UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., and HULU, LLC
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`________________
`
`Case No. IPR2015-00209
`U.S. Patent No. 6,108,704
`________________
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 1
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`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., and HULU, LLC
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`________________
`
`Case No. IPR2015-00209
`U.S. Patent No. 6,108,704
`________________
`
`DECLARATION OF DR. STUART STUBBLEBINE
`
`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 1
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`
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`TABLE OF CONTENTS
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`Introduction......................................................................................................1
`I.
`Background and Qualifications .......................................................................1
`II.
`III. Materials Considered.......................................................................................3
`IV.
`Person of Ordinary Skill in the Art..................................................................4
`V.
`Legal Standards ...............................................................................................4
`VI. Background of the ’704 patent ........................................................................5
`A.
`The Challenged Claims of the ’704 Patent .........................................12
`VII. Claim Construction........................................................................................14
`A.
`process .................................................................................................14
`B.
`point-to-point communication link .....................................................18
`C.
`connected to the computer network / on-line......................................20
`D.
`[program code for/program logic configured to] transmitting/transmit
`to the server a network protocol address received by the first process
`following connection to the computer network. .................................22
`is and status .........................................................................................22
`F.
`VIII. Microsoft Manual ..........................................................................................23
`IX. NetBIOS.........................................................................................................30
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`i
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`I, Dr. Stuart Stubblebine, being of legal age, hereby declare, affirm, and state the
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`following:
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`I.
`
`Introduction
`
`1.
`
`The facts set forth below are known to me personally and I have
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`firsthand knowledge of them.
`
`2.
`
`I have been retained as an independent expert witness by Straight Path
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`IP Group, Inc. (“Patent Owner”) to make this declaration in support of Patent
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`Owner’s Response to Petition for Inter Partes Review of U.S. Patent No.
`
`6,108,704. I am being compensated for my time at a rate of $850 per hour. My
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`compensation is not dependent in any way upon the outcome of this Inter Partes
`
`Review.
`
`II. Background and Qualifications
`
`3.
`
`I received a Bachelor of Science degree in Computer Science and
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`Mathematics from Vanderbilt University in May 1983. Later that year and into
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`1984, I completed graduate level courses in Teleprocessing Systems (including
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`computer networks and distributed processing) and Radio Systems Design at the
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`US Army Signal Center. In December 1988, I received a Master of Science degree
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`in Electrical Engineering from the University of Arizona; my area of focus was
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`computer engineering with an emphasis in networking and distributed systems. I
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`received my Doctorate in Electrical Engineering in August 1992 from the
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`University of Maryland; my area of focus was computer engineering, and my
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`dissertation was on Message Integrity in Cryptographic Protocols. My CV is
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`attached as Exhibit 1.
`
`4.
`
`I have been working as an independent consultant since March 2000,
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`specializing in computer and network security evaluations, detailed design and
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`formal analysis, applied research, technical due diligence reviews, and in the
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`provision of expert witness services, particularly in patent litigation. My clients
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`range from domestic start-ups to international Fortune 500 companies, and include
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`American Express, AMD, British Telecom, First Data Corporation, IBM, and
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`Microsoft, as well as the New York City Department of Education and the New
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`York City Police Department.
`
`5.
`
`Previously, I worked as a research scientist with Stubblebine Research
`
`Labs, LLC, where I conduct research in the areas of security and privacy
`
`technology. Some of this research has been funded by the National Science
`
`Foundation.
`
`6.
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`Between July 2002 and June 2004, I was a Professional Researcher—
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`a position that was the equivalent of a Full Professor—at the University of
`
`California at Davis. I was affiliated with the Computer Science Department and my
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`research was focused in the areas of security, cryptography, and secure software
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`engineering.
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`III. Materials Considered
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`7.
`
`In forming the opinions set forth in this report, I have considered and
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`relied upon my education, knowledge of the relevant field, and my experience. I
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`have also reviewed and considered U.S. Patent No. 6,108,704, its prosecution
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`history, and documents produced by both Patent Owner and Petitioner.
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`Specifically, I have considered the following materials:
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` U.S. Patent No. 6,108,704 (the “’704 patent”).
`
` File history for the ’704 patent.
`
` Reexamination history for the ’704 patent.
`
` Microsoft Windows NT Server Version 3.5 TCPIP.HLP.
