UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS, INC., et al.,
`Petitioner
`v.
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE
`COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`Case IPR No.: IPR2015-00198
`
`
`
`MOTION TO CORRECT CLERICAL ERROR PURSUANT TO
`37 C.F.R. 42.104c
`In accordance with the Board’s Order (Paper 6) authorizing Petitioner to file a
`
`motion seeking to correct a clerical error, LG Electronics, Inc. (“LGE”), Toshiba Corp.
`
`(“Toshiba”), VIZIO, Inc. (“VIZIO”), and Hulu, LLC (“Hulu”) (collectively
`
`“Petitioners”) file this Motion to Correct a Clerical Error Pursuant to 37 CFR 42.104(c)
`
`to replace an exhibit inadvertently filed in IPR2015-00198 with the correct version of
`
`that exhibit, which was served on the Patent Owner November 5, 2014.
`
`No fees are believed to be due with this filing. If any additional fees are due, the
`
`undersigned authorizes the Office to charge such fees to Deposit Account No. 06-0916.
`
`- 1 -
`
`

`

`
`
`Applicable Rule
`Rule 42.104(c) states: “A motion may be filed that seeks to correct a clerical or
`
`typographical mistake in the petition. The grant of such a motion does not change the
`
`filing date of the petition.”
`
`Facts
`Petitioner LGE together with LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm U.S.A., Inc. were named in a complaint alleging infringement of three
`
`patents including U.S. Patent No. 6,009,469 (“the ’469 patent”), which complaint was
`
`served on Petitioner LGE on November 6, 2013. Petitioner Toshiba together with
`
`Toshiba America Information Systems, Inc. and Toshiba America, Inc. were named in a
`
`similar complaint alleging infringement of the same three patents, which complaint was
`
`served on Toshiba America Information Systems, Inc. and Toshiba America, Inc. on
`
`November 7 and November 6, 2013, respectively. Petitioner Toshiba agreed to waive
`
`service of process on July 14, 2014. Petitioner VIZIO was named in a similar complaint
`
`alleging infringement of the same three patents and was served with the complaint on
`
`November 7, 2013. 1
`
`
`1 On October 24, 2014, Petitioner Hulu, Inc. intervened in the action Straight Path IP
`
`Group, Inc. v. VIZIO, Inc. et al., No. 1:13-cv-00934-AJT-IDD, pending in the Eastern
`
`District of Virginia. Patent Owner has not served a complaint on Petitioner Hulu.
`
`- 2 -
`
`

`

`On October 31, 2014, Petitioners filed a Petition for Inter Partes Review with
`
`respect to the ’469 patent (“IPR2015-00198”). IPR2015-00198 was accorded a filing
`
`date of October 31, 2014. (Notice of Filing Date, Paper 3).
`
`In the process of filing IPR2015-00198, a clerical error was made that resulted in
`
`an incorrect document being uploaded to the Patent Review Processing System
`
`(“PRPS”) as Exhibit 1002. (Jiron Decl. at ¶ 5). After discovering the error on November
`
`4, 2014, the correct exhibit was served on the Patent Owner and provided to the Board
`
`on November 5, 2014. (Jiron Decl. at ¶ 7). The clerical error is limited to the document
`
`uploaded to PRPS as Exhibit 1002.
`
`Attached is the correct Exhibit 1002 , which was intended to be uploaded as
`
`Exhibit 1002 to the petition for IPR2015-00198 and which was served on the Patent
`
`Owner November 5, 2014.
`
`Relief Requested
`Petitioners request the following relief:
`
`• Petitioner asks that originally filed Exhibit 1002 be expunged from
`
`IPR2015-00198 and replaced with corrected Exhibit 1002.
`
`• Petitioner asks that the filing date of October 31, 2014, be maintained for
`
`IPR2015-00198 in view of the correction of this clerical error.
`
`Analysis
`As noted above, an incorrect document was included as Exhibit 1002 when the
`
`Petition for IPR2015-00198 was loaded to PRPS on October 31, 2014. Exhibit 1002
`
`- 3 -
`
`

