Page 1
`
`Analysis
`As of: Jul 29, 2015
`
`STRAIGHT PATH IP GROUP, INC., Plaintiff, v. BANDWIDTH.COM, INC., et al.,
`Defendants.
`
`Civil Action No. 1:13-cv-932 (AJT/IDD)
`
`UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF
`VIRGINIA, ALEXANDRIA DIVISION
`
`2014 U.S. Dist. LEXIS 25394
`
`February 25, 2014, Decided
`February 25, 2014, Filed
`
`SUBSEQUENT HISTORY: Related proceeding at
`Straight Path IP Group, Inc. v. Blackberry Ltd., 2014
`U.S. Dist. LEXIS 92787 (N.D. Cal., July 8, 2014)
`
`COUNSEL:
`[*1] For Straight Path IP Group, Inc.,
`Plaintiff: Brent Lee VanNorman, LEAD ATTORNEY,
`Gregory N. Stillman, Hunton & Williams, Norfolk, VA;
`Sona Rewari, Hunton & Williams, McLean, VA.
`
`For Bandwidth.com, Inc., Defendant: William Rueger
`Poynter, Williams Mullen (Norfolk), Norfolk, VA.
`
`For Telesphere Networks Ltd., Consolidated Defendant:
`Edward Alan Pennington, LEAD ATTORNEY, John
`Paul Moy, Smith Gambrell & Russell LLP (DC),
`Washington, DC.
`
`For Vocalocity, Inc., Consolidated Defendant: Robert
`Christian Bertin, LEAD ATTORNEY, Bingham
`McCutchen LLP (DC), Washington, DC.
`
`For Bandwidth.com, Inc., Counter Claimant: William
`Rueger Poynter, Williams Mullen (Norfolk), Norfolk,
`
`VA.
`
`For Straight Path IP Group, Inc., Counter Defendant:
`Brent Lee VanNorman, LEAD ATTORNEY, Gregory N.
`Stillman, Hunton & Williams, Norfolk, VA; Sona
`Rewari, Hunton & Williams, McLean, VA.
`
`For Vocalocity, Inc., Counter Claimant: Robert Christian
`Bertin, LEAD ATTORNEY, Bingham McCutchen LLP
`(DC), Washington, DC.
`
`JUDGES: Anthony J. Trenga, United States District
`Judge.
`
`OPINION BY: Anthony J. Trenga
`
`OPINION
`
`MEMORANDUM OPINION
`CONSTRUING CLAIMS
`
`AND
`
`ORDER
`
`On January 16, 2014,
`
`the Court held a claim
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Exhibit 2029 - Page 1
`
`

`
`2014 U.S. Dist. LEXIS 25394, *1
`
`Page 2
`
`to certain claim
`construction hearing with respect
`language of U.S. Patent Numbers 6,513,066 ("the '066
`[*2] and 6,701,365 ("the '365 patent"). Upon
`patent")
`consideration of the parties' briefs setting forth their
`proposed constructions and their presentations at
`the
`claim construction hearing, the Court rules as follows
`with respect to the disputed terms of the '066 and '365
`patents.
`
`I. INTRODUCTION
`
`the Patent and Trademark
`On January 28, 2003,
`the
`patent,
`entitled
`Office
`("PTO")
`issued
`'066
`"Establishing a Point-to-Point Internet Communication."
`On March 2, 2004,
`the PTO issued the '365 patent,
`entitled "Point-to-Point Internet Protocol." The patented
`invention purports to provide a solution to a problem
`associated with internet communication between devices,
`specifically, that such communication generally requires
`knowledge of
`the devices'
`respective
`"addresses,"
`typically internet protocol ("IP") addresses, but
`those
`addresses may not be fixed. See '066 patent at 1:32-2:3;
`'365 patent at 1:28-63. During prosecution of the '365
`patent, the patentee compared this problem to that of
`"trying to call someone whose telephone number changes
`after each call." Straight Path IP Group's Markman Brief,
`Ex. 7 at 4.
