UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., and HULU, LLC,
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`
`________________
`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`________________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction......................................................................................................1
`The Petition is Statutorily Barred ....................................................................2
`This Inter Partes Review Should Not Have Been Instituted
`A.
`Because Hulu Previously Filed A Civil Action Challenging The
`Validity Of The ’469 Patent Claims......................................................2
`This Inter Partes Review Should Not Have Been Instituted
`Because The Petition Was Filed More Than One Year After
`Service Of Straight Path’s ITC Complaint............................................3
`1.
`Straight Path’s ITC Complaint Was Served On
`Petitioners More Than A Year Before They Filed Their
`Petition ........................................................................................4
`The Petition is Untimely and Barred Under Section
`315(b)..........................................................................................5
`III. Background And Overview Of The ’469 Patent .............................................6
`A.
`The Problems And Solutions Identified By The ’469 Patent ...............7
`1.
`The ’469 Patent Also Describes the Use of a Display
`Screen and Various Interface Elements....................................11
`The Challenged ’469 Patent Claims....................................................11
`1.
`The challenged claims concern computer programs, not
`computer operating systems......................................................12
`The challenged claims require the determination of
`whether a process is currently connected to the computer
`network, not whether it was previously connected...................13
`The challenged claims also require “a user interface
`element representing a first callee process.”.............................14
`The challenged claim 1 also requires transmitting to the
`server a “unique identifier of the first process.”.......................14
`The ’469 Patent’s Prosecution History ...............................................14
`1.
`The Original Prosecution ..........................................................15
`The Ex Parte Reexaminations ..................................................15
`2.
`
`B.
`
`B.
`
`C.
`
`2.
`
`2.
`
`3.
`
`4.
`
`i
`
`

`
`V.
`
`VI.
`
`B.
`
`B.
`
`IV.
`
`The WINS and NetBIOS References ............................................................16
`A.
`NetBIOS and WINS Both Disclose a Name Server for
`Registering the Name of a Computer, Not a Computer
`Application ..........................................................................................18
`Neither NetBIOS nor WINS Discloses a Means for
`Determining Whether a Computer is Actually Connected to the
`Network at the Time Another Computer Seeks to Communicate
`With It..................................................................................................19
`Claim Constructions ......................................................................................22
`A.
`The Material Claim Construction Issues Facing The Board...............22
`B.
`The Correct Claim Construction Analysis Under The District
`Court Standard.....................................................................................23
`Petition Fails To Identify the “Process” Claim Elements in any of the
`References......................................................................................................25
`A.
`The Plain And Ordinary Meaning of the Term “Process” means
`“A Running Instance of a Computer Program or Application”..........26
`1.
`Petitioners’ Do Not Construe the Term Process, Yet Use
`The Term Contrary to Its Ordinary Meaning ...........................29
`Petitioner Failed To Prove That WINS and/or NetBIOS
`Disclose the Claimed “Process” Elements..........................................31
`VII. Petitioners’ References Do Not Disclose The “Is Connected To The
`Network”/”On-Line Status”/”Accessible” Claim Elements .........................35
`A.
`Petitioner Has Not Overcome The Heavy Presumption That “Is
`Connected to the Computer Network” And “On-line Status”
`Should Be Given Their Ordinary Meaning.........................................36
`1.
`The Ordinary Meaning of “Is Connected To The
`Computer Network” And “On-line Status” Does Not
`Include Registered With a Server .............................................37
`Petitioner And Its Expert Admit That The Patentees Did
`Not Disclaim Or Specially Define The Ordinary Meaning......41
`Petitioner Failed To Prove That NetBIOS and the WINS
`Disclose The “Is Connected To The Network,” “Is Accessible,”
`And “On-Line Status” Elements. ........................................................46
`
`2.
`
`B.
`
`ii
`
`

`
`B.
`
`VIII. Petitioners’ References Do Not Disclose The “Interface Element
`Representing A First Callee Process” Limitations Found In
`Challenged Claims 1-3, 9, 10, 14, 17, and 18 ...............................................50
`A.
