Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 54
`Entered May 9, 2016
`
`
`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., AVAYA, INC.,
`VERIZON SERVICES CORP., and
`VERIZON BUSNESS NETWORK SERVICES INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`_____________
`
`Case IPR2015-001961 (Patent 6,131,121 C1)
`Case IPR2015-001982 (Patent 6,009,469 C1)
`Case IPR2015-002093 (Patent 6,108,704 C1)
`_____________
`
`
`
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`1 IPR2015-01397 and IPR2015-01407 were joined with this proceeding.
`2 IPR2015-01400 was joined with this proceeding.
`3 IPR2015-01398 and IPR2015-01406 were joined with this proceeding.
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`I.
`
`INTRODUCTION
`A. Background
`LG Electronics, Inc. (“LG”), Toshiba Corp.(“Toshiba”), VIZIO, Inc.
`(“VIZIO”), and Hulu, LLC (“Hulu”) filed three Petitions requesting inter
`partes review of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of U.S.
`Patent No. 6,108,704 C1 (209 Ex. 1001,4 “the ’704 patent”), claims 1–3, 5,
`6, 9, 10, 14, 17, and 18 of U.S. Patent No. 6,009,469 C1 (198 Ex. 1001, “the
`’469 patent”), and claims 3, 4, and 6‒14 of U.S. Patent No. 6,131,121 C1
`(196 Ex. 1001, “the ’121 patent”). 209 Paper 1 (“209 Pet.”); 198 Paper 1
`(“198 Pet.”); 196 Paper 1 (“196 Pet.”). Straight Path IP Group, Inc. (“Patent
`Owner”) filed a Preliminary Response. 209 Paper 15 (“209 Prelim. Resp.”);
`198 Paper 19 (“198 Prelim. Resp.”); 196 Paper 15 (“196 Prelim. Resp.”).
`On May 15, 2015, pursuant to 35 U.S.C. § 314, we instituted inter partes
`review in each case as follows:
`
`
`
`
`4 Citations are preceded by “209” to designate IPR2015-00209, “198” to
`designate IPR2015-00198, or “196” to designate IPR2015-00196. Unless
`noted otherwise, all citations are to IPR2015-00209.
`
` 2
`
`
`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`Case
`
`Claims Instituted Basis
`
`IPR2015-00209
`
`IPR2015-00209
`
`IPR2015-00198
`
`IPR2015-00198
`
`1
`11, 12, 14, 16, 19,
`22, 23, 27, 30, and
`31
`1–3, 9, 10, 14, 17,
`and 18
`5 and 6
`
`§ 103(a)
`
`§ 103(a)
`
`References
`WINS5 and
`NetBIOS6
`§ 103(a) WINS, NetBIOS,
`and Pinard7
`§ 103(a) WINS, NetBIOS,
`and Pinard
`WINS and
`NetBIOS
`WINS and
`NetBIOS
`209 Paper 20 (“209 Dec.”); 198 Paper 24 (“198 Dec.”); 196 Paper 20
`(“196 Dec.”).
`After institution of inter partes review, Cisco Systems, Inc. (“Cisco”)
`and AVAYA, Inc. (“AVAYA”) filed three Petitions and Motions to Join the
`IPR2015-00209, IPR2015-00198, and IPR2014-00196 proceedings.
`IPR2015-01398, Papers 3, 4; IPR2015-01400, Papers 3, 5; IPR2015-01397,
`Papers 2, 3. Verizon Services Corp. and Verizon Business Network
`Services Inc. (collectively, “Verizon”) also filed two Petitions and Motions
`to Join the IPR2015-00209 and IPR2015-00196 proceedings. IPR2015-
`01406, Papers 1, 3; IPR2015-01407, Papers 1, 3. We granted these motions
`and joined Cisco, AVAYA, and Verizon to these inter partes reviews.
`
`IPR2015-00196
`
`3, 4, 6‒14
`
`§ 103(a)
`
`
`5 Microsoft Windows NT 3.5, TCP/IP User Guide (1994) (Ex. 1003,
`“WINS”).
`6 The Open Group, Technical Standard, Protocols For X/Open Pc
`Interworking: SMB, Version 2.0 (1992) (Ex. 1004, “NetBIOS”).
`7 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1020, “Pinard”).