`

`was intended to be the Declaration of Dr. Bruce M. Maggs in support of
`
`IPR2015-00198 for the ’469 patent. (Petition, Paper 1 at p. 7). As a result of an
`
`inadvertent clerical error, however, an incorrect declaration–i.e., the Declaration of Dr.
`
`Bruce M. Maggs in support of IPR2015-00196 for U.S. Patent No. 6,131,121 (“the ’121
`
`Patent”)–was uploaded instead. (Jiron Decl. at ¶¶ 4, 5). Specifically, the Declaration of
`
`Dr. Maggs in support of IPR2015-00196 for the ’121 Patent was inadvertently placed in
`
`the upload folder for the IPR2015-00198 petition, and therefore inadvertently
`
`submitted in support of that petition. As a result, the correct declaration—the
`
`Declaration of Dr. Maggs in support of the ’469 patent—was not submitted in support
`
`of the IPR2015-00198 petition at the time the petition was initially filed. A detailed
`
`description of the clerical error and Petitioners’ efforts to correct it follows.
`
`On October 31, 2014, the same day IPR2015-00198 was filed, Counsel filed two
`
`additional petitions, IPR2015-00196 and IPR2015-00209. (Jiron Decl. at ¶ 4). The
`
`additional petitions challenge patents related to the ’469 patent and rely on many of the
`
`same prior art references and exhibits as the petition for IPR2015-00198. Id.
`
`Supporting declarations for all three petitions were submitted by Dr. Bruce M. Maggs.
`
`Id. In all three petitions, Dr. Maggs’ Declaration is listed as Exhibit 1002. Id.
`
`On October 31, 2014, Counsels’ legal assistant, at Counsels’ direction, collected
`
`the three Declarations of Dr. Maggs for submission as Exhibit 1002 in the respective
`
`petitions and placed them, along with all other exhibits, into electronic directories.
`
`(Jiron Decl. at ¶ 5). During the creation of electronic directories to store the exhibits
`
`- 4 -
`
`

`

`for the three petitions, Exhibit 1002 for the IPR2015-00196 petition was inadvertently
`
`added into the folders for both the IPR2015-00196 and IPR2015-00198 petitions. Id. As
`
`a result, upon filing of the three petitions on October 31, 2014, the copy of Exhibit 1002
`
`corresponding to the IPR2015-00196 petition, was then inadvertently submitted as an
`
`exhibit to the IPR2015-00198 petition. Id.
`
`Counsel discovered the inadvertently filed exhibit late in the day on November 4,
`
`2014. On November 5, 2014, Counsel emailed the Board requesting permission to
`
`expunge the incorrect version of Exhibit 1002 from IPR2015-00198 and replace it with
`
`the correct version of Exhibit 1002. (Jiron Decl. at ¶ 7). Counsel included in its
`
`correspondence to the Board a copy of the correct Exhibit 1002 for IPR2015-00198.
`
`Id. That same day, Counsel sent an email to the Patent Owner’s litigation counsel,
`
`informing them of the inadvertently filed exhibit and serving the correct version of the
`
`exhibit. Id. Also on November 5, Counsel sent cover letters via Federal Express to
`
`both Patent Owner’s litigation counsel and its counsel of record before the USPTO for
`
`the ’469 patent enclosing hard copies of the correct Exhibit 1002 for IPR2015-00198.
`
`Id.
`
`There is no prejudice to Patent Owner by granting this motion. First, Patent
`
`Owner was served with the correct version of the Dr. Maggs Declaration (Exhibit 1002)
`
`on November 5, 2014, just three business days after the petition for IPR2015-00198
`
`was filed. Second, much earlier than November 5, 2014, Patent Owner had in its
`
`possession a virtually identical version of the Dr. Maggs Declaration corresponding to
`
`- 5 -
`
`