`Petitioners Bear The Burden Of Proving Why And How One
`Of Ordinary Skill In The Art Would Combine Pinard with
`WINS and NetBIOS............................................................................50
`Pinard Cannot Remedy WINS and NetBIOS’s Failure to
`Disclose the “Interface Element Representing a Second Callee
`Process”...............................................................................................52
`Petitioner Has Failed to Prove That NetBIOS And WINS Disclose
`The “unique identifier” Required By Claim 1...............................................56
`Petitioners’ Remaining Proposed Constructions Are Not Material To
`The IPR..........................................................................................................57
`XI. Conclusion .....................................................................................................60
`
`IX.
`
`X.
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`505 Games, Inc. v. Babbage Holdings, Inc.,
`IPR2014-00954, Paper No. 17 (PTAB Aug. 22, 2014)…....................................3
`
`ACTV, Inc. v. Walt Disney Company,
`346 F.3d 1082 (Fed. Cir. 2003) ..........................................................................40
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`IPR2013-00276, Paper No. 43 (PTAB Oct. 23, 2014)…...................................51
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ..........................................................................24
`
`Callcopy v. Verint Americas,
`IPR2013-00486, Paper No. 11 (PTAB Feb. 5, 2014)….....................................51
`
`Certain Integrated Circuit Telecommunication Chips and Products
`Containing Same, Including Dialing Apparatus,
`Inv. No. 337-TA-337, Order No. 63, 1992 ITC LEXIS 625
`(U.S.I.T.C. Aug. 28, 1992)… ...............................................................................4
`
`In re Chaganti,
`554 Fed. App’x 917 (Fed. Cir. 2014) ...........................................................51, 54
`
`Cisco Systems, Inc. v. AIP Acquisition, LLC,
`IPR2014-00247, Paper No. 20 (PTAB Jul. 10, 2014)…....................................23
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..........................................................................24
`
`Histologics, LLC v. CDX Diagnostics, Inc.,
`IPR2014-00779, Paper No. 6 (PTAB Sept. 12, 2014)…......................................6
`
`Hockerson-Halberstadt, Inc. v. Converse, Inc.,
`183 F.3d 1369 (Fed. Cir. 1999) ..........................................................................40
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..........................................................................24
`
`iv
`
`

`
`In re Kahn,
`441 F.3d 997 (Fed. Cir. 2006) ......................................................................52, 54
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)…............................................................................50, 51, 52
`
`Laryngeal Mask Co. Ltd. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) ..........................................................................24
`
`Microsoft Corp. v. Secure Web Conference Corp.,
`IPR2014-00745, Paper 12 (PTAB Sept. 29, 2014)….............................17, 53, 55
`
`NeuLion, Inc. v. Filippo Costanza,
`IPR2014-00526, Paper No. 23 (PTAB Sept. 3, 2014)…........................53, 54, 56
`
`Norman International, Inc. v. Hunter Douglas Inc.,
`IPR2014-00282, Paper 8 (PTAB June 20, 2014)… .....................................17, 55
`
`Phillips v. AWH Corp.,
`415 F.3d 1301 (Fed. Cir. 2005) ..........................................................................23
`
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ..............................................................................23
`
`Symantec Corp. v. RPost Communications Ltd.,
`IPR2014-00355, Paper No. 12 (PTAB Jul. 15, 2014)…....................................51
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ..........................................................................24
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ..........................................................................24
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00127, Paper No. 32 (PTAB June 30, 2014)… ..................................23
`
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, Paper No. 12 (PTAB Apr. 8, 2013)… ........................29, 53, 54
`
`v
`
`

`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`CASE IPR2015-00198
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`
`2012
`2013
`2014
`2015
`2016
`2017
`
`2018
`2019
`
`2020
`2021
`2022
`
`Proposed Intervenor Hulu, LLC’s Brief in Support of Motion to
`Intervene Pursuant To Federal Rule of Civil Procedure 24
`Proposed Intervenor Hulu, LLC’s Reply in Support of Motion to
`Intervene
`Hulu, LLC’s Complaint In Intervention filed stamped October 28,
`2014
`Straight Path’s District Court Complaints Against LG, Toshiba, and
`Vizio
`Straight Path’s ITC Complaint and Relevant Exhibits
`Notice of Institution of Investigation (337-TA-892)
`LG Notice of Appearance
`Vizio Notice of Appearance
`Toshiba Notice of Appearance
`Straight Path’s Motion to Terminate
`Straight Path’s Reply in Support of its Motion to Terminate Based on
`Withdrawal of its Complaint
`2014-07-02 Email to counsel for LG, Toshiba and Vizio
`Excerpts from Webster’s Third New International Dictionary
`Reserved
`File History for Reexam Control No. 90/010422
`Joint Submission of Disputed Claim Terms (337-TA-892)
`October 26, 2012 Opinion and Order on claim construction in ICT v.