`
` 3
`
`
`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`209 Papers 36, 39; 198 Paper 40; 196 Papers 38, 41. We refer to LG,
`Toshiba, VIZIO, Hulu, Cisco, AVAYA, and Verizon collectively as
`“Petitioner.”
`Patent Owner filed a Response in each case (209 Paper 30, “209 PO
`Resp.”; 198 Paper 34, “198 PO Resp.”; 196 Paper 32, “196 PO Resp.”), and
`Petitioner filed a Reply (209 Paper 37, “209 Pet. Reply”; 198 Paper 41,
`“198 Pet. Reply”; 196 Paper 39, “196 Pet. Reply”). Subsequent to Patent
`Owner’s Response and Petitioner’s Reply, the United States Court of
`Appeals for the Federal Circuit issued its decision in Straight Path IP Grp.,
`Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (“Straight Path”).
`See Ex. 2042. Petitioner filed additional briefing in light of Straight Path
`(209 Paper 47, “209 Addʼl Br.”; 198 Paper 50, “198 Addʼl Br.”;
`196 Paper 49, “196 Addʼl Br.”) and Patent Owner filed a response to
`Petitioner’s additional briefing (209 Paper 50, “209 PO Add’l Resp.”;
`198 Paper 53, “198 PO Add’l Resp.”; 196 Paper 52, “196 PO Add’l Resp.”).
`Oral hearing was held on February 9, 2016, and the hearing transcript was
`entered in the record. 209 Paper 53; 198 Paper 56; 196 Paper 55 (“Tr.”).8
`Petitioner also filed a Motion to Exclude Evidence (209 Paper 45, “209
`Mot.”; 198 Paper 48, “198 Mot.”; 196 Paper 47, “196 Mot.”), Patent Owner
`filed an Opposition to Petitioner’s Motion to Exclude Evidence (209 Paper
`49, “209 Opp. Mot.”; 198 Paper 52, “198 Opp. Mot.”; 196 Paper 51,
`“196 Opp. Mot.”), and Petitioner filed a Reply to Patent Owner’s Opposition
`
`
`8 The hearing transcript is the same for all three cases.
`
` 4
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`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`to Petitioner’s Motion to Exclude Evidence (209 Paper 52, “209 Reply
`Mot.”; 198 Paper 55, “198 Reply Mot.”; 196 Paper 54, “196 Reply Mot.”).
`The following table summarizes the papers filed by the parties:
`Case No.
`IPR2015-00209
`IPR2015-00198
`IPR2015-00196
`Paper 1
`Paper 1
`Paper 1
`Petition
`(“209 Pet.”)
`(“198 Pet.”)
`(“196 Pet.”)
`Preliminary
`Paper 15 (“209
`Paper 19 (“198
`Paper 15 (“196
`Response
`PO Resp.”)
`PO Resp.”)
`PO Resp.”)
`Decision to
`Paper 20
`Paper 24
`Paper 20
`Institute
`(“209 Dec.”)
`(“198 Pet.”)
`(“196 Pet.”)
`Paper 30 (“209
`Paper 34 (“198
`Paper 32 (“196
`PO Response
`PO Resp.”)
`PO Resp.”)
`PO Resp.”)
`Petitioner’s
`Paper 37 (“209
`Paper 41 (“198
`Paper 39 (“196
`Reply
`Pet. Reply”)
`Pet. Reply”)
`Pet. Reply”)
`Petitioner’s
`Paper 47 (“66
`Paper 50 (“198
`Paper 49 (“196
`Additional
`Add’l Br.”)
`Add’l Br.”)
`Add’l Br.”)
`Briefing
`Patent
`Owner’s
`Response to
`Additional
`Briefing
`Petitioner’s
`Motion to
`Exclude
`Opposition to
`Motion to
`Exclude
`Reply to
`Opposition to
`Motion to
`Exclude
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`Paper 49 (“209
`Opp. Mot.”)
`
`Paper 52 (“198
`Opp. Mot.”)
`
`Paper 51 (“196
`Opp. Mot.”)
`
`Paper 52 (“209
`Reply Mot.”)
`
`Paper 55 (“198
`Reply Mot.”)
`
`Paper 54 (“196
`Reply Mot.”)
`
` 5
`
`
`
`
`
`Paper 50 (“209
`PO Add’l Resp.”)
`
`Paper 53 (“198
`PO Add’l Resp.”)