`
`The invention comprises two alternative protocols
`for establishing point-to-point communications. [*3] The
`first uses
`a
`"connection server"
`to provide one
`"processing unit" with the IP address of a second
`processing unit, while the second exchanges the IP
`addresses via email, without the use of a connection
`server. See '066 patent at 2:7-37;
`'365 patent at
`1:66-2:28. This case exclusively involves
`the first
`protocol that utilizes a "connection server," one of the
`primary terms to be construed.
`
`As disclosed in claim 1 of the '066 patent, the first
`protocol consists of: 1) "storing in a database a respective
`Internet Protocol (IP) address of a set of processing units
`that have an on-line status with respect to the Internet"; 2)
`transmitting a query from the first processing unit to a
`connection server to determine the on-line status of a
`second processing unit"; and 3) "retrieving the IP address
`of the second unit from the database using the connection
`server, in response to the determination of a positive
`on-line status of
`the second processing unit,
`for
`establishing a point-to-point communication link between
`the first and second processing units through the
`
`Internet." The '365 patent has an identical specification
`but
`its claims cover a "computer program product,"
`"computer data signal" [*4] and "computer system" for
`performing steps similar to those set out in the '066
`patent.1
`
`1 The '365 patent also uses somewhat different
`terminology than the '066 patent. Relevant for this
`case is that the '365 patent uses the term "process"
`instead of
`"processing unit"
`and the
`term
`"network protocol
`address"
`instead of
`"IP
`address." Defendants represented at the Markman
`hearing that an IP address is a type of network
`protocol address.
`
`At this stage in the proceedings, the construction of
`four terms remains in dispute:2
`
`(a) "processing unit,"
`
`(b) "process,"
`
`"point-to-point"/"point-to-point
`(c)
`communication,"3 and
`
`(c) "connection server."
`
`2 The parties initially disputed the meaning of
`ten terms found in claims 1 through 3 and 6
`through 8 of the '066 patent and claims 1 and 3 of
`the
`'365 patent. However, only Defendant
`Bandwidth.com, Inc., which has been dismissed
`from the case, disputed the meaning of two of the
`terms,
`"using
`the
`connection
`server"
`and
`"database." Thus, those terms no longer need to
`be construed. At
`the Markman hearing,
`the
`remaining defendants conceded that four other
`terms,
`"Internet,"
`"point-to-point
`Internet
`communication," "point-to-point communications
`over
`the Internet,"
`[*5] and "point-to-point
`communication link between the first and second
`processing units through the Internet," do not
`need to be construed.
`3 The term "point-to-point," as used in the '066
`and '365 patents, was construed in an earlier case
`filed in the Norfolk Division of this District. See
`Innovative Commc'ns Tech.,
`Inc.
`("ICTI") v.
`Vivox, Inc., Nos. 2:12-cv-7 & 2:12-cv-9, 2012
`U.S. Dist. LEXIS 154311, 2012 WL 5331573
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Exhibit 2029 - Page 2
`
`

`
`2014 U.S. Dist. LEXIS 25394, *5
`
`Page 3
`
`(E.D. Va. Oct. 26, 2012). That case settled before
`a final adjudication on the merits.
`
`II. STANDARD
`
`The construction or interpretation of a claim is a
`question of law. Markman v. Westview Instruments, Inc.,
`52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370,
`116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). The words of
`the claim "are generally given their ordinary and
`customary meaning," that is, the meaning they would
`have "to a person of ordinary skill in the art in question at
`the time of the invention." Phillips v. AWH Corp., 415
`F.3d 1303, 1312-13 (Fed. Cir. 2005) (citation omitted).
`"Importantly, the person of ordinary skill in the art is
`deemed to read the claim term not only in the context of
`the particular claim in which the disputed term appears,
`but in the context of the entire patent, including the
`specification." Id. at 1313. Thus,
`[*6] in interpreting
`claim terms, "the court should look first to the intrinsic
`evidence of record, i.e., the patent itself, including the
`claims,
`the specification, and,
`if
`in evidence,
`the
`prosecution history." Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). However, the
`court may also consider extrinsic evidence, including, for
`example,
`treatises, dictionaries, and expert
`testimony.