`

`the petition for IPR2015-00198. That is, the petition and Dr. Maggs Declaration for
`
`IPR2015-00198 are not new to the Patent Owner, as virtually identical versions of this
`
`petition and declaration were previously served on Patent Owner on August 1, 2014,
`
`upon initiation of an inter partes review proceeding captioned as IPR2014-01225
`
`(which was later terminated on October 30, 2014). See IPR2014-01225, Exhibit 1002;
`
`Paper 12. Because the Dr. Maggs Declaration in the ’1225 IPR proceeding is virtually
`
`identical to the correct version of the Dr. Maggs Declaration in IPR2015-00198, and
`
`because Patent Owner received the Dr. Maggs Declaration for the ’1225 IPR almost
`
`three months before IPR2015-00198 was filed, Patent Owner cannot have been
`
`prejudiced by a three-business day delay in receiving the correct version of the Dr.
`
`Maggs Declaration in IPR2015-00198.
`
`Enabling Petitioners to correct the clerical error in this case pursuant to Rule
`
`104c is appropriate. As the Board has previously noted, “[i]n analyzing the availability
`
`of correction under 37 C.F.R. § 42.104, the Board starts with the proposition that the
`
`rule is remedial in nature and is therefore entitled to a liberal interpretation.”
`
`(IPR2013-00063, Paper 21 at p. 7 (citation omitted)). Indeed, the Board has liberally
`
`granted relief even where the error was more significant than that in this case. For
`
`example, in IPR2013-00063, a legal assistant mistakenly uploaded to PRPS a transmittal
`
`letter, exhibit list, and petition all addressing the wrong patent. Id. at p. 4. In granting
`
`relief, the Board found that the error in “failing to upload the correct documents
`
`qualifies as clerical error under 37 C.F.R. § 42.104(c).” Id. at p. 7.
`
`- 6 -
`
`

`

`As explained in the accompanying detailed declaration of lead counsel Darren M.
`
`Jiron, the clerical error at hand is much less significant than that in IPR2013-00063.
`
`Whereas in IPR2013-00063, the petitioner failed to file the correct petition and other
`
`documents, here the clerical error was limited only to a single exhibit, which was
`
`virtually identical to a document already in the Patent Owner’s possession. And,
`
`Petitioner served the correct exhibit on the Patent Owner upon recognizing the error
`
`and within three business days of the original filing. (Jiron Decl. at ¶ 7).
`
`Further, the accorded filing date of October 31, 2014, should remain unchanged.
`
`Patent Owner’s contention that IPR2015-00198 should not be accorded a filing date
`
`until Petitioners file the correct exhibit (see IPR2015-00198, Paper 6 at 2) fails for two
`
`reasons. First, the Board has already assigned IPR2015-00198 a filing date of October
`
`31, 2014, the day the petition was filed. (IPR2015-00198, Paper 3). Second, pursuant to
`
`the express language of Rule 42.104(c), the grant of a motion to correct a clerical error,
`
`such as this one, “does not change the filing date of the petition.” 37 C.F.R. 42.104(c).
`
`As the Board has previously found, “the language of the rule means that granting the
`
`motion gives the moving party the date of the erroneous filing.” (IPR2013-00063,
`
`Paper 21 at p. 10). Indeed, the Board determined that accepting a Patent Owner’s
`
`position that the filing date of the petition should be the date on which a corrected
`
`exhibit is filed would render superfluous the express language of Rule 42.104(c). Id.
`
`For the foregoing reasons, Petitioners respectfully request that this Motion be
`
`granted and that Exhibit 1002 incorrectly filed with the petition for IPR2015-00198 on
`
`- 7 -
`
`

`

`October 31, 2014, be expunged and replaced with the correct copy of Exhibit 1002
`
`(which is attached and which was submitted to the Board on November 5, 2014).
`
`Petitioners also submit that the filing date for Petition IPR2015-00198 should remain
`
`the accorded filing date of October 31, 2014.
`
`
`
`Dated December 5, 2014
`
`Respectfully submitted,
`
`
`
`
`/Darren M. Jiron/
`Darren M. Jiron, Reg. No. 45,777
`Rajeev Gupta, Reg. No. 55,873
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Ave., NW
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`- 8 -
`
`