`
`Paper 52 (“196
`PO Add’l Resp.”)
`
`Paper 45
`(“209 Mot.”)
`
`Paper 48
`(“198 Mot.”)
`
`Paper 47
`(“196 Mot.”)
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`For the reasons discussed below, we are not persuaded that Petitioner has
`shown by a preponderance of the evidence that claims 1, 11, 12, 14, 16, 19,
`22, 23, 27, 30, and 31 of the ʼ704 patent, claims 3, 6, 9, 10, 14, 17, and 18 of
`the ʼ469 patent, and claims 4 and 6‒14 of the ʼ121 patent are unpatentable.
`For the reasons discussed below, we are persuaded that Petitioner has shown
`by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent
`and claim 3 of the ’121 patent are unpatentable.
`B. Related Proceedings
`Petitioner indicates that the ’704, ʼ469, and ʼ121 patents are the
`subject of the proceedings in Straight Path IP Grp., Inc. v. Vizio et. al,
`No. 1:13-cv-00934 (E.D. VA.). Pet. 4. Petitioner further indicates that the
`ʼ704 patent was the subject of a final written decision in Sipnet EU S.R.O. v.
`Straight Path IP Grp., Inc., IPR2013-00246 (PTAB), which was
`subsequently reversed and remanded in Straight Path. Pet. 2. The
`remanded case in IPR2013-00246 is still pending before the Board as of the
`entry of this Decision.
`
`C. The ʼ704, ʼ469, and ʼ121 Patents
`The ’704 patent is titled “Point-to-Point Internet Protocol” and
`generally relates to establishing a point-to-point communication link.
`209 Ex. 1001, 2:53–57. The ’469 patent is titled “Graphic User Interface for
`Internet Telephony Application” and generally relates to facilitating audio
`communications over computer networks. 198 Ex. 1001, 1:54–57. The
`’121 patent is titled “Point-to-Point Computer Network Communication
`Utility Utilizing Dynamically Assigned Network Protocol Addresses” and,
`similar to the ’409 patent, relates to facilitating audio communications over
`
` 6
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`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`computer networks. 196 Ex. 1001, 1:55–57. The ’469 and ’121 patents are
`continuations-in-part of the ’704 patent. 198 Ex. 1001 at [63]; 196 Ex. 1001
`at [63]. The specifications for the three challenged patents are very similar
`and, in some instances, duplicative.
`Each patent explains that a first processing unit automatically
`transmits its associated e-mail address, and its IP address, to a connection
`server. 209 Ex. 1001, 5:25–38; 198 Ex. 1001, 6:66–7:9; 196 Ex. 1001,
`6:60–7:3. The connection server stores the addresses in a database and, thus,
`the first processing unit is established as an active on-line party available for
`communication. Id. The first processing unit sends a query to the
`connection server, which searches the database to determine whether a
`second processing unit is active and on-line. 209 Ex. 1001, 5:55–60;
`198 Ex. 1001, 7:31–36; 196 Ex. 1001, 7:24–29. If the callee is active and
`on-line, the connection server sends the IP address of the callee from the
`database to the first processing unit, i.e., performs a point-to-point Internet
`protocol communication. 209 Ex. 1001, 5:60–64; 198 Ex. 1001, 7:37–40;
`196 Ex. 1001, 7:30–34. The first processing unit then directly establishes
`the point-to-point Internet communication with the callee using the retrieved
`IP address. 209 Ex. 1001, 5:64–67; 198 Ex. 1001, 7:40–43; 196 Ex. 1001,
`7:33–36.
`
` 7
`
`
`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`Figure 1 of the ’704, ʼ469, and ʼ121 patents is reproduced below:
`
`
`Figure 1 above illustrates the architecture between first processing unit 12,
`second processing unit 22, and connection server 26. 209 Ex. 1001, 5:15–
`29, 198 Ex. 1001, 6:56–7:3; 196 Ex. 1001, 6:50–64.
`D. Illustrative Claims
`Petitioner challenges claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and
`31 of the ’704 patent, claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
`’469 patent, and claims 3, 4, and 6‒14 of the ’121 patent. 209 Pet. 36–60;
`198 Pet. 37–60; 196 Pet. 29–59. Claim 1 of the ’704 patent is illustrative of
`the claims at issue in that patent and is reproduced below.
`1.