`Phillips, 415 F.3d at 1317-18.
`
`"If the claim language is clear on its face, then [the
`Court's] consideration of the rest of the intrinsic evidence
`is restricted to determining if a deviation from the clear
`language of the claims is specified." Interactive Gift
`Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1331
`(Fed. Cir. 2001). "If, however, the claim language is not
`clear on its face, then [the Court's] consideration of the
`rest of the intrinsic evidence is directed to resolving, if
`possible, the lack of clarity." Id. "In some cases, the
`ordinary meaning of claim language as understood by a
`person of skill in the art may be readily apparent even to
`lay judges, and claim construction in such cases involves
`little more than the application of the widely accepted
`meaning of commonly [*7] understood words." Phillips,
`415 F.3d at 1314.
`
`A claim term should be interpreted more narrowly
`than its ordinary and customary meaning under only two
`circumstances: "1) when a patentee sets out a definition
`and acts as his own lexicographer, or 2) when the
`patentee disavows the full scope of a claim term either in
`the specification or during prosecution." Thorner v. Sony
`Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed.
`
`Cir. 2012). "To act as its own lexicographer, a patentee
`must clearly set forth a definition of the disputed claim
`term other than its plain and ordinary meaning. It is not
`enough for a patentee to simply disclose a single
`embodiment or use a word in the same manner in all
`embodiments, the patentee must clearly express an intent
`to redefine the term." Id. (internal citation and quotation
`marks omitted). "The standard for disavowal of claim
`scope is similarly exacting." Id. at 1366. "The patentee
`may demonstrate intent to deviate from the ordinary and
`accustomed meaning of a claim term by including in the
`specification expressions of manifest
`exclusion or
`restriction,
`representing a clear disavowal of claim
`scope." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`1313, 1325 (Fed. Cir. 2002).
`
`Title [*8] 35 U.S.C. § 112, ¶ 2 requires that every
`patent's specification "conclude with one or more claims
`particularly pointing out and distinctly claiming the
`subject matter which the inventor .
`.
`. regards as the
`invention." A claim that fails to satisfy this particularity
`requirement is invalid for indefiniteness. "The primary
`purpose of the definiteness requirement is to ensure that
`the claims are written in such a way that they give notice
`to the public of the extent of the legal protection afforded
`by the patent, so that interested members of the public,
`e.g., competitors of the patent owner, can determine
`whether or not they infringe." All Dental Prodx, LLC v.
`Advantage Dental Prods., Inc., 309 F.3d 774, 779-80
`(Fed. Cir. 2002).
`
`indefiniteness,
`"In the face of an allegation of
`general
`principles
`of
`claim construction
`apply."
`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
`1342, 1348 (Fed. Cir. 2005). "Only claims not amenable
`to construction or insolubly ambiguous are indefinite."
`Source Search Techs., LLC v. LendingTree, LLC, 588
`F.3d 1063, 1076 (Fed. Cir. 2009) (internal quotation
`marks omitted). Patents are presumed valid, and an
`alleged infringer asserting that a claim term is
`[*9]
`indefinite must prove "by clear and convincing evidence
`that a skilled artisan could not discern the boundaries of
`the claim based on the claim language, the specification,
`and the prosecution history, as well as her knowledge of
`the relevant art area." Halliburton Energy Servs., Inc. v.
`M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008).
`
`III. CLAIMS
`
`A. "processing unit"
`
`LG v. Straight Path, IPR2015-00198
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`

`
`2014 U.S. Dist. LEXIS 25394, *9
`
`Page 4
`
`The term "processing unit" is found in claims 1
`through 3 and 6 through 8 of the '066 patent. Straight
`Path contends that no construction is necessary as the
`term has a plain and ordinary meaning. The defendants
`contend that the term should be construed to mean "a user
`device."