`
` Technical Standard: Protocols for X/Open PC Interworking: SMB,
`
`Version 2.
`
` Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Concept and Methods, RFC 1001 (Mar. 1987).
`
` Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`
`Detailed Specifications, RFC 1002 (Mar. 1987).
`
` U.S. Patent No. 5,533,110 (“Pinard”).
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` “Modifying WINS server defaults”
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`https://technet.microsoft.com/en(cid:173)us/library/cc785736(d=printer,v=ws.
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`10).aspx
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`I have also reviewed all of the papers filed at the Federal Circuit Court of Appeals
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`in the Straight Path IP Group, Inc. v. Sipnet EU S.R.O appeal.
`
`IV.
`
`Person of Ordinary Skill in the Art
`
`8.
`
`A person of ordinary skill in the art in the field of the ’704 patent in
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`the early 1990s would typically have the knowledge acquired by a person having a
`
`Bachelor’s degree in computer science or computer engineering or related field. I
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`believe a person of ordinary skill in the art of the ’704 patent could also have
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`obtained the requisite knowledge through 1-2 years of professional experience as a
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`software developer designing and constructing distributed applications or systems.
`
`V. Legal Standards
`
`9.
`
`It is my understanding that a claim is invalid by anticipation when a
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`single prior art reference (as defined by 35 U.S.C. § 102) existed prior to the
`
`claim’s priority date and teaches every element of the claim. (Verizon Servs. Corp.
`
`v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). I also
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`understand that under 35 U.S.C. § 103, the combined teachings of more than one
`
`prior art reference can be used to demonstrate that all of the elements of a claim
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`were known at the time of the invention. I understand this is often referred to as
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`“obviousness,” and such obviousness must be assessed at the time the invention
`
`was made. (Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1073 (Fed. Cir.
`
`2012)). I understand that, under 35 U.S.C. § 103, a patent cannot be obtained “if
`
`the differences between the subject matter to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
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`invention to a person having ordinary skill in the art.” (35 U.S.C. § 103).
`
`10.
`
`I understand that, in an inter partes review proceeding, claim terms
`
`should be given their broadest reasonable construction consistent with the
`
`specification. However, I understand that, if a patent has expired, claim terms
`
`should be construed according to the standard of a district court, and that under
`
`such a standard, a claim term should be construed according to its “ordinary and
`
`customary meaning” as understood by a person of ordinary skill in the art in
`
`question at the time of the invention. It is my further understanding that claim
`
`terms are given their ordinary and accustomed meaning as would be understood by
`
`one of ordinary skill in the art, unless the inventor, as a lexicographer, has set forth
`
`a special meaning.
`
`VI. Background of the ’704 patent
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`11.
`
`The ’704 patent discloses a system that enables real-time point-to-
`
`point communications between running computer programs or applications that are
`
`connected to a computer network. Such programs include programs or applications
`
`supporting real-time video teleconferencing and other real-time point-to-point
`
`video and voice communications. (Ex. 1001 at 1:9-20; 1:50-56; 7:32-41; 8:18-22.)
`
`12. Applications supporting such point-to-point communication may be
`
`installed on a computer, but just because a computer is running does not ensure
`
`that a program or application supporting point-to-point communication installed on
`
`that computer is also running. Additionally, just because a computer is connected
`
`to the Internet (i.e., is “on-line”) it does not mean that a program or application
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`installed on that computer is even running much less that it is actually on-line. In
`
`fact a computer that is connected to the Internet may have programs installed on it
`
`that are not connected to the Internet, off-line, and not available for
`
`communication. Some programs may be running and online, while others may be
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`“closed” (or not running) and off-line.
`
`13. Because communication can only be established between computer
`
`programs that are on-line at the time the desired communication is sought, it is
`
`desirable for a user of a first computer program seeking communication with a user
`
`of a second computer program to know when the second user’s program is on-line
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`and thus available for communication. (Ex. 1001 at 6:14-16.) The ’704 patent
`
`discloses a real-time point-to-point Internet communications protocol that enables:
`
`(1) a first computer program to query a connection server to determine if a second
`
`computer program is currently connected to the network, and (2) if the second
`
`computer program is connected, to obtain its existing network address so that the
`
`desired point-to-point communication can be established at the time
`
`communication is sought. (Ex. 1001 at 1:63-2:10; 3:40-54; 5:15-6:16; 10:4-37;
`
`claims 1, 2, 4, 32, 33, 38.)