`A computer program product for use with a computer
`system, the computer system executing a first process and
`operatively connectable to a second process and a server over a
`computer network, the computer program product comprising:
`a computer usable medium having program code
`embodied in the medium, the program code comprising:
`program code for transmitting to the server a
`network protocol address received by the first process
`following connection to the computer network;
`
` 8
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`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`program code for transmitting, to the server, a
`query as to whether the second process is connected to
`the computer network;
`program code for receiving a network protocol
`address of the second process from the server, when the
`second process is connected to the computer network;
`and
`
`program code, responsive to the network protocol
`address of the second process, for establishing a point-to-
`point communication link between the first process and
`the second process over the computer network.
`Claim 1 of the ’469 patent is illustrative of the claims at issue in
`that patent and is reproduced below.9
`1.
`A computer program product for use with a computer
`system having a display, the computer system capable of
`executing a first process and connecting to other processes and
`a server process over a computer network, the computer
`program product comprising a computer usable medium having
`computer readable code means embodied in the medium
`comprising:
`program code for generating a user-interface
`a.
`enabling control of a first process executing on the computer
`system;
`program code for determining the currently
`b.
`assigned network protocol address of the first process upon
`connection to the computer network;
`c.
`program code responsive to the currently assigned
`network protocol address of the first process, for establishing a
`communication connection with the server process and for
`forwarding the assigned network protocol address of the first
`process and a unique identifier of the first process to the server
`
`9 Italicized terms and limitations represent amendments to the claims as
`issued in the Ex Parte Reexamination Certificate. See 198 Ex. 1001.
`
` 9
`
`
`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`process upon establishing a communication connection with the
`server process; and
`d.
`program code, responsive to user input commands,
`for establishing a point-to-point communications with another
`process over the computer network.
`Claim 6 of the ’121 patent is illustrative of the claims at issue in
`that patent and is reproduced below.10
`6.
`A computer program product for use with a computer
`system capable of executing a first process and connecting to
`other processes and a server process over a computer network,
`the computer program product comprising a computer usable
`medium having computer readable code means embodied in the
`medium comprising:
`A.
`program code configured to, following connection
`of the first process to the computer network, forward to the
`server process a dynamically assigned network protocol address
`at which the first process is connected to the computer network;
`B.
`program code configured to query the address
`server as to whether the second process is connected to the
`computer network;
`program code configured to receive a dynamically
`C.
`assigned network protocol address of the second process from
`the address server, when the second process is connected to the
`computer network; and
`D.
`program code configured to respond to the
`network protocol address of the second process, establish a
`point-to-point communication link with the second process over
`the computer network.
`
`
`10 Italicized terms and limitations represent amendments to the claims as
`issued in the Ex Parte Reexamination Certificate. See 196 Ex. 1001.
`
`10
`
`
`
`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`E. Claim Construction
`We construe expired patent claims according to the standard applied
`by the district courts. See In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012).
`Specifically, we apply the principles set forth in Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`The words of a claim are generally given their ordinary and customary
`meaning, and that is the meaning the term would have to a person of
`ordinary skill at the time of the invention, in the context of the entire patent
`including the specification. See Phillips, 415 F.3d at 1312–13. Claims are
`not interpreted in a vacuum but are a part of and read in light of the
`specification. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
`1116 (Fed. Cir. 1987). Although it is improper to read a limitation from the
`specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993), the claims still must be read in view of the specification of
`which they are a part. See Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
`1340, 1347 (Fed. Cir. 2004).
`Only those terms that are in controversy need to be construed and only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). We construe the
`following claim terms.
`
`
`11
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`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`
`1. “is connected to the computer network” / “on-line status” /
`“is accessible”
`Independent claim 1 of the ʼ704 patent recites, “transmitting, to the
`server, a query as to whether the second process is connected to the
`computer network.” Dependent claims 3 and 6 of the ʼ469 patent,
`independent claims 6, 7, 8, 12, 13, and 14 of the ʼ121 patent, and dependent
`claim 4 of the ’121 patent recite the similar limitations of a query as to
`whether a second process “is connected to the computer network” (emphasis
`added). Independent claims 11 and 22, and dependent claims 12, 14, 16, 19,
`23, 27, 30, and 31 of the ʼ704 patent recite “querying the server as to the on-
`line status of the first callee process” (emphasis added). Independent
`claim 9 and dependent claims 14, 17, and 18 of the ʼ469 patent recite similar
`limitations as to a query whether the first callee process “is accessible,” and
`independent claims 9, 10, and 11 of the ʼ121 patent recite a similar limitation
`as to the processes “having [an] on-line status” (emphasis added).