`

`CERTIFICATE OF SERVICE
`I certify that on December 5, 2014, I caused a copy of this Motion to Correct
`
`Clerical Error Pursuant to 37 CFR 42.104(c), including all attachments, exhibits, and
`
`documents therewith, to be served upon the Patent Owner by filing this document
`
`through the Patent Review Processing System as well as by delivering a copy via email to
`
`the following attorneys of record for the Patent Owner:
`
`Counsel for Patent Owner Straight Path IP Group, Inc.
`William A. Meunier (Reg. No. 41,193)
`Matthew D. Durell (Reg. No. 55,136)
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`
`Counsel for Petitioner Hulu, LLC
`Leo L. Lam (Reg. No. 38,528)
`Mattias Kamber (Pro hac vice pending)
`Keker & Van Nest LLP
`633 Battery St.
`San Francisco, CA 94111
`
`Counsel for Petitioner Toshiba Corp.
`Clint Conner (Registration No. 52,764)
`Paul Meiklejohn (Registration No. 26,569)
`Jennifer Spaith (Registration No. 51,916)
`Dorsey & Whitney
`50 South Sixth Street, Suite 1500
`Minneapolis, Minnesota 55402
`
`Counsel for Petitioner VIZIO, Inc.
`Kevin O’Brien (Registration No. 30,578)
`Richard V. Wells (Registration No. 53,757)
`Baker & McKenzie LLP
`815 Connecticut Avenue, N.W.
`Washington, D.C. 20006
`
`
`
`- 1 -
`
`

`

`Dated: December 5, 2014
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Darren M. Jiron/
`Darren M. Jiron, Reg. No. 45,777
`Rajeev Gupta, Reg. No. 55,873
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Ave., NW
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`
`
`
`
`
`
`- 2 -
`
`

`

`
`
`
`
`
`
`
`
`
`
`Exhibit 1002
`
`Exhibit 1002
`(corrected)
`(corrected)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LG ELECTRONICS, INC., et al.,
`Petitioners
`v.
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE
`COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,009,469
`Case IPR No.: To Be Assigned
`
`
`
`DECLARATION OF BRUCE M. MAGGS, PH.D.
`
`
`
`Page 1 of 78
`
`LG Electronics Exhibit 1002
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`PERSONAL AND PROFESSIONAL BACKGROUND ............................... 1
`I.
`II. MATERIALS REVIEWED AND CONSIDERED ........................................ 4
`III. THE BASICS OF NETWORK COMMUNICATION ................................... 6
`A.
`Computer Network Hardware Configurations ...................................... 6
`B.
`Network Protocols ................................................................................. 8
`C.
`Assigning Network Addresses to Devices ............................................ 9
`D. Mapping Names to IP Addresses ........................................................ 13
`E.
`Looking Up the IP Address of a Network Device, Including
`Those With Dynamically Assigned Addresses ................................... 14
`Point-to-Point Communications .......................................................... 17
`F.
`G. User Interfaces ..................................................................................... 18
`IV. SUMMARY OF THE ’469 PATENT ........................................................... 19
`A.
`Summary of the Alleged Invention ..................................................... 19
`1.
`Step 1: Processing Units Obtain Dynamically Assigned IP
`Addresses .................................................................................. 20
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with a Connection Server ........................................ 20
`Steps 3 & 4: First Processing Unit Sends Query to
`Connection Server, Which Returns IP Address of Second
`Processing Unit ......................................................................... 21
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communication with Second
`Processing Unit ......................................................................... 22
`Using a “User Interface” to Control the Process ...................... 23
`5.
`Original Prosecution of the ’469 patent .............................................. 24
`B.
`Prior Ex Parte Reexamination of the ’469 patent ............................... 24
`C.
`The Sipnet Inter Partes Review for the ’704 Patent ........................... 26
`D.
`V. OVERVIEW OF THE PRIMARY PRIOR ART REFERENCES ................ 27
`A. WINS (Ex. 1003) ................................................................................. 27
`
`4.
`
`2.
`
`3.
`
`Page 2 of 78
`
`

