s (one sentence)
`
`5
`
`
`
`Case No. IPR2015-00198
`
`argument. (Id.). There can be no explanation because three of the four quotes
`
`simply state that a computer can request and receive another computer’s IP address
`
`from the WINS or NetBIOS name server, without any mention or explanation of
`
`the circumstances under which the name server will or will not return the requested
`
`IP address. (Id.). The quotes certainly do not describe that the servers determine a
`
`computer’s online status in response to a name query. (Id.). The remaining quote
`
`confirms that whether the server returns the requested IP address is not dependent
`
`on whether a computer is online but on whether the queried name is in the
`
`database: “[i]f the name is found in the WINS database, the client can establish a
`
`session based on the address mapping received from WINS.” (Id.).
`
`Moreover, each new argument is unsupported by the evidence and relies
`
`wholly on Petitioner’s “registered” construction already rejected by the CAFC.
`
`(Pet. at 35-36, 40-46; Sipnet at 7, 9, 12). For example, Petitioner now argues that
`
`the WINS and NetBIOS name servers keep track of and update a computer’s on-
`
`line status whenever the computer “logs off or goes off-line.” (Br. at 5-6). But the
`
`“evidence” Petitioner identifies concerns only the name server checking during
`
`Registration—not Resolution—whether a name has been “released,” not whether a
`
`target computer is actually connected to the network as required by the CAFC. (Br.
`
`5-6). Petitioner is thus still relying on its “registration” construction that the CAFC
`
`has explicitly rejected: “It is not a reasonable interpretation of the claim language,
`
`6
`
`
`
`Case No. IPR2015-00198
`
`considering its plain meaning, to say that it is satisfied by a query that asks only for
`
`registration information, regardless of its current accuracy.” (Sipnet at 7, 9; PR at
`
`18-21).
`
`Similarly, Petitioner now contends that following a name query, the WINS
`
`and NetBIOS name servers “search the database to determine whether the callee is
`
`logged-in,” or “active and on-line,” based on information stored therein, but again
`
`its cited “evidence” provides no support for this conclusion. (Br. at 4). Rather,
`
`Petitioner cites to passages confirming that the name server will return a requested
`
`IP address simply if it has an IP address mapped to the queried name, with no
`
`regard to whether that target computer is online at the time of the query (or even to
`
`whether that name has been released). (Br. 4). Petitioner is again advocating that
`
`simply determining whether a name is registered (i.e., still mapped in the server’s
`
`database) is sufficient here, in direct contravention of the CAFC’s Sipnet ruling.
`
`(Sipnet at 7, 9, 13; PR at 36-48; R at 37-41).
`
`Dated: January 19, 2016
`
`
`
`7
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (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
`
`
`
`
`Case No. IPR2015-00198
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Response to Petitioner’s Additional
`
`Briefing is being served by electronic mail on the following counsel for the
`
`Petitioners:
`
`For LG Electronics, Inc.
`Finnegan, LLP
`Darren M. Jiron (Reg. No. 45,777)
`Rajeev Gupta (Reg. No. 55,873)
`darren.jiron@finnegan.com
`raj.gupta@finnegan.com
`
`For Toshiba Corporation
`Dorsey & Whitney
`Clint Conner (Reg. No. 52,764)
`Paul Meiklejohn (Reg. No. 26,569)
`Jennifer Spath (Reg. No. 51,916)
`conner.clint@dorsey.com
`meiklejohn.paul@dorsey.com
`spaith.jennifer@dorsey.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
`
`
`
`
`
`
`
`For Vizio, Inc.
`Baker & McKenzie LLP
`Kevin O’Brien (Reg. No. 30,578)
`Richard V. Wells (Reg. No. 53,757)
`Kevin.O'Brien@bakermckenzie.com
`richard.wells@bakermckenzie.com
`
`For CISCO Systems
`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 Hulu, LLC
`Keker & Van Nest LLP
`Leo Lam
`Matthias Kamber
`llam@kvn.com
`mkamber@kvn.com
`HULU-SP-IPR@kvn.com
`
`8
`
`
`
`Case No. IPR2015-00198
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`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: January 19, 2016
`
`
`
`
`
`9
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