`In Straight Path, the Federal Circuit held that the claim language “is
`connected to the computer network” has a facially clear meaning, that “the
`query transmitted to the server seeks to determine whether the second unit is
`connected at that time, i.e., connected at the time that the query is sent.”
`Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query
`
`
`11 Petitioner argues that the relevant specifications do not include an
`embodiment that “guarantee[s]” that an entry in its database is online, and,
`therefore, Patent Owner’s argument does not distinguish the ’704, ’469, and
`’121 patents over the prior art. Addʼl Br. 6‒7. However, such an argument
`goes towards whether there is written description and enablement support
`for the claims. In Straight Path, the Federal Circuit did not offer a view as
`to the sufficiency of the written description or enablement based on the
`
`12
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`

`
`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`asks “whether the device ‘is’ connected, not whether it was connected or
`whether it is still registered as being connected even if that registration
`information is no longer accurate.” Id. The Federal Circuit further
`explained that “[i]t is not a reasonable interpretation of the claim language
`. . . to say that it is satisfied by a query that asks only for registration
`information, regardless of its current accuracy.” Id. The Federal Circuit
`explained, “[w]hen claim language has as plain a meaning on an issue as the
`language does here, leaving no genuine uncertainties on interpretive
`questions relevant to the case, it is particularly difficult to conclude that the
`specification reasonably supports a different meaning. The specification
`plays a more limited role than in the common situation where claim terms
`are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the
`Federal Circuit construed the limitation “is connected to the computer
`network” as “is connected to the computer network at the time that the query
`is transmitted to the server.” Id. at 1363.
`Petitioner and Patent Owner argue that the limitations “on-line status”
`and “is accessible” have the same meaning as “is connected to the computer
`network.” See 209 Pet. 35–36; 209 PO Resp. 36‒48; 198 Pet. 35–36;
`198 PO Resp. 35‒46; 196 Pet. 29; 196 PO Resp. 38‒51. Similar to “is
`connected to a computer network,” the “on-line status” and “is accessible”
`of the second process are recited in the present tense, and therefore must be
`
`claim construction provided by the Federal Circuit because “written-
`description and enablement challenges were not, and could not have been,
`part of the inter partes review.” Straight Path, 806 F.3d at 1363. We
`similarly do not determine whether this claim limitation is supported by the
`specifications of the ʼ704, ʼ469, and ʼ121 patents.
`
`13
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`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`determined at the time of the querying whether the second process “is
`accessible” or selecting of the process having an “on-line status.” Therefore,
`we construe “on-line status” and “is accessible” as having the same meaning
`as “is connected to the computer network.”
`Petitioner argues that the Federal Circuit relied on two disclosures in
`the ʼ704 patent in construing “is connected to the computer network” and
`“on-line status.” Addʼl Br. 2. Petitioner argues that the Federal Circuit
`explained that the use of “timestamps” and the server’s maintenance of the
`database upon the user’s logging off are descriptions of “is connected to a
`computer network” and “on-line status.” Id. However, Petitioner did not
`raise these positions in its Petition. Nonetheless, we disagree with
`Petitioner. The Federal Circuit held that “[w]hen claim language has a plain
`meaning . . . leaving no genuine uncertainties on interpretive questions . . .
`[t]he specification plays a more limited role than in the common situation
`where claim terms are uncertain in meaning in relevant respects.” Straight
`Path, 806 F.3d at 1361. Although the Federal Circuit highlighted the same
`disclosures from the ʼ704 patent specification argued by Petitioner, the
`Federal Circuit did not rely on the ʼ704 patent specification in narrowing “is
`connected to the computer network” and “on-line status,” but rather held that
`the ʼ704 patent specification did not contradict its claim construction of
`these terms. See id.
`2. “process”
`The claims recite a “query . . . as to whether the second process is
`connected to the computer network” (emphasis added). Patent Owner
`argues that the plain and ordinary meaning of the term “process” is “a
`
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`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
`
`running instance of a computer program or application.” PO Resp. 26‒31.