`

`B.
`
`3.
`
`4.
`
`1.
`
`2.
`
`3.
`
`4.
`
`Step 1: Processing Units Obtain Dynamically Assigned IP
`Addresses from DHCP Servers ................................................. 28
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with the WINS Server ............................................. 30
`Steps 3 & 4: First Processing Unit Sends Query to WINS
`Server and Receives the IP Address of the Second
`Processing Unit ......................................................................... 34
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communication with Second
`Processing Unit ......................................................................... 35
`NetBIOS (Ex. 1004) ............................................................................ 36
`1.
`Step 1: Processing Units Have Assigned IP Addresses ............ 37
`2.
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with the NBNS ........................................................ 38
`Steps 3 & 4: First Processing Unit Sends Query to the
`NBNS and Receives the IP Address of the Second
`Processing Unit ......................................................................... 39
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communications with Second
`Processing Unit ......................................................................... 40
`Pinard (Ex. 1020) ................................................................................ 41
`C.
`VI. SPECIFIC GROUNDS FOR PETITION ...................................................... 45
`A.
`Claims 1-3, 5-6, 9-10, 14, and 17-18 Would Have Been Obvious
`Over WINS, NetBIOS, and Pinard...................................................... 45
`1.
`Level of Ordinary Skill in the Art ............................................. 48
`2.
`One Skilled in the Art Would Have Been Motivated to
`Combine WINS, NetBIOS and Pinard ..................................... 49
`Claim 1 (Independent) .............................................................. 51
`Claim 2 (Depends From Claim 1) ............................................. 59
`Claim 3 (Depends From Claim 2) ............................................. 60
`Claim 9 (Independent) .............................................................. 63
`Claim 10 (Depends From Claims 8/9) ...................................... 67
`Claim 14 (Depends From Claim 9) ........................................... 68
`Claim 17 (Depends From Claim 9) ........................................... 70
`
`3.
`4.
`5.
`6.
`7.
`8.
`9.
`
`Page 3 of 78
`
`

`

`B.
`
`10. Claim 18 (Depends From Claim 17) ......................................... 71
`Ground II: Claims 5 and 6 Would Have Been Obvious Over
`WINS and NetBIOS. ........................................................................... 71
`1.
`One Skilled in the Art Would Have Been Motivated to
`Combine WINS and NetBIOS. ................................................. 72
`Claim 5 (Independent) .............................................................. 72
`2.
`Claim 6 (Depend From Claim 5) .............................................. 73
`3.
`VII. CONCLUSION .............................................................................................. 74
`
`
`Page 4 of 78
`
`

`

`I, Bruce M. Maggs, Ph.D., declare:
`
`1.
`
`I have been retained by counsel for the Petitioners to submit this
`
`declaration in connection with Petitioners’ Petition for Inter Partes Review of
`
`Claims 1-3, 5-6, 9-10, 14, and 17-18 of U.S. Patent No. 6,009,469 (“the ’469
`
`patent”) (Ex. 1001). I am being compensated for my time at a rate of $700 per hour,
`
`plus actual expenses. My compensation is not dependent in any way upon the
`
`outcome of this Petition.
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND
`
`2.
`
`I am an expert in the field of computer systems and networking,
`
`including network communication protocols and database design. I have studied,
`
`taught, practiced, and researched in the field of Computer Science for approximately
`
`twenty-five years.
`
`3.
`
`I received a Ph.D. in Computer Science from the Massachusetts
`
`Institute of Technology in 1989, a Master of Science degree in Electrical
`
`Engineering and Computer Science from the Massachusetts Institute of Technology
`
`in 1986, and a Bachelor of Science degree in Computer Science from the
`
`Massachusetts Institute of Technology in 1985.
`
`4.
`
`I have been a Professor of Computer Science at Duke University since
`
`July 2009, where I first served as a Visiting Professor, and then became a tenured
`
`full Professor in January 2010. On July 1, 2011, I became the Pelham Wilder
`
`Page 5 of 78
`
`