`Vivox (2:12-cv-00007) and ICT v. Stalker Software (2:12-cv-00009)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`Excerpt from QUE’S COMPUTER & INTERNET DICTIONARY (6th ed.
`1995)
`Reserved
`Excerpt from MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`
`vi
`
`

`
`2023
`2024
`2025
`2026
`2027
`2028
`2029
`
`2030
`
`2031
`
`2032
`2033
`2034
`2035
`2036
`2037
`2038
`2039
`
`’704 Patent File History
`Reserved
`’469 Patent File History
`Declaration of Michael C. Newman
`Biography of Michael C. Newman
`Modifying WINS Server Defaults (Produced at depo)
`Straight Path v. Bandwidth.com, Inc., Memo & Order Construing
`Claims, 2014 U.S. Dist. Lexis 25394 (Feb. 25, 2014)
`Reserved
`Barron’s – Dictionary of Computer and Internet Terms (5th Ed.),
`page 18.
`Dictionary of Computer Words (1995), page 196.
`Modifying WINS Server Defaults
`Definition of “Status”
`Excerpts from Microsoft Computer Dictionary (1997)
`Excerpts from Oxford Dictionary of Current English (1999)
`Aug. 6, 2015 deposition transcript of Bruce Maggs
`‘469 Declaration of Stuart Stubblebine
`May 26, 2015 deposition transcript of Henry Houh
`
`vii
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`I.
`
`Introduction
`
`In the Board’s Decision (Paper No. 20, “Institution Decision”), it instituted
`
`inter partes review of Straight Path IP Group’s U.S. Patent No. 6,009,469 on only
`
`the following Grounds, references, and claims identified in Petitioners’ Petition:
`
`Ground
`
`References
`
`Basis
`
`Challenged Claims
`
`1
`
`2
`
`WINS, NetBIOS, & Pinard
`
`§ 103(a)
`
`1-3, 9, 10, 14, 17 and 18
`
`WINS & NetBIOS
`
`§ 103(a)
`
`5 and 6
`
`Petitioners have not met their burden of proving any of these challenged
`
`claims are unpatentable under these Grounds for at least the following reasons:
`
`
`
`“Process” vs. Computer or Computer Operating System:
`
`Petitioners wrongly identify a computer or a computer operating system to satisfy
`
`the claim elements drawn to a “process.” However, the term “process” as used in
`
`the ’469 patent means an “application program,” not a computer or its operating
`
`system. Petitioners’ expert, Dr. Bruce Maggs, admitted that “process” means an
`
`“application or computer program.” Because Petitioners do not identify an
`
`application program in either the WINS or NetBIOS references, they have not
`
`shown all elements of the ’469 patent claims are taught by these references.
`
`
`
`“Is Connected” vs. Registration: Contrary to Petitioners’ proposed
`
`construction, Dr. Maggs testified that all of the challenged claims require a query
`
`1
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`as to whether a process is connected to the computer network at the time of the
`
`query, which the references admittedly cannot do.
`
`
`
`No “Representing” Interface: The references do not disclose the
`
`“interface element representing a first callee process.” This limitation is required
`
`by all of the challenged claims except claim 1, but it was not construed by
`
`Petitioner, its expert, or the Board.
`
`
`
`Unique Identifier: The references do not teach the “unique
`
`identifier” required by claim 1.
`
`II.
`
`A.
`
`The Petition is Statutorily Barred
`This Inter Partes Review Should Not Have Been Instituted
`Because Hulu Previously Filed A Civil Action Challenging The
`Validity Of The ’469 Patent Claims
`The Board should not have instituted this inter partes review. Under 35
`
`U.S.C. § 315(a), “an inter partes review may not be instituted if, before the date on
`
`which the petition for such a review is filed, the petitioner or real party in interest
`
`filed a civil action challenging the validity of a claim of the patent.” Because Hulu
`
`filed a civil declaratory judgment action challenging the validity of the ’469 patent
`
`claims prior to filing the Petition, the Petition should not have been instituted.