`Petitioner accepts Patent Owner’s proposed construction. Pet. Reply 6;
`Tr. 20:1–4. Petitioner and Patent Owner, however, disagree as to whether a
`computer with an operating system is a computer program, and, therefore, a
`“process.” PO Resp. 26–36; Pet. Reply 7–10.
`In Ancora Technologies, the Federal Circuit explained that “[t]he
`ordinary meaning of the word ‘program’ in the computer context
`encompasses both operating systems and the applications that run on them
`(as well as other types of computer programs)” and “‘to a computer
`programmer’ a program is merely a ‘set of instructions’ for a computer.”
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014).
`Applying this guidance to the case before us, we agree with Petitioner and
`construe the term “process” to mean “a running instance of a computer
`program or application,” where a “computer program” is a set of instructions
`for a computer that encompasses both operating systems and the applications
`that run on them.
`We further note that the ʼ704, ʼ469, and ʼ121 patent specifications
`interchange the terms “process” and “processing unit.” For example, the
`specifications explain that a first “processing unit” is “established in the
`database [] as an active on-line party.” Ex. 1001, 5:29–34. The claims
`recite the term “process.” Accordingly, our construction is also consistent
`with the specifications, such that a “process” includes a “processing unit”
`that is running a program (operating system) or application.
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`IPR2015-00196 (Patent 6,131,121 C1)
`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
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`
`II. ANALYSIS
`A. 35 U.S.C. § 315 Statutory Bar
`Patent Owner argues that the Petitions are barred under both
`35 U.S.C. § 315(a)(1) and 35 U.S.C. § 315(b). 209 PO Resp. 2‒6; 198
`PO Resp. 2‒6; 196 PO Resp. 2‒6.
`1. Section 315(a)(1)
`Under 35 U.S.C. § 315(a)(1), “[a]n inter partes review may not be
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`instituted if, before the date on which the petition for such a review is filed,
`the petitioner or real party in interested filed a civil action challenging the
`validity of a claim of the patent.”
`Patent Owner argues that Hulu filed a civil declaratory judgment
`action challenging the validity of the ʼ704, ’469, and ’121 patents. 209
`PO Resp. 2‒3; 198 PO Resp. 2‒3; 196 PO Resp. 2‒3. Specifically, Patent
`Owner argues that Hulu sought to intervene in a civil action between Patent
`Owner and LG, Toshiba, and VIZIO, and in doing so Hulu challenged the
`validity of the ʼ704 patent, the ’469 patent, and the ’121 patent claims. Id.
`Patent Owner argues by challenging both “invalidity and non-infringement”
`in a civil action prior to filing its Petition for inter partes review, Hulu is
`barred under 35 U.S.C. § 315(a)(1) from filing its Petition. Id. (citing
`Ex. 2002, 6; Ex. 2001, 1, 9–10; Ex. 2003, 5). Patent Owner points to Hulu’s
`statement that “Hulu does not infringe . . . a valid claim, if any, of the
`ʼ704 Patent,” and asserts that Hulu has challenged explicitly the ʼ704 patent
`claims because the district court cannot resolve Hulu’s allegation without
`first determining the validity of the ʼ704 patent claims. Id. at 3 (quoting
`Ex. 2003, 5) (emphasis omitted).
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`Hulu argues that its Complaint in Intervention only alleges a cause of
`
`action for non-infringement. Pet. Reply 3. Specifically, Hulu argues that
`Patent Owner selectively quotes Hulu’s Motion to Intervene, but Hulu’s
`Complaint does not include the terms “invalid” or “invalidity.” Id. at 3–4.
`Hulu further argues that the Board has held that a “civil action for a
`declaratory judgment of non-infringement is not a civil action challenging
`the validity of a patent.” Id. at 3‒4 (quoting Ariosa Diagnostics v. Isis
`Innovation Ltd., Case IPR2012-00022, slip op. at 14 (PTAB Sept. 2, 2014)
`(Paper 166) (emphasis omitted)). In Ariosa, the Board determined that
`Ariosa, a party that had previously filed a declaratory judgment action of
`non-infringement of a patent, was permitted to filed a inter partes review
`petition against that same patent, and the Board stated that “allowing a party
`to file both a declaratory judgment of noninfringment and an inter partes
`review does not constitute harassment of a patent owner.” Ariosa,
`Paper 166, slip op. at 15.