`
`The defendants do not seem to dispute that the term
`"processing unit" has an ordinary and customary meaning
`that is readily apparent even to a layperson. See Phillips,
`415 F.3d at 1314. They nonetheless contend that the term
`must be construed, although it is unclear to the Court how
`their proposed construction differs from that ordinary and
`customary meaning. To the extent
`the defendants'
`proposed construction would limit the scope of the term
`"processing unit," that limitation is unsupported. While
`the specification frequently employs the term "user"
`[*10] in connection with the term "processing unit,"4 the
`patentee did not clearly disavow the ordinary and
`customary meaning of the term.5 See Teleflex, Inc., 299
`F.3d at 1325. The Court will therefore construe the term
`"processing unit" according to its ordinary and customary
`meaning, without further restrictions.
`
`See, e.g., '066 patent at 5:67-6:4 ("The first
`4
`user operating the first processing unit 12 is thus
`established in the database 34 as an active on-line
`party available for communication using the
`disclosed point-to-point Internet protocol.").
`5 In their briefs and at the Markman hearing, the
`defendants argued that construction is necessary
`because
`the
`requires
`that
`the
`'066 patent
`processing units be "positioned at either ends of
`point-to-point
`communications." Defendants
`Bandwidth.com, Inc.'s and Vocalocity, Inc.'s Joint
`Opening Claim Construction Brief at 23. But the
`defendants have failed to explain how the
`specification or prosecution history supports this
`proposed limitation in any way that is not already
`apparent from the claims themselves, or how the
`term "user" connotes "endpoint."
`
`B. "process"
`
`The term "process" is found in claims 1 and 3 of the
`'365 patent. Straight Path [*11] would construe the term
`as "a running instance of a computer program or
`application." The defendants propose as the appropriate
`construction "an addressable program running on a user
`device."6
`
`6 Defendants originally seemed to argue that the
`term "process" is indefinite, and to propose the
`above construction only as an alternative in the
`event the Court decided to construe the term. At
`the Markman hearing, however, the defendants
`clarified that their position is not that the term
`cannot be construed, but
`that Straight Path's
`construction of
`"process"
`renders
`the
`term
`indefinite.
`
`in the
`appear
`term "process" does not
`The
`specification. However, in their respective claims, the
`'365 patent uses the term "process" in essentially the
`same manner in which the '066 patent uses the term
`"processing unit." Compare, e.g., '066 patent claim 1,
`with '365 patent claim 3. Further, the parties seem to
`agree that a "process" is the running of a program on a
`processing unit, essentially the plaintiff's proposed
`construction, and the Court finds that that construction
`reflects the ordinary and customary meaning of the term,
`when read in light of the claims. See '365 patent claim 1
`(claiming a "computer
`[*12] program product" for
`performing the relevant steps); id. claim 3 (claiming, in a
`"computer system," a method for performing the relevant
`steps). The issue,
`then,
`is whether that ordinary and
`customary meaning should be restricted as defendants
`propose.
`
`As discussed above, the Court rejects the defendants'
`attempt to construe "processing unit" as "a user device,"
`and for the same reasons the Court rejects their attempt to
`insert the term "user" into the definition of "process." The
`remaining question, then, is whether, as the defendants
`contend, "process" must be limited to an "addressable
`program." The defendants explain that, based on the
`claims, a process "needs to be addressable by a network
`protocol address." Defendants Bandwidth.com, Inc.'s and
`Vocalocity,
`Inc.'s Joint Opening Claim Construction
`Brief at 13. Based on this explanation, however,
`the
`limitation would seem to be redundant with the claims
`themselves. Moreover, to the extent the limitation would
`narrow the term, the defendants have not pointed to any
`clear disclaimer of the full scope of the claim language.
