Case No. IPR2015-00198
`Patent No. 6,009,469
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`Paper No. ___________
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`
`
`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.,
`
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`________________
`
`Case No. IPR2015-001981
`Patent No. 6,009,469
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`6,009,469
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`
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`
`
`
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`1 IPR2015-01400 has been joined with this proceeding.
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`
`
`
`Patent No. 6,009,469
`
`Paper No. ___________
`
`
`
`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.,
`
`Petitioner,
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`________________
`
`Case No. IPR2015-001981
`Patent No. 6,009,469
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`6,009,469
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`
`
`
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
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`I.
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`INTRODUCTION
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`Patent Owner’s opposition is remarkable for what it admits. Patent Owner
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`concedes that WINS, NetBIOS, and Pinard disclose all of the following elements:
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`“point-to-point communication;” “point-to-point communication link;” “program
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`code for determining the currently assigned network protocol address . . . upon
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`connection to the computer network;” and “determining the currently assigned
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`network protocol address . . . upon connection to the computer network.” Resp.
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`57–58.2 Left with precious little territory on which to defend the ’469 patent,
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`Patent Owner must deploy five last-ditch arguments, each of which is contradicted
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`by prior rulings, the ’469 patent itself, and the prior-art references.
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`First, Patent Owner recycles its statutory-bar argument that the Board
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`already rejected in its Decision instituting trial. Paper 24 at 6–9. Several other
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`panels are in accord. See Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-
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`00022, Paper 166 at 14 (P.T.A.B. Sept. 2, 2014) (“A civil action for a declaratory
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`judgment of non-infringement is not a civil action challenging the validity of a
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`2 This reply brief uses the following abbreviations: “the ’469 patent” means U.S.
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`Pat. No. 6,009,469; “WINS” means the user manual for Version 3.5 of Microsoft’s
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`Windows NT Server software (Ex. 1003); “NetBIOS” means the NetBIOS
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`Technical Standard (Ex. 1004); “Pinard” means U.S. Patent No. 5,533,110 to
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`Deborah Pinard et al. (Ex. 1020).
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`1
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`patent.”); Brinkman Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 at 7–8
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`(P.T.A.B. Mar. 23, 2015) (holding that service of an International Trade
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`Commission complaint does not trigger the one-year bar). Those decisions are
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`correct, and Patent Owner offers no new reason to revisit them.
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`Second, although no construction of the term “process” is necessary, WINS
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`and NetBIOS disclose a “process” even under Patent Owner’s proposed
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`construction: “a running instance of a computer program or application.” WINS in
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`combination with NetBIOS teaches a process for registering and tracking the on-
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`line status of an instance of the Windows NT 3.5 or Windows for Workgroups 3.11
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`operating system running on a computer coupled to the network. An operating
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`system is a computer program, and therefore constitutes a “process” under Patent
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`Owner’s construction.
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`Third, Patent Owner’s proposed construction of the terms “connected to the
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`computer network,” “on-line,” and “accessible” as excluding registration with a
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`server impermissibly excludes every embodiment in the patent and is therefore
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`erroneous as a matter of law. See Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
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`790 F.3d 1298, 1304 (Fed. Cir. 2015).
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`Fourth, a person of ordinary skill in the art would have been motivated to
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`combine the user interface of Pinard with a WINS/NetBIOS system. The ’469
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`patent itself teaches that one of ordinary skill in the art understood how to
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`2
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`substitute one user interface for another. See Ex. 1001 at 15:34-39 (“[O]ther
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`graphic user interface environments such as those compatible with the Macintosh,
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`X-Windows or OS/2 operating systems, may be substituted via the Plug and Play
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`protocol, as would be understood by those reasonably skilled in the arts.”). And
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`Pinard contains an express teaching that it may be combined with the Windows
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`operating system.
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`Fifth, the “unique identifier” limitation is disclosed by WINS and NetBIOS.
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`Indeed, the WINS Manual states that the WINS name is a “unique identifier[].”
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`Ex. 1003 at 64. And NetBIOS—which WINS incorporates—discloses that “[a]n
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`application, representing a resource, registers one or more names that it wishes to
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`use.” Ex. 1004 at 378. Therefore, the WINS/NetBIOS name satisfies the unique
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`identifier limitation under all proposed constructions.