`
` We agree with Petitioner. Hulu’s Complaint only alleges a cause of
`action for noninfringement, not invalidity, and therefore is not considered a
`filing of a civil action for invalidity under 35 U.S.C. § 315(a)(1). Although
`Ariosa is not precedential, we find it instructive and on point to the facts of
`this case. See Ariosa, Paper 166, slip op. at 14. Accordingly, we are not
`persuaded by Patent Owner that Hulu is barred from filing its Petition under
`35 U.S.C. § 315(a)(1).
`2. Section 315(b)
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be
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`instituted if the petition requesting the proceedings is filed more than 1 year
`
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`IPR2015-00209 (Patent 6,108,704 C1)
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`after the date on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`
`Patent Owner argues that Petitioner filed its Petition more than one
`year after Petitioner was served a complaint filed with the United States
`International Trade Commission (“ITC”). PO Resp. 4‒6. Petitioner
`responds that § 315(b) only applies to service of a complaint in a civil action
`and not to administrative proceedings such as an ITC investigation.
`Pet. Reply 5‒6 (citing Alcon Research, Ltd. v. Dr. Joseph Neev, Case
`IPR2014-00217, Paper 21, 9 (PTAB May 9, 2014); Amkor Tech., Inc. v.
`Tessera, Inc., Case IPR2013-00242, Paper 98, slip op. at 10–12 (PTAB Jan.
`31, 2014)). Petitioner specifically argues that the Board has rejected similar
`arguments as those raised by Patent Owner and held that § 315(b) only
`covers civil actions brought in federal district court. Paper 17, 3‒5 (citing
`Amkor, Paper 98, 7–8). Patent Owner argues that Amkor is directed to
`administrative proceedings such as arbitration, and any discussion in Amkor
`regarding an ITC investigation is not relevant. Prelim. Resp. 13, n. 1.
`Patent Owner’s argument is not persuasive. We agree with Petitioner
`that 35 U.S.C. § 315(b) applies only to civil actions for patent infringement,
`and not to an administrative proceeding, including an ITC investigation. See
`Amkor, Paper 98, slip op. at 6–18; Brinkman Corp. v. A&J Mfg., LLC, Case
`IPR2015-00056, slip op. at 7–8 (PTAB Mar. 23, 2015) (Paper 10).
`Although Amkor and Brinkman Corp. are not precedential, we find them
`instructive and directly on point. In Amkor, the Board determined that “had
`Congress intended for arbitration, ITC, or other non-judicial proceedings to
`trigger the time bar of section 315(b), it would have used more
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`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
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`encompassing language than ‘Patent Owner’s Action’ and ‘served with a
`complaint,’ which are harmonious with a civil action.” Amkor, Paper 98,
`slip op. at 11 (determining that the time bar is limited to being triggered by
`the service of a complaint in a civil action). A similar decision by the Board
`in Brinkman Corp. reaches the same result and specifically is directed
`toward an ITC investigation. Accordingly, we are not persuaded by Patent
`Owner that Petitioner is barred under 35 U.S.C. § 315(b).
`B. Claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the
`ʼ704 Patent, Claims 3, 6, 9, 10, 14, 17, and 18 of the ʼ469 Patent,
`and Claims 4 and 6‒14 of the ʼ121 Patent
`1. Overview
`Petitioner contends that claim 1 of the ’704 patent is unpatentable
`under 35 U.S.C. § 103(a) as unpatentable over WINS and NetBIOS, and
`claims 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of the ʼ704 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS,
`and Pinard. 209 Pet. 37–60. Petitioner contends that claims 3, 9, 14, 17, and
`18 of the ʼ469 patent are unpatentable under 35 U.S.C. § 103(a) as obvious
`over WINS, NetBIOS, and Pinard, and claim 6 as unpatentable under 35
`U.S.C. § 103(a) as unpatentable over WINS and NetBIOS. 198 Pet. 37–60.
`Petitioner contends that claims 4 and 6‒14 of the ʼ121 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
`196 Pet. 29–60. We have reviewed the Petition and supporting evidence and
`determine that Petitioner has not shown by a preponderance of the evidence
`that the challenged claims are unpatentable.
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`IPR2015-00198 (Patent 6,009,469 C1)
`IPR2015-00209 (Patent 6,108,704 C1)
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`2. WINS (209 Ex. 1003; 198 Ex. 1003; 196 Ex. 100