`
`In August 2013, Straight Path filed suit against LG, Toshiba and Vizio in the
`
`Eastern District of Virginia. Hulu moved to intervene on October 3, 2014, and filed
`
`a declaratory judgment complaint. (See Ex. 2001). In its motion to intervene, Hulu
`
`2
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`stated that it was challenging the validity of the ’469 patent claims. (Id. at 9-10
`
`(“[Hulu] shares with its partners both their claims of invalidity regarding Straight
`
`Path’s patent and their defenses of non-infringement.”)). Hulu further sought
`
`“adjudication as to whether Straight Path’s patent are invalid.” Id. at 1. Hulu also
`
`stated that it sought a decision by the court “both as to invalidity and non-
`
`infringement.” (Ex. 2002 at 6). Hulu’s complaint requested a finding that “Hulu
`
`does not infringe…a valid claim, if any, of the ’469 Patent.” (Ex. 2003 at 5
`
`(emphasis added)). Thus, Hulu challenged the validity of all claims of the patent.
`
`Therefore, because Hulu filed a “civil action challenging the validity of all
`
`the claims of the [’469] patent” before filing this Petition, the requested inter
`
`partes review “may not be instituted.” 35 U.S.C. § 315(a).This bar applies all
`
`Petitioners, because “there is but a single party filing the petition, no matter how
`
`many companies are listed as petitioner.” 505 Games, Inc. v. Babbage Holdings,
`
`Inc., IPR2014-00954, Paper No. 17 at 2 (PTAB Aug. 22, 2014).
`
`B.
`
`This Inter Partes Review Should Not Have Been Instituted
`Because The Petition Was Filed More Than One Year After
`Service Of Straight Path’s ITC Complaint
`The Board did not have authority to institute this inter partes review because
`
`35 U.S.C. § 315(b) requires that “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
`
`which the petitioner . . . is served with a complaint alleging infringement of the
`
`3
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`patent.” Because Petitioners LG, Toshiba and Vizio were served with a complaint
`
`alleging infringement of the ’469 patent more than a year prior to the filing of the
`
`Petition, the Petition is time barred and should not have been instituted.
`
`1.
`
`Straight Path’s ITC Complaint Was Served On Petitioners
`More Than A Year Before They Filed Their Petition
`
`On August 1, 2013, Straight Path filed complaints against LG, Toshiba, and
`
`Vizio in both the International Trade Commission (“ITC”) and in the Eastern
`
`District of Virginia (“EDVA”). Each complaint alleged infringement of Straight
`
`Path’s ’469 patent. (See Ex. 2004). Straight Path made the same allegation in both
`
`the ITC and in the EDVA complaints, but the allegations in the ITC complaint
`
`were substantially more detailed. (Compare, e.g., Ex. 2004 with Ex. 2005, and
`
`Exhibits 10, 19, and 22 thereto). This is because the ITC has a higher pleading
`
`standard. See 19 C.F.R. § 210.12; see also Certain Integrated Circuit
`
`Telecommunication Chips and Products Containing Same, Including Dialing
`
`Apparatus, Inv. No. 337-TA-337, Order No. 63, 1992 ITC LEXIS 625, at 33 n.7
`
`(U.S.I.T.C. Aug. 28, 1992) (“[U]nlike notice pleading in a district court, the ITC
`
`requires fact pleading in section 337 proceedings.”). Straight Path’s ITC Complaint
`
`includes detailed infringement contentions. (See Ex. 2005).
`
`On September 4, 2013, the ITC served Straight Path’s Complaint on LG,
`
`Toshiba, and Vizio. (See Ex. 2006 at 2-5). Yet, LG, Toshiba, and Vizio waited for
`
`4
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`over a year before filing the present Petition on October 31, 2014. Ultimately
`
`Straight Path requested that the ITC Investigation be terminated so that the case
`
`could continue in district court. As a result, on July 18, 2014, the EDVA court re-
`
`opened Straight Path’s infringement actions against LG, Toshiba, and Vizio. In
`
`each case, the parties worked together to transfer the discovery obtained in the ITC
`
`for use in each district court case. (See Ex. 2012).
`
`2.