`

`Professor of Computer Science in the Trinity College of Arts and Sciences at Duke.
`
`Prior to joining Duke, I was a full Professor of Computer Science at Carnegie
`
`Mellon University. I joined Carnegie Mellon as an Assistant Professor in January
`
`1994, was promoted to Associate Professor in July 1997, was given tenure in July
`
`1999, and was promoted to full Professor in 2004. From September 2007 through
`
`August 2008, I was a Visiting Professor in the Department of Computer Science at
`
`Duke University, and from September 1998 through January 1999, I was a Visiting
`
`Associate Professor
`
`in
`
`the Electrical Engineering and Computer Science
`
`Department at the Massachusetts Institute of Technology.
`
`5.
`
`At Carnegie Mellon and Duke, I have taught a variety of courses related
`
`to the ’469 patent. For example, at Carnegie Mellon, I taught undergraduate courses
`
`titled “Introduction to Computer Systems” and “Computer Networks.” At Duke, I
`
`taught a graduate course on “Computer Networks and Distributed Systems.” In
`
`these courses, students are asked to perform programming assignments such as
`
`building a web server, or building a web proxy. I have also taught related courses at
`
`Carnegie Mellon, such as a graduate course on “Basic Computer Systems” and an
`
`undergraduate course on “Operating System Design and Implementation.”
`
`6.
`
`I have had extensive experience in both industry and academia as it
`
`relates to the technical fields relevant here. I helped launch Akamai Technologies, a
`
`leading provider of services for accelerating content and business processes on the
`
`Page 6 of 78
`
`

`

`Internet. I retain a part-time role at Akamai as Vice President for Research. I also
`
`worked as a research scientist at the NEC Research Institute, Inc. for approximately
`
`four years, where I conducted research on networking and parallel computing.
`
`7.
`
`I have lectured and published extensively on computer systems and
`
`networking, including lectures and papers relating to content delivery over the
`
`Internet, improved network routing, database scalability and management, server
`
`reliability, the Domain Name System, source location, data management, and
`
`peer-to-peer networks.
`
`8.
`
`Governmental agencies, such as the National Science Foundation and
`
`the Defense Advanced Research Projects Agency, and industrial grants from, for
`
`example, Sun Microsystems and NEC Research Institute, have provided funding for
`
`my research. My federally and corporately funded research has addressed areas
`
`such as computer networking and Internet protocol and system designs.
`
`9.
`
`Additionally, I was elected to the Council of the Association for
`
`Computing Machinery, and have served as a member of the DARPA Information
`
`Science and Technology Study Group. I have also served three times on the
`
`program committee of the premier conference in computer networking, ACM
`
`SIGCOMM, served on both the Program and Steering Committees of the ACM
`
`Internet Measurement Conference, and chaired the first IEEE Workshop on Hot
`
`Topics in Web Systems and Technologies.
`
`Page 7 of 78
`
`

`

`10. A copy of my curriculum vitae is attached as Exhibit 1015, which
`
`contains further details on my education, experience, publications, patents, and other
`
`qualifications to render an expert opinion in connection with this proceeding.
`
`II. MATERIALS REVIEWED AND CONSIDERED
`
`11.
`
`In connection with my work on this matter, I have reviewed the ’469
`
`patent (BX. 100]) and the following other documents:
`
`1001
`
`.S. Patent No. 6,009,469 (“’469 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`II eclaration of Bruce M. Maggs, Ph.D. (“Maggs Decl.”)
`
`|
`
`|
`
`icrosoft Windows NT Server Version 3.5 (“WINS”)
`
`echnical Standard: Protocols for X/Open PC Interworking: SMB,
`ersion 2 (“NetBIOS”)
`
`tentionally Left Blank
`
`11,2013)
`
`indows NT Server 3.5 TCP/IP Documentation [TCPIPHLP]
`
`indows NT Server Copyright Registration
`
`indows NT Networking Guide
`
`indows NT Networking Guide Copyright Registration
`
`etition for Inter Partes Review of US. Patent No. 6,108,704, Sipnet
`US.R. 0. v. Straight Path IP Group, Inc. (IPR No. 2013-00246) (Apri
`
`101 1
`
`|
`
`stitution Decision in Sipnet EU SR. 0. v. Straight Path [F Group, Inc.
`IPR No. 2013-00246) (Oct. 11, 2013)
`
`Page 8 of 78
`
`