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`Because each of Patent Owner’s arguments lack merit, Petitioner
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`respectfully requests that the Board determine that claims 1–3, 5, 6, 9, 10, 14, 17,
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`and 18 of the ’469 patent are unpatentable.
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`II.
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`PATENT OWNER’S STATUTORY BAR ARGUMENTS
`CONTRADICT PRIOR BOARD RULINGS.
`As the Board concluded in its May 15, 2015 Decision instituting inter partes
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`review, Petitioner was not barred from filing its Petition under 35 U.S.C. § 315.
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`Paper 24 6–9.
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`3
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`A. Hulu’s Complaint in Intervention sought only a declaration of
`non-infringement.
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`Patent Owner argues that Petitioner Hulu pled a cause of action for
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`invalidity in its intervention complaint. Prelim. Resp. 4. That is demonstrably
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`false. Hulu’s Complaint in Intervention only alleges a cause of action for
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`noninfringement. See, e.g., Ex. 2003 at 2 (“Hulu seeks a declaratory judgment of
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`non-infringement”), 3–4 (describing Hulu’s three causes of action). Indeed, the
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`words “invalid” and “invalidity” do not appear anywhere in Hulu’s Complaint in
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`Intervention. See generally Ex. 2003. As the Board has explained, “[a] civil
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`action for a declaratory judgment of non-infringement is not a civil action
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`challenging the validity of a patent.” Ariosa Diagnostics, IPR2012-00022, Paper
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`166 at 14 (emphasis added). That is because the statutory bar applies only to a
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`petitioner that “filed a civil action challenging the validity of a claim of the patent”
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`before filing its petition for inter partes review. 35 U.S.C. § 315(a)(1) (emphasis
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`added).
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`Patent Owner attempts to avoid the unambiguous language of Hulu’s
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`Complaint in Intervention by selectively quoting Hulu’s Motion to Intervene.
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`Patent Owner cites no decision holding that language in a motion to intervene can
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`transform the allegations in a complaint, with good reason. Hulu bore the burden
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`of demonstrating the propriety of its intervention in the district court case against
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`its partners LGE, Toshiba, and VIZIO; it logically followed that Hulu would
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`4
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`describe all of the interests it shared with those partners, including those partners’
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`affirmative defenses and counterclaims of invalidity. See, e.g., Ex. 2001 at 10–11
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`(describing commonalities between Hulu and its partners). But Hulu’s arguments
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`in favor of intervention do not—indeed, cannot—alter the plain language of Hulu’s
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`Complaint in Intervention, which explicitly and solely asserted causes of action for
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`declaratory judgment of non-infringement and requested relief related to non-
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`infringement. See Ex. 2003 at 2–5. Hulu’s complaint therefore complies with
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`Section 315(a)(1), as the Board has already concluded. Paper 24 at 6–7.
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`B.
`The Petition was timely under Amkor and Brinkman.
`The one-year limitations period on petitions for inter partes review relates to
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`“Patent Owner’s Action” and starts to run on “the date on which the petitioner . . .
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`is served with a complaint alleging infringement[.]” 35 U.S.C. § 315(b).
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`Petitioner filed this Petition before November 6, 2014, within the one-year period
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`after Patent Owner first served complaints against LGE, Toshiba, and VIZIO in its
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`civil actions in the Eastern District of Virginia.
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`As the Board determined in its Decision instituting trial in this matter, the
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`earlier ITC investigation involving LGE, Toshiba, and VIZIO did not start the
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`Section 315(b) clock. Paper 24 at 8–9. The Board has consistently concluded
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`elsewhere that Section 315(b) applies to service of a complaint only in a civil
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`action and not to administrative proceedings such as an ITC investigation. See
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`5
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`
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`Brinkman Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 at 7–8 (P.T.A.B.
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`Mar. 23, 2015); Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 at
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`10–12 (P.T.A.B. Jan. 31, 2014). “[H]ad Congress intended for arbitration, ITC, or
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`other non-judicial proceedings to trigger the time bar for section 315(b), it would
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`have used more encompassing language than ‘Patent Owner’s Action’ and ‘served
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`with a complaint,’ which are harmonious with a civil action.” See Amkor,
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`IPR2013-00242, Paper 98 at 11 (emphasis added). Patent Owner’s argument that
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`Section 315(b) applies to ITC investigations—which Amkor and Brinkman
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`explicitly addressed and rejected—fails.3
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`III. WINS AND NETBIOS SATISFY THE “PROCESS” LIMITATION.