`
`The Petition is Untimely and Barred Under Section 315(b)
`
`That the complaint served on Petitioners was filed in the ITC rather than in
`
`civil court does not preclude application of the Section 315(b) bar. The language of
`
`Section 315(b) does not limit it to only “civil” complaints. Instead, the language of
`
`Section 315(b) makes clear that any complaint alleging patent infringement can
`
`trigger the one year statutory period. The Board’s Decision to institute goes
`
`directly against Federal Circuit. Texas Instruments, Inc. v. Tessera, Inc., 231 F.3d
`
`1325, 1330 (Fed. Cir. 2000) (“this court has consistently treated section 337 patent
`
`infringement proceedings as litigation.”)
`
`Moreover congress was careful not to limit Section 315(b). On February 28,
`
`2011, the Senate introduced an amendment, S.23 “Patent Reform Act of 2011,”
`
`which amended the text of a proposed version of Section 315(b) from requiring “a
`
`civil action” to requiring a “complaint.” See 157 Cong. Rec. S941 (daily ed. Feb.
`
`5
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`28, 2011) (emphasis added). The Senate introduced Amendment S.23 on January
`
`25, 2011, and passed a version on March 8, 2011 with “civil action” removed.
`
`The Section 315(b) bar is unaffected by the withdrawal of Straight Path’s
`
`ITC complaint. The parties continue to litigate the same claims raised in the ITC
`
`action in the co-pending district court cases. See, e.g., Histologics, LLC v. CDX
`
`Diagnostics, Inc. et al., IPR2014-00779, Paper 6 at 4-5 (PTAB Sept. 12, 2014)
`
`(denying inter partes review where patent owner’s action was dismissed, but same
`
`allegations against petitioner were in a co-pending case). Therefore, this IPR is
`
`barred under Section 315(b).
`
`III. Background And Overview Of The ’469 Patent
`
`The ’469 patent concerns a system for enabling “realtime point-to-point
`
`communications” between running computer applications connected to the same
`
`network.” (Ex. 1001 at 1:60-4, 2:31-8, 9:25-34, 10:14-5). Many application
`
`programs can be installed on a computer, but not all of them are typically running
`
`at the same time. (Ex. 2038 (Declaration of Stuart Stubblebine) at ¶ 12). Even if a
`
`computer is itself connected to a network such as the Internet (i.e., is “on-line”), at
`
`least some of the computer’s programs may still be off-line and unavailable for
`
`communication over the network. (Id.; see also Ex. 2037 (Deposition of Bruce
`
`Maggs) at 130:2-21). Because real-time point-to-point communications can only
`
`be established between applications that are on-line at the time the desired
`
`6
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`communication is sought, (Ex. 1001 at 7:57-9), the ’469 patent discloses a realtime
`
`point-to-point Internet communications protocol that enables: (1) a first computer
`
`program to query a connection server to determine if a second computer program is
`
`currently connected to the network, and (2) if the second computer program is
`
`connected, to obtain its existing network address so that the desired point-to-point
`
`communication can be established at the time it is sought. (Ex. 2038 at ¶ 13; Ex.
`
`1001 at 3:15-27, 5:18-32, 6:56-7:59, 11:64-12:28, claims 1, 2, 3, 5, 6).
`
`A.
`
`The Problems And Solutions Identified By The ’469 Patent
`
`The ’469 patent issued from a continuation-in-part application claiming
`
`priority to the application that issued as U.S. Patent No. 6,108,704, which was filed
`
`on September 25, 1995, when the Internet was in its infancy. (Ex. 1001 at [63]).
`
`The ’469 patent specification explains that the increased popularity of on-line
`
`services such as America Online spurred the development of computer programs
`
`that provide on-line services such as realtime video conferencing. (Ex. 1001 at
`
`1:60-2:4, 2:30-7, 9:25-34, 10:14-5).
`
`When repeatedly logging on and off of the Internet, programs may receive a
`
`new, temporary (or “dynamically allocated”) IP address each time they reconnect
`
`to the network. (Ex. 2038 at ¶ 14; Ex. 1001 at 2:17-29, 6:56-7:3, 7:49-59).