`

`m
`
`1012
`
`1013
`
`1014
`
`1015
`
`traight Path IP Group, Inc. v. Bandwidthcom, Inc. et al., No.
`1:13-cv-0932 (E.D.V-A. Feb. 25, 2014) (Dkt. 107, Claim Construction
`0 rder)
`
`II TF RFC 1541, October 1993 (“Dynamic Host Configuration
`I' otocol”) (“DHCP”)
`
`Il TF RFC 1034, November 1987 (“Domain Names — Concepts And
`I acilities”) (“Domain Names RFC 1034”)
`
`ll TF RFC 1035, November 1987 (“Domain Names - Implementation
`. d Specification”) (“Domain Names RFC 1035”)
`
`
`
`1016
`
`Il TF RFC 791, September 1981 (“Internet Protocol”)
`
`1017
`
`urriculum Vitae of Dr. Bruce M. Maggs
`
`1018
`
`| xcerpt from File History for US. Patent No. No. 6,108,704
`December 2, 1997 Amendment)
`
`1019
`
`.S. Patent No. 5,159,592 (“Perkins”)
`
`1020
`
`.S. Patent No. 5,533,110 (“Pinard”)
`
`1021
`
`| xcerpt from File History for ’469 Patent (Oct. 26, 1998 Amendment)
`
`1022
`
`| xcerpt from File History for ’469 Patent (Mar. 8, 1999 Amendment)
`
`1023
`
`1024
`
`| xcerpt from File History for ’469 Patent (Apr. 20, 1998 Non-Final
`I' ejection)
`
`| xcerpt from File History for ’469 Patent (Oct. 19, 1999 Notice of
`‘ llowance)
`
`-I xcerpt fromReexaminationFile Historyfor ’469 Patent (Aug. 25,
`
`r 009 Office Action)
`
`Page 9 of 78
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`.1...
`
`1026
`
`1027
`
`1028
`
`| xcerpt from Reexamination File History for ’469 Patent (May 10,
`v 010 Final Office Action)
`
`| xcerpt from Reexamination File History for ’469 Patent (Nov. 25,
`r 009 Declaration)
`
`| xcerpt from Reexamination File History for ’469 Patent (July 12,
`v 010 Second Declaration)
`
`nc. (IPR No. 2013—00246) (Oct. 9, 2014) 1029
`
`| inal Written Decision in Sipnet EU S.R.0. v. Straight Path IP Group,
`
`I also have relied on my academic and professional experience in reaching the
`
`opinions expressed in this declaration.
`
`III. THE BASICS OF NETWORK CONINIUNICATION
`
`A.
`
`Computer Network Hardware Configurations
`
`12.
`
`The ’469 patent does not claim to invent a new type of networking
`
`technology or network hardware.
`
`Indeed, networking components such as
`
`computers, servers, routers, and gateways were all well known in the art when the
`
`’469 patent was filed in September 1996, and when the application to which the ’469
`
`patent claims priority was filed in September 1995.
`
`13.
`
`There are many possible network configurations. One example is a
`
`“Local Area Network” or “LAN” which interconnects computers within a limited
`
`geographic area such as a home, school, computer laboratory, or office building.
`
`Another type of network configuration is a “Wide Area Network” or “WAN,” which
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`connects computers over a broad geographic area, such as across a city, a country, or
`
`internationally. The Internet is a widely known example of a WAN. A LAN can be
`
`connected to a WAN, such as the Internet, via a gateway that acts as an interface
`
`between the LAN and the WAN. These types of network configurations were well
`
`known before September 1995, and the ’469 patent does not claim to invent a new
`
`type of network configuration.
`
`14.
`
`In addition, it also was well known before September 1995 how to
`
`couple one type of network (e.g., a LAN) with one or more other types of networks
`
`(e.g., a WAN or the Internet). For example, as shown below, in October 1990, U.S.
`
`Patent No. 5,159,592 to Perkins (“Perkins”) (Ex. 1019) disclosed a communication
`
`area network 1 that includes one or more local area networks (LANs 3 and 4) that
`
`(via local gateway 16 and global gateway 18) are “coupled to remote network users
`
`who may be dispersed over a wide geographic area”:
`
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`
`
`(Ex. 1019, 3:56-68, 4:21-27, Fig. 2.)
`
`B. Network Protocols
`15. There were many network protocols in existence long before
`
`September 1995. For example, the ’469 patent references several prior art protocols,