`Finally, the Court rejects the defendants' argument that
`Straight Path's construction, which simply reflects the
`[*13] ordinary and customary meaning of the term, is
`"insolubly ambiguous." See Source Search Techs., LLC,
`588 F.3d at 1076.7
`
`7 Further, even if the term were ambiguous, the
`
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`2014 U.S. Dist. LEXIS 25394, *13
`
`Page 5
`
`fails to see how Defendants' proposed
`Court
`limitations would remedy any ambiguity.
`
`the Court will construe the term
`Accordingly,
`"process," as used in claims 1 and 3 of the '365 patent, as
`"a
`running instance of
`a
`computer program or
`application."
`
`"point-to-point"
`C.
`communication"8
`
`and
`
`"point-to-point
`
`8 In the patents, the term "point-to-point" always
`appears
`in
`connection with
`the
`term
`"communication,"
`sometimes with the
`term
`"Internet" in between. The Court will therefore
`refer to the terms "point-to-point" and "point to
`point
`communication"
`collectively
`as
`"point-to-point.
`.
`.
`communication"
`or
`"point-to-point communication."
`
`. communication" is
`.
`.
`The term "point-to-point
`found in claims 1 through 3 and 6 through 8 of the '066
`patent and claims 1 and 3 of the '365 patent. Straight Path
`proposes the construction of "point-to-point" adopted in
`ICTI, viz., "communications between two processes over
`a computer network that are not
`intermediated by a
`connection server." See ICTI, 2012 U.S. Dist. LEXIS
`154311, 2012 WL 5331573, at *10. The defendants
`propose [*14] the construction "communication between
`two user processes, established by one of the processes
`using the network protocol address of the other process,
`that is not intermediated by a connection server."9 Thus,
`the parties agree that "point-to-point communication"
`should be construed as communication between two
`"processes" that is not intermediated by a "connection
`server," a construction the Court finds consistent with the
`claims and the specification. See generally ICTI, 2012
`U.S. Dist. LEXIS 154311, 2012 WL 5331573, at *7-*8.
`The issue, then, is whether the term should be further
`limited, as defendants propose, by inserting the word
`"user"
`before
`"processes"
`and
`indicating
`that
`communication is "established by one of the processes
`using the network protocol address of the other process."
`Embedded in this issue is whether the Court should defer
`to, and on that basis adopt, the Court's construction in
`ICTI.
`
`9 Defendant Vocalocity originally proposed this
`construction, while Telesphere proposed an
`identical construction except that it used the term
`"client" instead of the term "user." See Defendant
`
`Telesphere Networks Ltd.'s Opening Claim
`Construction Brief at 4. Telesphere subsequently
`indicated that
`it supports
`[*15] Vocalocity's
`proposed
`construction.
`Joint
`Claim
`See
`Construction Statement Ex. A. The Court's
`analysis would apply equally to Telesphere's
`original proposed construction.
`
`Straight Path contends that, unless the defendants
`can show that the Court's construction in ICTI is incorrect
`as a matter of law, this Court is bound to follow that
`claim construction, which, according to Straight Path,
`effectively rejected Defendants' proposed limitations
`here.10 See Straight Path IP Group's Markman Brief at 9
`(citing DE Techs., Inc. v. ISHOPUSA, Inc., 826 F. Supp.
`2d 937, 941 (W.D. Va. 2011) ("[A]bsent a showing by
`DE that the court's original construction of a disputed
`term was incorrect as a matter of law, the court will apply
`its prior Markman rulings in the instant action.")). But in
`DE Technologies, on which Defendants
`rely,
`the
`defendants
`sought
`to preclude
`the plaintiff
`from
`relitigating terms the court had construed in a previous
`suit the plaintiff initiated. Here, by contrast, Straight Path
`attempts to give preclusive effect to terms construed in its
`favor
`in a case in which none of
`the defendants
`participated. Thus,
`the Court finds it appropriate to
`independently
`assess
`the
`parties'
`claim [*16]
`construction arguments.11
`
`The defendants in ICTI did not propose to
`10
`limit the construction of the term "point-to-point"
`in the same way Defendants propose here, but the
`ICTI court did entertain similar arguments when
`construing the terms "establishing a point-to-point
`communication" and "to allow the establishment
`of a packet-based point-to-point communication."