` “[C]laim construction is a matter of resolution of disputed meanings and
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`technical scope [and] not an obligatory exercise in redundancy.” U.S. Surgical
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`Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). The Board is “not
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`(and should not be) required to construe every limitation present in a patent’s
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`asserted claims.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
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`3 Patent Owner’s time-bar argument fails for the additional reason that the ITC
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`investigation was terminated due to Patent Owner’s voluntary withdrawal of the
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`complaint, which was necessarily a termination without prejudice. See Ariosa
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`Diagnostics, IPR2012-00022, Paper 166 at 17.
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`6
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`1351, 1362 (Fed. Cir. 2008). Instead, the Board need construe a claim term only
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`where there is an “actual dispute” about the term’s meaning. Id. at 1360.
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`There is no need for the Board to construe the term “process” in the ’469
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`patent. Patent Owner proposes that “the Board should . . . apply process’s ordinary
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`meaning . . . .” Petitioner agrees with Patent Owner that for purposes of inter
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`partes review, the plain and ordinary meaning of “process” will suffice.
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`Even were there a need to construe “process,” WINS and NetBIOS satisfy
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`Patent Owner’s construction: “a running instance of a computer program or
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`application.” Resp. 26. WINS explains that its system can execute the Windows
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`NT or Windows for Workgroups operating system running on a first computer and
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`communicating with a second Windows NT or Windows for Workgroups
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`operating system running on a second computer and a WINS/NetBIOS server over
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`a computer network. See, e.g., Ex. 1003 at 29, 67, 118–19; Ex. 1002 at ¶¶ 85-86.
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`A running operating system satisfies Patent Owner’s construction of “process”
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`because it qualifies as “a running instance of a computer program.” Ex. 1041 ¶ 6
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`(“A person of ordinary skill in the art of the ’469 patent understood that an
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`operating system is a type of a computer program.”); see also Ex. 2037 at 29,
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`112:2–10.
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`Patent Owner’s position that an operating system does not constitute “a
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`running instance of a computer program” contravenes recent Federal Circuit
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`7
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`precedent. In Ancora Techs., Inc. v. Apple, Inc., the Federal Circuit addressed this
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`very issue and rejected the argument that the ordinary meaning of the term
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`“program” excludes operating systems. 744 F.3d 732, 734–35 (Fed. Cir. 2014).
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`“[T]he ordinary meaning of the word ‘program’ in the computer context
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`encompasses both operating systems and the applications that run on them (as well
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`as other types of computer programs).” Id.
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`Patent Owner cites no evidence that the ’469 patent clearly and expressly
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`disclaims this ordinary meaning of the word “program.” “Absent evidence that a
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`patentee unequivocally imparted a novel meaning to the term or expressly
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`relinquished claim scope during prosecution,” a limitation is given its full ordinary
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`and customary meaning. Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
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`Inc., 344 F.3d 1186, 1194 (Fed. Cir. 2003) (internal quotation marks and brackets
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`omitted); see also Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362,
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`1366–67 (Fed. Cir. 2012) (“To constitute disclaimer, there must be a clear and
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`unmistakable disclaimer.”). The ’469 patent nowhere unequivocally or expressly
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`instructs that an operating system cannot be a “process,” or that an operating
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`system is distinguishable from a “program,” or that “process” or “program” are
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`defined idiosyncratically for purposes of the patent. Ex. 1041 ¶¶ 7-8. Each
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`specification excerpt cited by Patent Owner merely sets forth non-limiting
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`examples of computer programs, or relates to the commonsense notion that
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`8
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`applications can run on an operating system, which is itself a computer program.
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`Id. Consequently, those terms should be given their ordinary meaning, under
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`which WINS discloses an operating system satisfying the “process” limitation.
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`Even assuming, arguendo, that “process” could be narrowly construed to
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`exclude operating systems within the context of the patent, NetBIOS discloses
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`registering and tracking the on-line status of applications. Ex. 1041 ¶ 28. “An
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`application, representing a resource, registers one or more names that it wishes to
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`use.” Ex. 1004 at 378; see also Ex. 1004 at 377 (“NetBIOS applications employ
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`NetBIOS mechanisms to locate resources, establish connections, send and receive
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`data with an application peer, and terminate connections.”); id. at 379 (“A session
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`is a reliable message exchange, conducted between a pair of NetBIOS
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`applications.”). Indeed, NetBIOS explicitly teaches that a first NetBIOS
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`application connected to the computer network receives a unique, registered name
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`from the server, queries the server to determine whether other NetBIOS
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`applications are connected to the computer network, and uses the received network
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`protocol address of a second NetBIOS application to establish a point-to-point
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`communication link. Ex. 1004 at 378-79, 395; Ex. 1041 ¶¶ 28-33.