`
`14. As explained in the ’704 patent specification, the prior art made it
`
`possible to establish point-to-point communications between devices and programs
`
`that had permanent Internet Protocol (“IP”) addresses. (Ex. 1001 at 1:48-52.) But,
`
`some devices do not have a permanent and stable address on the Internet and
`
`instead repeatedly log on and off of the Internet potentially receiving a new
`
`dynamically allocated IP address each time they reconnect to the network. (Id.
`
`1:35-47; 5:14-29; 6:6-16.)
`
`15. Dynamic assignment of IP addresses made it difficult to establish real-
`
`time point-to-point video or voice communications between computer programs
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`that are not permanently connected to the network, because a first user seeking to
`
`communicate with a second user would not necessarily know the IP address
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`associated with the second user’s computer program as it could be dynamically
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`assigned a different IP address from time to time. (Ex. 1001 at 1:48-56.)
`
`16.
`
`The ’704 patent solved the problems caused by dynamic allocation of
`
`IP addresses to computers continually connecting and disconnecting from the
`
`Internet by providing a real-time point-to-point Internet communications protocol
`
`for: (1) determining whether a particular, computer program is currently running
`
`and connected to a network; (2) determining that computer program’s address on
`
`the network at the time the communication is sought; and (3) establishing a point-
`
`to-point communication with that computer program. (Ex. 1001 at 1:63-2:10; 5:15-
`
`6:16; 7:32-36; 10:4-37; claims 1, 2, 4, 11, 22, 32, 33, 38.)
`
`17.
`
`In one embodiment, a first user, who is connected to the Internet and
`
`who wishes to communicate with another user over the Internet launches a
`
`program on her computer and connects that program to the network. (Ex. 1001 at
`
`3:40-46; 4:26-32; 5:21-24; 10:4-9.) The current IP address of the first user’s
`
`computer is then transmitted to the claimed connection server which determines
`
`whether a given program is on-line and available for communication and can
`
`facilitate communication between different on-line programs. (Id. at 5:25-31;
`
`5:55-6:15; 10:4-21.) Upon receiving this transmission, the connection server
`
`stores the first user’s then-current IP address in a database, thus establishing the
`
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`first user’s computer program as an “active on-line party” in the connection server
`
`database. (Id. at 5:25-34; 5:55-60; 6:1-16.)
`
`18.
`
`The first user’s computer program may later disconnect from the
`
`network, and thus no longer be an “active on-line party” available for
`
`communication. (Ex. 1001 at 6:1-14.) The specification discloses that “[w]hen a
`
`user logs off or goes off-line from the Internet 24, the connection server 26 updates
`
`the status of the user in the database 34; for example by removing the user’s
`
`information, or by flagging the user as being off-line.” (Id.) The user’s on-line
`
`status is updated when she logs off the network so that the connection server can
`
`keep an up to date accounting of which users are connected to the network and
`
`available for communication and which are not connected and thus disabled from
`
`engaging in point-to-point communication. (See id. at 6:6-14.) Like the first user,
`
`a second user, or callee, may also start a computer program on his computer and
`
`thereby store his then-current IP address in the connection server database and thus
`
`establish his computer program as active and on-line. (Id. at 5:34-38; 10:4-7.)
`
`19.
`
`To initiate a point-to-point communication with a second user, a first
`
`user, after connecting her computer program to the Internet and sending her then-
`
`current IP address to the connection server, may send a request to the connection
`
`server regarding the availability for communication of a second user. (Ex. 1001 at
`
`9
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`3:40-43; 5:45-56; 10:7-10, 28-32.) In response to the first user’s request, the
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`connection server will search its database to determine if the second user’s
`
`computer program is on-line. (Id. at 5:57-60; 10:28-34.) If it is, the connection
`
`server then forwards the IP address of the second user’s computer program to the
`
`first user’s computer program, which then uses that IP address to establish a point-
`
`to-point communication between the first and second users’ computer programs.
`
`(Id. at 3:40-42; 5:60-67; 10:12-18, 32-37.) This communication is not
`
`intermediated by the connection server. (See id.)
`
`20.