`The ICTI defendants proposed the construction
`"using the network protocol address retrieved by
`the server from its database to create a direct
`communication,
`initiated solely by one of the
`processes, and not intermediated by a connection
`server, gateway, or similar device." See ICTI,
`2012 U.S. Dist. LEXIS 154311, 2012 WL
`5331573, at *10. The court rejected that proposed
`construction,
`ruling
`that,
`"[h]aving
`already
`construed the term 'point-to-point,'
`.
`.
`.
`the
`ordinary and customary meaning of the claim
`terms
`"establishing
`a
`point-to-point
`communication" and "to allow the establishment
`of a packet-based point-to-point communication,"
`
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`
`2014 U.S. Dist. LEXIS 25394, *16
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`Page 6
`
`as understood by a person of skill in the art when
`read in the context of the entire patent, is readily
`apparent even to a layperson." 2012 U.S. Dist.
`LEXIS 154311, [WL] at *9.
`11 In any event, this Court's construction of the
`term "point-to-point
`communication,"
`[*17]
`which is set forth below, is essentially consistent
`with that in ICTI, differing only in that it adds
`clarification on a point that is disputed between
`the parties in this case. See generally O2 Micro
`Int'l Ltd. v. Beyond Innovation Tech. Co., 521
`("A
`F.3d
`1351,
`1361
`(Fed. Cir.
`2008)
`determination that a claim term 'needs no
`construction' or has
`the 'plain and ordinary
`meaning' may be inadequate when a term has
`more than one 'ordinary' meaning or when
`reliance on a term's 'ordinary' meaning does not
`resolve the parties' dispute.").
`
`The "Background of the Invention" section of the
`specification
`explains
`that,
`"[g]enerally,
`devices
`interfacing to the Internet and other online services may
`communicate with
`each
`other
`upon
`establishing
`respective device addresses," and notes that "[p]ermanent
`IP addresses of users and devices [*19] accessing the
`Internet readily support point-to-point communications of
`voice and video signals over the Internet." '066 patent at
`1:32-35, 61-63. By contrast, "[d]ue to the dynamic nature
`of temporary IP addresses of some devices accessing the
`Internet, point-to-point communications in realtime of
`voice and video have been generally difficult to attain."
`Id. at 1:67-2:3. Thus, the problem the patents seek to
`remedy is that of establishing the device address of
`another user or device when that address is not fixed. The
`"Summary of the Invention" section of the specification
`then goes on to explain that
`the "first point-to-point
`Internet protocol" includes the steps of:
`
`Consistent with their other proposed constructions,
`Defendants first contend that, based on the specification
`and prosecution history, the processes between which
`communication takes place must be "user processes." The
`Court rejects this argument for the reasons discussed
`above.
`
`The defendants also contend that "point-to-point"
`communication must be "established by one of
`the
`processes using the network protocol address of the other
`process." Straight Path opposes such a construction on
`several grounds. First, Straight Path contends that, while
`a network protocol address is used in some embodiments
`of
`the
`invention
`to
`establish
`"point-to-point
`communication,"
`[*18] the construction of that
`term
`should not be so limited because the patentee did not act
`as its own lexicographer with respect to the term or
`clearly disavow its scope. The Court cannot conclude,
`however, that "point-to-point communication" has a plain
`and ordinary meaning that is apparent on the face of the
`claims. The Court must therefore consider the claims in
`the context of the specification to determine how the
`patents use the term. See Interactive Gift Express, Inc.,
`256 F.3d at 1331 ("If the claim language is clear on its
`face, then [the Court's] consideration of the rest of the
`intrinsic evidence is restricted to determining if a
`deviation from the clear
`language of
`the claims is
`specified . . . . If, however, the claim language is not clear
`on its face, then [the Court's] consideration of the rest of
`the intrinsic evidence is directed to resolving, if possible,
`the lack of clarity.").