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`The Board agreed in the Sipnet decision, holding that NetBIOS “is a
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`software interface that allows applications on different computers to communicate
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`within a computer network . . . . NetBIOS applications employ mechanisms to
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`9
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`locate resources, establish connections, send and receive data with an application
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`peer, and terminate connections. A NetBIOS session is the exchange of messages
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`between a pair of NetBIOS applications.” Ex. 1029 at 13 (emphases added). The
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`“process” limitation is therefore disclosed by NetBIOS even if it is limited to
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`applications.
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`Regardless, querying the on-line status of a process—instead of the online
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`status of a processing unit—is “mere[ly the] substitution of one element for
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`another known in the field, . . . yield[ing] a predictable result.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 416 (2007); see also Ex. 1041 ¶¶ 23-26. Patent
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`Owner’s expert concedes that WINS discloses “‘registering and querying computer
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`names on an internetwork.’” Ex. 2038 ¶ 38 (quoting Ex. 1003 at 121). One of
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`ordinary skill in the art would have been motivated to substitute registration of an
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`operating system or computer in WINS with registration of an application, an
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`implementation in NetBIOS. Ex. 1041 ¶ 26. The results of the substitution would
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`have been predictable in light of the explicit disclosure of their functionality.
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`IV. WINS AND NETBIOS SATISFY THE “CONNECTED TO THE
`NETWORK,” “ON-LINE STATUS,” AND “ACCESSIBLE”
`LIMITATIONS.
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`The ’469 patent expired on September 25, 2015, and therefore the Board
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`“will apply the district court standard for claim construction as outlined in Phillips
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`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).” Paper 24 at 9–10.
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`10
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`Under Phillips, claim terms are generally given their ordinary and customary
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`meaning, defined as “the meaning that the term would have to a person of ordinary
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`skill in the art in question at the time of the invention.” 415 F.3d at 1312–13. That
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`person “is deemed to read the claim term not only in the context of the particular
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`claim in which the disputed claim term appears, but in the context of the entire
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`patent, including the specification.” Id. at 1313.
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`A.
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`Patent Owner’s proposed construction is incorrect as a matter of
`law
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`Patent Owner’s proposed construction, which would require determining
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`with certainty whether a “process” is in fact currently “connected to the network,”
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`“on-line,” or “accessible” at the time of the query should be rejected, because it
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`excludes the disclosed embodiments. See Resp. 12-14. There is no support for
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`Patent Owner’s argument that the “on-line,” “connected,” and “accessible” claim
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`terms should be interpreted to require an absolute guarantee that a process is
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`currently connected to the computer network, is currently running, or is currently
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`available. See Resp. 36; see also Ex. 1041 ¶¶ 9-22. To the contrary, that
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`interpretation would impermissibly read out every embodiment of the claims of the
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`’469 patent, which all determine on-line status by examining whether a process has
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`previously registered and not subsequently de-registered with the connection
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`server. See id. ¶¶ 9-10; see also Kaneka Corp. v. Xiamen Kingdomway Grp. Co.,
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`790 F.3d 1298, 1304 (Fed. Cir. 2015) (explaining that “[a] claim construction that
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`11
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`excludes a preferred embodiment is rarely, if ever, correct” and one “that excludes
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`all disclosed embodiments . . . is especially disfavored”) (internal quotation marks
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`omitted).
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`Patent Owner’s proposed construction excludes the disclosed embodiments
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`because the system disclosed in the embodiments is not able to reliably determine
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`the actual status of a process with certainty. According to the patent, the
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`connected, on-line, or accessible status information is stored in a database. Ex.
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`1001, 6:56-7:59. Registration with the server establishes a process as being active
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`and on-line: “[A] second user operating the second processing unit 22, upon
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`connection to the Internet 24 through an internet service provider, is processed by
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`the connection server 26 to be established in the database 34 as an active on-line
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`party.” Exhibit 1001, 7:9–13.