`
`If the second user’s computer program is not on-line at the time the
`
`first user’s computer program makes its query, the connection server, after
`
`checking its database, will determine that the second computer program is not
`
`currently on-line and will send back to the first user an “off-line” signal or
`
`message. (Ex. 1001 at 6:1-16; 10:14-21.) The connection server will send the first
`
`user’s computer program an “off-line” signal or message when the second user’s
`
`program is not currently connected to the network, even if that second program is
`
`still registered with the connection server, i.e., if the second program’s name
`
`remains stored in the connection server. (Id.) Thus, whether a computer program
`
`is currently on-line is not and cannot be determined by whether it is registered with
`
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`a connection server, because the program may be registered but also off-line. (Id.
`
`at 6:1-14.)
`
`21. During ex parte reexamination of the ’704 patent, the applicants
`
`addressed whether the active on-line status of a process – whether the process is
`
`currently connected to the computer network – is the same as the status of having
`
`been on-line at some point in the past to establish an active name registration. (Ex.
`
`2024 at 1078-79.). This is the question presented by the NetBIOS reference. The
`
`applicants submitted an Office Action Response explaining that the active name
`
`registration disclosed in NetBIOS is not the on-line status disclosed in the patent
`
`claims because having registered a name with the connection server at some
`
`previous time does not indicate that the registered computer is currently on-line:
`
`While NetBIOS uses name entries with ‘active’ statuses as part of its
`name management process, an analysis of how that “active” status is
`used shows that “an active name” is not synonymous with “an on-
`line status” with respect to the computer network. An active name
`simply refers to a name that has been registered and that has not
`yet been de-registered, independent of whether the associated
`computer is or is not on-line.
`
`(Id. at 1073 (emphasis added).) The PTO subsequently affirmed the patentability
`
`of each of the claims at issue in this appeal. (Id. at 1928.)
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`A. The Challenged Claims of the ’704 Patent
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`22.
`
`Each of the challenged claims at issue concerns a method, apparatus,
`
`or “computer program product” for establishing a point-to-point communication
`
`between a first (or caller) process and a second (or callee) process. (Ex. 1001 at
`
`claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31.) Each challenged claim
`
`concerns communications between processes, not merely computers, and each
`
`concerns determining whether those processes are currently on-line, not whether
`
`they were on-line at some undetermined point in the past. (See id.)
`
`23.
`
`Each of the challenged claims concerns processes—computer
`
`programs or applications—not merely the computers on which those processes
`
`may (or may not) be running. The preamble of independent claim 1, for example,
`
`makes this distinction clear, and shows that the patentees distinctly and
`
`deliberately chose to direct their claims towards a “process” not a “computer.”
`
`Claim 1 differentiates between the computer (“computer system”) that executes
`
`“the first process” and the “first process” itself: “A computer program product for
`
`use with a computer system, the computer system executing a first process . . . .”
`
`(Ex. 1001 at claim 1 (emphasis added).) And the remainder of claim 1, reproduced
`
`in its entirety below, pertains to the on-line status of, and communications
`
`between, processes, not merely the computers that execute those processes:
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`1.
`
`A computer program product for use with a computer
`
`system, the computer system executing a first process and
`
`operatively connected to a second process and a server over a
`
`computer network, the computer program product comprising:
`
`a computer usable medium having a 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;
`
`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 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.
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`(Ex. 1001 at claim 1 (emphasis added); see claims 11, 12, 14, 16, 19, 22, 23, 27,
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`30, and 31.)
`
`24.
`
`Each of the challenged claims concerns a determination of whether
`
`the target process with which the caller wishes to communicate is currently
`
`connected to the computer network (is currently “on-line”) not whether the process
`
`was connected at some previous time. (Ex. 1001, at claims 1, 11, 12, 14, 16, 22,
`
`23, 27, 30, and 31.) For example, claim 1 is directed to a “computer program
`
`product” that (1) transmits to the server “a query as to whether the second process
`
`is connected to the computer network,” and (2) receives the second process’s
`
`network protocol address from the server only “when the second process is
`
`connected to the computer network.” (Id. at claim 1.) These claims’ temporal
`
`focus on the process’s on-line status at the time the desired communication is
`
`sought accords with the realtime focus of the point-to-point communications
`
`protocol disclosed in the ’704 patent. (Id. at 1:50-56; 7:32-41, 8:21-22.) One way
`
`the patent describes this focus on realtime communications, is by polling the
`
`second processing unit every 3-5 seconds. (Id. at 6:55-60; Fig. 2.)