`
`(a) storing in a database a respective IP
`address of a set of processing units that
`have an on-line status with respect to the
`Internet;
`
`(b) transmitting a query from a first
`processing unit to a connection server to
`determine the on-line status of a second
`processing unit; and
`
`(c) retrieving the IP address of the
`second unit from the database using the
`connection server,
`in response to the
`determination of a positive on-line status
`of
`the
`second
`processing
`unit,
`for
`establishing
`a
`point-to-point
`communication link between [*20] the
`first and second processing units through
`the Internet.
`
`'066 patent at 2:6-25. The crux of the invention, then, is
`furnishing the IP address of one processing unit
`to
`another processing unit to allow the processing units to
`communicate directly with one another. Based on the
`specification, a person of ordinary skill in the art would
`therefore understand "point-to-point communication" to
`be communication established by one processing unit
`using the IP address of another processing unit.
`
`Straight Path contends, however, that requiring the
`use of a network protocol or IP address to establish
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Exhibit 2029 - Page 6
`
`

`
`2014 U.S. Dist. LEXIS 25394, *20
`
`Page 7
`
`point-to-point communication is inconsistent with certain
`of the patent claims, referencing in particular claim 6 of
`the '066 patent. Claim 6 applies to "[a] system for
`point-to-point
`communications
`over
`the
`Internet
`comprising":
`
`a database for storing a set of Internet
`Protocol (IP) addresses of at
`least one
`processing unit that has on-line status with
`respect to the Internet;
`
`a first processing unit including:
`
`a first program for
`performing
`a
`first
`point-to-point
`Internet
`protocol; and
`for
`a first processor
`executing the first program
`and
`for
`transmitting
`a
`query;
`
`responsive to
`a connection server,
`[*21]
`the query,
`for determining the
`on-line status of a second processing unit
`by searching the database,
`and for
`transmitting an online message to the first
`processing
`unit
`for
`establishing
`a
`point-to-point
`communication
`link
`between the first and second processing
`units through the Internet.
`
`Because this claim does not explicitly indicate that one
`processing unit uses the IP address of the other to
`establish communication, but rather refers to an online
`message sent
`to the first processing unit by the
`connection server after determining the online status of a
`second processing unit, Straight Path argues that "this
`claim recites how point-to-point communication is
`established--an 'online message'
`is
`transmitted for
`establishing 'point-to-point' communication." Straight
`Path IP Group's Rebuttal
`to Defendants' Opening
`Markman Briefs at 10. However, when claim 6 is read in
`the context of the specification and its dependent claims,
`claims 7 and 8, it is clear that communication is actually
`established with the use of an IP address. In that regard,
`Claim 7 applies to:
`The system of claim 6 wherein the
`
`connection server, responsive to a positive
`determination of the online status of the
`second [*22] processing unit, retrieves the
`respective
`IP address of
`the
`second
`processing unit
`from the database and
`transmits the on-line message, including
`the IP address, to the first processing unit;
`and wherein the first processing unit
`establishes
`the
`point-to-point
`communication link between the first and
`second processing units
`through the
`Internet in response to receiving the IP
`address of the second processing unit from
`the connection server.
`
`And Claim 8 applies to:
`The system of claim 6 wherein the
`connection server, responsive to a negative
`determination of the on-line status of the
`second processing unit, generates
`an
`off-line message, and transmits the off-line
`message to the first processing unit.
`
`The most logical reading of these claims is that claim 6
`applies to the initial steps of determining the online status
`of the second processing unit and transmitting to the first
`processing unit a message regarding that status, while
`claims 7 and 8 deal more specifically with the outcomes
`that result depending on whether the second processing
`unit is online. If the second processing unit is online, the
`connection server transmits the IP address of the second
`processing unit to the first processing [*23] unit in order
`to facilitate point-to-point communication.12
`
`12 Straight Path also argues that the defendants'
`proposed construction is inconsistent with claim 1
`of the '365 patent, which recites a
`
`program code configured to
`receive queries for one of
`the
`network protocol address and the
`associated identifier of said one of
`the processes from other processes
`over the computer network at the
`server,
`and
`to
`allow
`the
`establishment of a packet-based
`point-to-point
`communication
`between said one of the processes
`and one of said other processes.