`
`Unlike permanent IP addresses that do not change, these “dynamic” IP
`
`addresses made it difficult to establish communications between computer
`
`7
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`programs that (a) are not permanently connected to the network and (b) may have a
`
`new, as-yet-unknown IP address when they reconnect to the network. (Ex. 2038 at
`
`¶ 15; Ex. 1001 at 2:30-8). The ’469 patent solved these two problems. (Ex. 2038 at
`
`¶ 16; Ex. 1001 at 3:15-27, 6:56-7:59, 9:25-34, 11:64-12:28, claims 1, 2, 3, 5, 6).
`
`The ’469 patent solved the problem of realtime point-to-point
`
`communications between computer programs that are not permanently connected
`
`to a network and may have a new IP address each time they reconnect to a network
`
`by providing a real-time point-to-point Internet communications protocol for:
`
`(1) determining whether a specific, targeted computer program is currently
`
`running and connected to a network; (2) determining that computer program’s
`
`address on the network at the time the communication is sought; and
`
`(3) establishing a point-to-point communication with that computer program. (Ex.
`
`1001 at 3:15-27, 6:56-7:59, 9:25-34, 11:64-12:28, claims 1, 2, 3, 5, 6).
`
`In one embodiment, the disclosed protocol works as follows: a first user who
`
`is connected to the Internet or other computer network (the caller) and who wishes
`
`to communicate with another user over the Internet launches an application
`
`program on her computer or her Personal Digital Assistant (“PDA”) and connects
`
`that program to the network. (Ex. 2038 at ¶ 17; Ex. 1001 at 5:18-24, 6:1-7, 6:62-5,
`
`11:64-12:1). This program, which can be written in C++, then transmits its IP
`
`address to a “connection server,” which, among other things, may then determine
`
`8
`
`

`
`Case IPR2015-00198
`U.S. Patent No. 6,009,469 C1
`
`whether other programs are on-line and available for communication, and if so,
`
`facilitate communications between different on-line programs. (Ex. 2038 at ¶¶ 17,
`
`26; Ex. 1001 at 5:18-32, 6:66-7:5, 7:30-59, 11:64-12:12). From this initial
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`transmission, the connection server obtains and stores the first user’s then-current
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`dynamic IP address in a database. (Ex. 2038 at ¶ 17; Ex. 1001 at 6:66-7:5). This
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`initial transmission also establishes the first user’s computer program as an “active
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`on-line party” in the connection server database. (Ex. 2038 at ¶ 17; Ex. 1001 at
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`7:5-9, 7:31-6, 7:44-59).
`
`But the first user’s program may later disconnect from the network, and
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`therefore no longer be an “active on-line party” available for a point-to-point
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`communication. (Ex. 2038 at ¶ 18; Ex. 1001 at 7:44-57). Accordingly, to determine
`
`if the user’s program is actually connected to the network and available for
`
`communication, the specification discloses that “[w]hen a user logs off or goes off-
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`line from the Internet 24, the connection server 26 updates the status of the user in
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`the database 34; for example by removing the user’s information.” (Ex. 2038 at ¶
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`18; Ex. 1001 at 7:44-57). The connection server could also use a status flag to
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`identify that a registered program is off-line. (Id.)
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`Like the first user, a second user (the callee) may also start an application on
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`his connected computer or PDA, thereby storing his then-current IP address in the
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`connection server database and establishing his program as active and on-line. (Ex.
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`2038 at ¶ 19; Ex. 1001 at 7:9-13, 11:64-12:1). The first user’s program can attempt
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`to initiate a point-to-point connection with the second user’s program by sending a
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`request to the connection server. (Ex. 2038 at ¶ 19; Ex. 1001 at 5:18-20, 7:20-30,
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`11:64-12:1, 12:18-23).
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`In response to the first user’s request, the connection server will search its
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`database to determine if the second user’s program is on-line. (Ex. 2038 at ¶ 19;
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`Ex. 1001 at 7:33-6, 12:18-25). If it is on-line, the connection server will then
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`forward the IP address of the second user’s program to the first program, which
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`then uses that IP address to establish the point-to-point communication between
`
`itself and the second user’s program (without intermediation by the connection
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`server). (Ex. 2038 at ¶ 19; Ex. 1001 at 5:18-20, 7:36-43, 12:1-9, 23-8). If, however,
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`the second program is not on-line at the time the first program makes its query,
`
`then the connection server sends the first program an “off-line” signal or message.