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`The patent discloses updating this status information based on a timestamp
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`in the database. Ex. 1001, 7:3–5, 7:9–13. The specification then explains that the
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`connection server may “use the time stamps to update the status of each processing
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`unit; for example, after 2 hours, so that the on-line status information stored in the
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`database [] is relatively current. Other predetermined time periods, such as a
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`default value of 24 hours, may be configured by a systems operator.” Id, 7:14–19
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`(emphasis added). Once registered with the server, the patents teach that “[n]o
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`further interaction occurs between the respective WebPhone client processes and
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`12
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`the global server unless the WebPhones require directory or search assistance
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`about a prospective callee.” Id. at 23:44–47; see also Ex. 1041 ¶¶ 10-14.4
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`Patent Owner’s only argument in support of its construction is the patent’s
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`disclosure that “[w]hen a user logs off or goes off-line from the Internet, the
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`connection server updates the status of the user in the database; for example, by
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`removing the user’s information, or by flagging the user as being off-line.” ’469
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`patent 7:49-52. Instead of supporting Patent Owner’s construction, that disclosure
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`merely confirms that both on-line and off-line status can occur only after
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`registration in the database.
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`Moreover, these methods are unable to reliably determine with certainty
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`whether a “process” is in fact currently “connected to the network,” “on-line,” or
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`4 Dr. Maggs did not admit, as Patent Owner claims, that “the challenged claims
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`require a query as to whether a process is connected to the computer network at the
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`time of the query.” Resp. 14. To the contrary, Dr. Maggs strongly refuted that
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`assertion, pointing out that it would be “physically impossible” for a server to
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`know immediately whether a computer has undergone a non-graceful shutdown
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`and that this practical reality is reflected in the ’469 patent’s discussion of
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`“relatively current” on-line status information. See Ex. 2037 at 18, 66:16–68:17;
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`see also id. at 45, 176:19–177:4.
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`13
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`“accessible” at the time of the query. See Ex. 2037 at 46, 178:3–7; 18, 66:3–7.
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`The ’469 patent discloses no way to determine whether a process “is connected to
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`the computer network” other than by consulting the connection server database.
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`Ex. 1041 ¶ 37 (citing Ex. 1001 at 7:32-35 (“The connection server 26 then searches
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`the database 34 to determine whether the callee is logged-in by finding any stored
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`information corresponding to the callee’s E-mail address indicating that the callee
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`is active and on-line.”)). As a result, the system disclosed in the ’469 patent can, at
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`best, determine whether a process “is connected to the network” on a “relatively
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`current” basis. Id. (citing Ex. 1001, 7:14-19). Therefore, Patent Owner’s proposed
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`construction should be rejected for the additional reason that it is not enabled. See
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`Wang Laboratories, Inc. v. America Online, Inc., 197 F. 3d 1377, 1383 (Fed. Cir.
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`1999) (holding that the construction of the claim term “frame” should be limited to
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`the character-based systems described in the patent, even though the parties agreed
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`that the its plain and ordinary meaning also covered other systems, because only
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`character-based systems were enabled by the specification).
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`Petitioner’s proposed construction should be adopted
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`B.
`Petitioner’s proposed construction—“registered with the server and not
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`subsequently un-registered ”—is the appropriate construction of the claim terms
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`“connected to the computer network,” “connection to the computer network, “on-
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`line,” and “accessible” in the context of the entire patent, including the
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`14
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`specification’s teaching that on-line status information need only be “relatively
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`current.” This is consistent with the Board’s construction of “connected to the
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`computer network” in Sipnet, which—while decided under the broadest reasonable
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`construction standard—is nevertheless informative here. The Sipnet Board
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`concluded that that term should be construed to “encompasses being ‘on-line,’
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`which can be done by registering an address with the server.” Ex. 1029 at 6.
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`Petitioner’s proposed construction is consistent with the distinction between the
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`“broadest reasonable construction” standard that the Board previously used and the
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`more restrictive Phillips approach that now governs this proceeding. In particular,
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`by including the language “and not subsequently unregistered,” Petitioner accounts
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`for the patent’s disclosure that processes may log off from the connection server,
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`after which they would not be regarded as “on-line” or “connected to the network.”
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`Ex. 1001 at 7:52–57 (“The connection server 26 may be instructed to update the
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`user’s information in the database 34 by an off-line 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 26.”); see also Ex. 1041 ¶ 15.