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Exhibit 2029 - Page 7
`
`

`
`2014 U.S. Dist. LEXIS 25394, *23
`
`Page 8
`
`The claim covers one process requesting the
`network protocol address of another process in
`order to establish point-to-point communication.
`This embodiment is entirely consistent with that
`portion of the defendants' proposed construction
`indicating that communication is "established by
`one of the processes using the network protocol
`address of the other process."
`
`For these reasons, the Court rejects the defendants'
`construction
`insofar
`as
`it
`inserts
`"user"
`before
`"processes," but concludes that the construction of the
`term "point-to-point communication" requires that such
`communication be "established by one of the processes
`using the network protocol
`[*24] address of the other
`process." The Court further concludes that
`the terms
`"processing units" and "IP address," which are used in the
`'066 patent, should also be referenced,
`together with
`"processes" and "network protocol address." The Court
`will
`therefore
`construe
`the
`term "point-to-point
`communication"
`as
`"communication
`between
`two
`processing units or processes, established by one of the
`processing units or processes using the IP or network
`protocol address of the other processing unit or process,
`that is not intermediated by a connection server."
`
`D. "connection server"
`
`The term "connection server" is found in claims 1
`through 3 and 6 through 8 of the '066 patent and claim 3
`of
`the '365 patent. Straight Path contends that no
`construction is necessary as the term has a plain and
`ordinary meaning, while the defendants would construe
`the term as "a server that furnishes a network protocol
`address needed to establish communications."
`
`As reflected in Defendants' proposed construction,
`the term "server" has a plain and ordinary meaning; and,
`in the context of the specification and the claims, it is
`clear that the term "connection" is meant to convey only
`that
`the
`server
`facilitates
`point-to-point
`[*25]
`communication. See, e.g., '066 patent at 2:7-25 (reciting,
`in the "Summary of the Invention" section of the patent,
`that the connection server receives a query from the first
`processing unit and is used to retrieve the IP address of
`the
`second
`processing
`unit
`"for
`establishing
`a
`point-to-point communication link between the first and
`second processing units through the Internet"). In light of
`the Court's construction of the term "point-to-point," and
`the fact that the claims themselves describe the specific
`
`functions performed by the connection server, the Court
`finds it unnecessary to impose further limitations on the
`term. The Court will
`therefore construe "connection
`server" according to its plain and ordinary meaning as "a
`server that facilitates point-to-point communication."
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Court will construe the
`disputed terms as follows:
`
`1. The term "processing unit," as used in
`claims 1 through 3 and 6 through 8 of the
`'066 patent, will be given its ordinary and
`customary meaning.
`
`2. The term "process," as used in
`claims 1 and 3 of the '365 patent, will be
`construed as "a running instance of a
`computer program or application."
`
`3. The term "point-to-point [*26] . . .
`communication," as used in claims 1
`through 3 and 6 through 8 of the '066
`patent and claims 1 and 3 of the '365
`patent,
`will
`be
`construed
`as
`"communication between two processing
`units or processes, established by one of
`the processing units or processes using the
`IP or network protocol address of the other
`processing unit or process,
`that
`is not
`intermediated by a connection server."
`
`4. The term "connection server," as
`used in claims 1 through 3 and 6 through 8
`of the '066 patent and claim 3 of the '365
`patent, will be construed as "a server that
`facilitates point-to-point communication."
`
`The Clerk is directed to forward copies of this Order
`to all counsel of record.
`
`/s/ Anthony J. Trenga
`
`Anthony J. Trenga
`
`United Sta