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`VII. Claim Construction
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`A. “process”
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`25.
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`I agree that the meaning of the claim term “process” is “a running
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`instance of a computer program or application,” because this construction
`
`comports with the intrinsic record. Also, I note it has been agreed to by Petitioner
`
`in prior proceedings relating to the ’704 patent and by Petitioner’s expert, Dr.
`
`Bruce Maggs, in this proceeding. (Ex. 2037 at 112:13-113:14). In this definition,
`
`in the context of the ’704 patent, the term “program” and “application” are used as
`
`synonyms. There is nothing in the intrinsic record that suggests a “process” is
`
`anything other than an application program. In common parlance, the term
`
`program is used to mean an application, not an operating system. When
`
`referencing an operating system, a person of ordinary skill in the art would
`
`expressly state “operating system,” or identify a specific operating system; much
`
`like the patentee did when referencing an operating system. (Ex. 1001 at 3:18-39).
`
`26.
`
`The definition of process in the context of the ’704 patent does not
`
`include computers or their operating systems. As explained above, the claims of
`
`the ’704 patent show that the patentees deliberately chose to direct their claims
`
`towards a running instance of an application rather than the machine or operating
`
`system on which a process runs. The specification of the ’704 patent supports this
`
`construction. The specification expressly states that the disclosed point-to-point
`
`internet protocol can be a “computer program described herein below in
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`conjunction with FIG. 6, which may be implemented from compiled and/or
`
`interpreted source code in the C++ programming language, and which may be
`
`downloaded…” (Ex. 1001 at 3:40-55.) Further, the specification states that the
`
`invention can be implemented in a PDA, which supports the interpretation of
`
`process as a running application. (See id. at 4:26-32 (“In addition, either of the first
`
`processing unit 12 and the second processing unit 22 may be implemented in a
`
`personal digital assistant…”).) A person of ordinary skill in the art, having read the
`
`claims, specification, and prosecution history, would not understand the term
`
`“process” to include a computer or its operating system. The ’704 patent clearly
`
`distinguishes between programs and operating systems by, for example, describing
`
`“programs operating in a UNIX environment or other OS [operating system]”
`
`(Ex. 1001 at 3:34-39 (emphasis added).) The claims themselves distinguish
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`between processes and operating systems. The preamble distinguishes between a
`
`“computer program product” (computer program or application) and a “computer
`
`system”. (Ex. 1001 at 11:1-6). The preamble distinguishes processes from
`
`operating systems when it claims that the application runs on the computer system.
`
`(Id.) This computer program product is a “computer program product for use with
`
`a computer system” but is not the computer system itself. (Id. (emphasis added).)
`
`16
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`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 18
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`
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`Case IPR2015-00209
`Patent No. 6,108,704
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`The preamble ends by clearly stating that what is claimed is not the computer
`
`system, but the “computer program product.” (Id.)
`
`27. Additionally, the claim term “process” was construed in several prior
`
`lawsuits in which Straight Path asserted the ’704 patent or a related patent. In
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`Straight Path IP Group, Inc. v. Bandwidth.com, Inc., a case involving U.S. Patent
`
`No. 6,513,066, a continuation of the ’704 patent application, the United States
`
`District Court for the Eastern District of Virginia construed “process” as “a
`
`running instance of a computer program or application.” (Ex. 2029 at 13.)
`
`Consistent with the Bandwidth decision, Petitioner, in Certain Point-To-Point
`
`Network Communication Devices (U.S.I.T.C. Inv. No. 337-TA-892), a case
`
`involving the ’704 patent, agreed that the proper construction of the term process is
`
`“a running instance of a computer program or application.” (Ex. 2016 at 12.)
`
`28.