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`C. WINS and NetBIOS satisfy the constructions proposed by the
`Sipnet Board, Petitioner, and Patent Owner
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`Patent Owner does not contest that WINS and NetBIOS satisfy the Sipnet
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`Board’s construction. Pet. 34–36; Resp. 47–48. Regardless of whether the Board
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`adopts the construction in Sipnet or applies Petitioner’s proposed narrower
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`15
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`construction—“registered with the server and not subsequently un-registered”—
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`WINS and NetBIOS disclose these elements. NetBIOS teaches that “[n]ame query
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`transactions are initiated by end-nodes [first process] to obtain the IP address(es)
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`and other attributes associated with a NetBIOS name” of a second process, and that
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`the name server tracks which registered processes are still connected to the
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`network. Ex. 1004 at 406, 458. “Names held by [a NetBIOS server] are given a
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`lifetime during name registration” and the server “will consider a name to have
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`been silently released if the end-node fails to send a name refresh message to the
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`[server] before the lifetime expires.” Id. at 396, 400–01. The names held by the
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`server are therefore kept relatively current, which is precisely what the disclosed
`
`embodiment requires. If a name contained in a name query request is registered
`
`with the server, the server will return a positive name query response to the first
`
`process, including the IP address of the second process. Id.at 395, 407–08, 413,
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`449, 459. But if the name is not found in the directory, the server will return a
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`negative name query signifying that the name requested does not exist. Id. at 395,
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`407, 413, 460.
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`Similarly, WINS discloses that, in accordance with “a NetBIOS over TCP/IP
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`mode of operation defined in RFC 1001/1002 as p-node,” Windows NT software
`
`enables a first process to transmit a “name query request” to the WINS/NetBIOS
`
`server to determine whether a second process is connected to the network. Ex.
`
`
`
`16
`
`
`
`
`
`1003 at 41, 65, 73–74, 121. The WINS/NetBIOS server “contain[s] a dynamic
`
`database mapping computer names to IP addresses.” Id. at 65, 69, 72. WINS
`
`keeps its mapping of names to IP addresses relatively current by tracking which
`
`users are still connected to the network, including through the use of time stamps
`
`that cause automatic release and expiration of registrations that are not timely
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`renewed. Id. at 69 (“[W]hen dynamic addressing through DHCP results in new IP
`
`addresses for computers that move between subnets, the changes are automatically
`
`updated in the WINS database.”); id. at 75 (if a network device fails to re-register
`
`its name within the set “renewal time,” “the WINS server will mark the name as
`
`released and available for use.”).
`
`Moreover—just as the patent specification contemplates—when a computer
`
`shuts down in an orderly fashion, its name will be de-registered from the WINS
`
`server. See Ex. 1001 at 7:49–52 (“When a user logs off or goes off-line from the
`
`Internet [], the connection server [] updates the status of the user in the database []
`
`for example, by removing the user’s information, or by flagging the user as being
`
`offline.”). “Whenever a computer is shut down properly, it releases its name to the
`
`WINS server, which marks the related database entry as released . . . because it
`
`knows that the old client is no longer using that name.” Ex. 1003 at 75; see also
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`Ex. 2037 at 15, 56:14–19 (Dr. Maggs testifying that “when a device gracefully
`
`leaves the network, it sends a message to a DHCP server saying I’m no longer
`
`
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`17
`
`
`
`
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`going to participate in network communications” and that the server “can reclaim
`
`the IP address” in case another device needs it).
`
`Patent Owner attempts to argue that the combination of WINS and NetBIOS
`
`does not track “non-graceful” ways for leaving a network, because, for example,
`
`“[s]hutting [a] computer off . . . will not release [a] computer’s name.” Resp. 49.
`
`Patent Owner’s own expert admitted that the two examples he provided of such a
`
`shut-down—a computer freezing or a user disconnecting a laptop from the Internet
`
`connection and closing the laptop—could also occur in a disclosed embodiment of
`
`the patent and result in an identically “non graceful” departure. Ex. 2040 at 66:9-
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`:23. Additionally, Patent Owner ignores NetBIOS’s disclosure of implicit release,
`
`which addresses precisely that scenario. Ex. 1041 ¶ 38-40. “A common way to
`
`stop using a PC is to turn it off; in this case, the graceful give-back mechanism,
`
`provided by the Delete Name function, is not used.” Ex. 1004 at 360. Instead, in
`
`this circumstance, NetBIOS implements one type of implicit name release, a
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`“silent release.” “Silent release typically occurs when an end-node fails or is
`
`turned off.” Id. at 377. Like the “time stamp” disclosed in the specification of the
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`’469 patent, NetBIOS “[n]ames held by an NBNS are given a lifetime during name
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`registration. The NBNS will consider a name to have been silently released if the
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`end-node fails to send a name refresh message to the NBNS before the lifetime
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`expires. A refresh restarts the lifetime clock.” Id. at 396. NetBIOS also discloses
`
`
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`18
`
`
`
`
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`other types of implicit name release—“name challenge” and “polling”—both of
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`which track the online status of processes that have been shut down abruptly. Ex.