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`(Ex. 2038 at ¶ 20; Ex. 1001 at 7:44-59, 12:4-12). The connection server will send
`
`the first program an “off-line” signal or message when the second program is not
`
`currently connected to the network and is flagged as off-line, even if that second
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`program’s name and address remain stored in (or registered with) the connection
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`server. (Ex. 2038 at ¶ 20; Ex. 1001 at 7:44-59, 12:4-12). Thus, as described in the
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`’469 patent specification, whether a computer program is currently connected to
`
`the network or on-line is not and cannot be determined by whether its name and
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`address are registered with a connection server, for the program may be so
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`registered and yet be off-line. (Ex. 1001 at 7:44-57).
`
`1.
`
`The ’469 Patent Also Describes the Use of a Display Screen
`and Various Interface Elements.
`
`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.” (Ex. 1001 at 10:34-54, FIGS. 5 and 6).
`
`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
`
`Ex. 1001 at 10:63-11:1). Similarly, a 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 [shown in Figure 6].” (Ex. 1001 at 11:19-26).
`
`B.
`
`The Challenged ’469 Patent Claims.
`
`Petitioner challenges the validity of independent claim 1 (and its dependent
`
`claims 2 and 3), independent claim 5 (and its dependent claim 6), independent
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`claim 9 (and its dependent claims 14, 17, and 18), and claim 10 (which depends
`
`from claim 8).
`
`1.
`
`The challenged claims concern computer programs, not
`computer operating systems.
`All the challenged claims concern individual processes running on a
`
`computer system. The claims do not concern the computer system itself. The
`
`preambles of the independent claims makes this distinction clear. For example,
`
`claim 1 claims a “computer program product for use with a computer system . . .”
`
`(Ex. 1001 at claim 1) (emphasis added). Claim 1 is thus directed toward a
`
`computer program that is executed by the computer system. It does not claim the
`
`computer system itself.
`
`Petitioners’ own expert, Dr. Maggs, admitted at his deposition that the claim
`
`term “process” should be construed to mean “a running instance of a computer
`
`application or program.” (Ex. 2037 at 112:13-113:14). This definition comports
`
`with the ’469 patent’s claims and specification. The specification states that “[t]he
`
`first processing unit 12 may operate the disclosed point-to-point Internet protocol
`
`by a computer program.” (Ex. 1001 at 5:18-19.) Dr. Maggs admitted that this
`
`disclosure was probably an application program, as opposed to a component of an
`
`operating system (Ex. 2037 at 112:2-13), let alone the operating system itself.
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`Petitioners offer no construction for the term “process.” Yet Petitioners
`
`previously admitted that Patent Owner’s construction is correct. Straight Path
`
`accused Petitioner of infringing the ’469 patent in the United States International
`
`Trade Commission (Inv. No. 337-TA-892) (the “892 Investigation”). In that
`
`litigation, the parties submitted a “Joint Submission of Disputed Claim Terms,” in
`
`which Petitioner agreed that the correct construction of the claim term “process” is
`
`a “running instance of a computer program or application.” (Ex. 2016 at 12). This
`
`is the same construction that Straight Path proposes here.
`
`The correct construction of “process” was also 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), the district court construed
`
`“process” as a “running instance of a computer program or application.” (Ex. 2029
`
`at 3-4). In ICT v. Vivox (2:12-cv-00007) and ICT v. Stalker Software (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. 2017 at 3).
`
`2.
`
`The challenged claims require the determination of whether
`a process is currently connected to the computer network,
`not whether it was previously connected.
`
`All of the challenged claims except for claims 1, 2, and 5 require a query
`
`and/or determination of whether the target process is currently connected to the
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`computer network (is currently “on-line” or “accessible”) not whether the process
`
`was connected at some previous time. (Ex. 1001 at claim 6, see also id. at claims 3,
`
`9, 10, 14, 17, 18). Petitioners’ expert, Dr. Maggs admitted at his deposition that the
`
`challenged claims require a query as to whether a process is connected to the
`
`computer network at the time of the query. (Ex. 2037 at 88:4-89:8, 105:18-106:2,
`
`177:23-178:7).
`
`3.
`
`The challenged claims also require “a user interface
`element representing a first