`
`including the Transmission Control Protocol and Internet Protocol (TCP/IP), the
`
`Serial Line Internet Protocol (SLIP), the Point-to-Point Protocol (PPP), the Post
`
`Office Protocol (POP) and Simple Mail Transfer Protocol (SMTP). (Ex. 1001,
`
`2:5-13 (explaining “devices interfacing to the Internet and other online services may
`
`communicate with each other” using the “Internet Protocol (IP)” or “Serial Line
`
`Internet Protocol or Point-to-Point Protocol (SLIP/PPP)”); id., 5:7-9 (discussing
`
`POP and SMTP).)
`
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`16. As of the claimed priority date of the ’469 patent, many network
`
`communication protocols had been standardized by the Internet Engineering Task
`
`Force (“IETF”), which codifies protocols in documents called “Requests for
`
`Comments” or “RFCs” that are widely distributed and used by engineers in
`
`designing networks and network products. The IETF first defined the Internet
`
`Protocol (“IP”) in RFC 791 (published in September 1981), which led to the
`
`“Internet Protocol” standard in 1981. (Ex. 1016.) The Internet Protocol forms the
`
`basis of the modern Internet and other computer networks. As I discuss further
`
`below, among other things, the Internet Protocol Suite provides mechanisms for
`
`network devices to identify themselves on a network (via a network address and/or
`
`name), and to locate and communicate with other devices also participating on the
`
`network.
`
`C. Assigning Network Addresses to Devices
`17. As the ’469 patent explains, the prior art Internet Protocol identifies
`
`devices participating on the network using a unique series of numbers, commonly
`
`represented as four values ranging from 0 to 255, separated by periods (e.g.,
`
`151.207.247.130). (Ex. 1001, 2:17-23 (“Devices such as a host computer or server
`
`of a company may include multiple modems for connection of users to the Internet,
`
`with a temporary IP address allocated to each user. For example, the host computer
`
`may have a general IP address XXX.XXX.XXX.10, and each user may be allocated
`
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`a successive IP address of XXX.XXX.XXX.11, XXX.XXX.XXX.12, etc.”).) As I
`
`discuss further below, the Internet Protocol provided a way for a networked device
`
`having one IP address to direct data to another networked device with a different IP
`
`address.
`
`18. Some IP addresses are “static.” Assigning static addresses typically
`
`requires a user or network administrator to configure the device manually with the
`
`static address. The idea of assigning static network addresses was known before
`
`September 1995, and the ’469 patent does not claim to invent a new way to assign
`
`static network addresses. (Ex. 1001, 2:30-35 (discussing prior art use of
`
`“[p]ermanent IP addresses of users and devices accessing the Internet” and
`
`“dedicated IP addresses”).)
`
`19. As the number of networked computers increased significantly during
`
`the 1980s, concerns increased about a shortage of available IP addresses. One way
`
`that network engineers addressed this issue was to assign “dynamic” IP addresses to
`
`devices – a process in which a host or server assigns an IP address to a first device,
`
`can re-assign that address to another device (e.g., after a certain period of time, or
`
`when the first device is turned off or moves outside of the network), and assigns a
`
`new IP address to the first device if the first device later seeks to resume
`
`participation on the network.
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`20. The idea of assigning IP addresses dynamically was well known before
`
`September 1995, and the ’469 patent does not claim to invent a new way to assign
`
`addresses. (Ex. 1001, 2:23-29 (explaining that, in the prior art, “temporary IP
`
`addresses may be reassigned or recycled to the users, for example, as eac