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`1041 ¶¶ 39-40.
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`The Board should ignore as irrelevant Patent Owner’s arguments that other
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`embodiments in the WINS and NetBIOS references allow for permanent IP
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`addresses and replication servers. See, e.g., Resp. 20 (“[T]he references allow for
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`permanent static computer name-to-IP address mappings that cannot even be
`
`challenged or removed.”), 21 (“WINS systems employ multiple WINS servers that
`
`are often out of synch with each other.”). Whether or not the prior art discloses
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`these features is immaterial because Petitioner is relying on the name-server
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`embodiment with dynamic IP address assignment that is expressly disclosed in the
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`references. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed.
`
`Cir. 2005) (observing that a disclosure is prior art to the extent of its enabling
`
`disclosure even if alternatives are also disclosed); see, e.g., Ex. 1002, ¶ 50; 1003 at
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`13, 23, 57–58, 62, 65, 83, 85–121, 265; see also Ex. 1041 ¶¶ 41-42; Ex. 2037 at
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`54, 210:7–12 (Dr. Maggs observing that “[t]he fact that WINS has an optional
`
`functionality that you don’t even have to use” does not have any bearing on this
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`inter partes review).
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`Regardless, even applying a construction that does not acknowledge the role
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`of the connection server—e.g., Patent Owner’s proposal, “available for
`
`
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`19
`
`
`
`
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`communication”—WINS renders this limitation obvious because the express
`
`purpose of the system it discloses is to provide for “communication.” See, e.g., Ex.
`
`1003 at 67 (“[W]hen NT_PC1 [e.g., a first computer running the Windows NT
`
`operating system] wants to communicate with NT_PC2 [e.g., a second computer
`
`running the Windows NT operating system], it queries the WINS server for the
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`address of NT_PC2 [e.g., of the first computer running the Windows NT operating
`
`system] … [and] gets the appropriate address [e.g., of the first computer running
`
`the Windows NT operating system] from the WINS server …..”). And both WINS
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`and NetBIOS contain numerous mechanisms to determine that the subject
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`processes are “available for communication” at the time of the query. See Ex.
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`1041 ¶¶ 36-44 (describing registration, explicit name release, implicit name
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`release, and polling).
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`Patent Owner argues that the words “is” and “status” “require a
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`determination of whether a process (a computer program) is connected to the
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`computer network at the time of the query.” Resp. 40. When the ’469 patent
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`speaks about “on-line” status or the status of being “connected to the computer
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`network,” it is not speaking about actual, current status, but rather whatever the
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`status of a process (incorrect and out of date as it might be) that is reflected in the
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`server’s database. See, e.g., Ex. 1001, at 7:17; Ex. 1004 ¶ 45. Regardless, WINS
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`and NetBIOS satisfy the “is” and “status” limitations under both their plain and
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`
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`20
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`
`
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`ordinary meaning and Patent Owner’s proposed construction. Both WINS and
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`NetBIOS determine the online status of a process by checking the registration
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`database at the time the query is sent to the WINS and NBNS servers. See, e.g.,
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`Exhibit 1003 at 67 (“[W]hen NT_PC1 wants to communicate with NT_PC2, it
`
`queries the WINS server for the address of NT_PC2. When NT_PC1 gets the
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`appropriate address from the WINS server, it goes directly to NT_PC2 without
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`broadcasting.”); id. at 73 (“If the name is found in the WINS database, the client
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`can establish a session based on the address mapping received from WINS.”);
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`Exhibit 1004 at 406 (“Name query transactions are initiated by end-nodes to obtain
`
`the IP address(es) and other attributes associated with a NetBIOS name.”); id. at
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`407 (“An NBNS answers queries from a P node with a l
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