`
`Furthermore, during his deposition, Petitioner’s expert, Dr. Maggs,
`
`agreed that the proper construction of the term “process” is “a running instance of
`
`a computer application or program.” (Ex. 2037 at 112:13-113:14. ) A computer
`
`operating system is not itself a process of the ’704 patent. An operating system is
`
`software designed to control the hardware of a specific computer in order to allow
`
`application programs to use the computer. The operating system provides a
`
`17
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`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 19
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`
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`Case IPR2015-00209
`Patent No. 6,108,704
`
`standard platform for these programs. (Ex. 2032 at 3.)1 In contrast, application
`
`programs perform useful work not related to the computer itself. (Ex. 2031 at 3
`
`(expressly contrasting applications and operating systems).) Examples include
`
`word processors, spreadsheets, etc. (Id.)2
`
`B. “point-to-point communication link”
`
`29. Construction of this term is not necessary to my opinions in this
`
`declaration, but to the extent the Board construes the term “point-to-point
`
`communication link,” I agree with Straight Path that this term should be interpreted
`
`to mean “a connection between two processes over a computer network that is not
`
`intermediated by a connection server.”
`
`30. As explained above, the invention provides users with a protocol with
`
`which to establish real-time, point-to-point communications over computer
`
`networks. During prosecution of the patent, the inventors explained that the
`
`1 The full definition is: “Operating system: Software designed to control the
`hardware of a specific computer system in order to allow users and application
`programs to employ it easily. The operating system mediates between hardware
`and applications programs. It handles the details of sending instructions to the
`hardware and allocating system resources in case of conflicts, thus relieving
`applications developers of this burden and providing a standard platform for new
`programs. The most common operating systems for personal computers are DOS,
`the Macintosh System, OS/2, UNIX, and Windows NT.”
`
`2 The full definition is “APPLICATION PROGRAMS computer programs that
`perform useful work not related to the computer itself. Examples include word
`processors, spreadsheets, accounting systems, and engineering programs. Contrast
`UTILITIES; OPERATING SYSTEM.
`
`18
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`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 20
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`
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`Case IPR2015-00209
`Patent No. 6,108,704
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`claimed point-to-point communication is not intermediated by the connection
`
`server disclosed in the invention:
`
`Upon receipt of the network protocal [sic] address of the first process, the
`second process establishes communications with the first process directly,
`without any intervention from the address/information server.
`
`(Ex. 2023, Dec. 4, 1997 Amendment, at 431.)
`
`31. An interpretation of this term to mean not intermediated by any server
`
`would be inappropriate because in practice “point-to-point” communications
`
`established over the Internet are often intermediated by a hardware device
`
`providing one or more services. These devices could be included in what one of
`
`ordinary skill in the art would understand to be a server. For instance, a “point-to-
`
`point” communication may be routed as it passes through the Internet, and such
`
`routing is often performed by a computer providing services as well. One example
`
`of this is when a computer is acting as a router, but is also running a server process,
`
`such as running a FTP server program, in addition to its routing functionality.
`
`Thus, interpreting a point-to-point communication not to be intermediated by any
`
`server would eliminate from the definition of “point-to-point” common point-to-
`
`point communications made over the Internet. Interpreting “point-to-point
`
`communication link” as not being intermediated by a connection server takes into
`
`account the reality that servers are commonly used to route Internet
`
`19
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`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 21
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`
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`Case IPR2015-00209
`Patent No. 6,108,704
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`communications. Routers at the time of the invention were configurable to be
`
`servers themselves. The inventors intended use of the internet, which would
`
`necessarily have included these routers.
`
`32.
`
`Petitioner’s construction unnecessarily narrows the scope of the
`
`claims, and does so in a way that disregards the prosecution history.
`
`C. “connected to the computer network” / “on-line” ”
`
`33.
`
`I agree with Straight Path’s interpretation of “connected to the
`
`computer network” and “on-line” as meaning available for communication. I
`
`disagree with Petitioner’s proposed construction of these terms as meaning “on-
`
`line, e.g., registered with a server.” Petitioner’s proposed construction essentially
`
`says that at every moment a given process is registered, it is connected to the
`
`computer network, and on-line and available for communication. But, the ’704
`
`patent specification does not support this conclusion. Rather, it clearly states that a
`
`user can still be in the database (“registered”) even when it is not on-line and
`
`available for communication:
`
`When a user logs off or goes off-line from the Internet 24, the connection
`server 26 updates the status of the user in the database 34; for example, by
`removing the user’s information, or by flagging the user as being off-line.
`The connection server 26 may be instructed to update the user’s information
`in the database 34 by an off-line message, such as a data packet, sent
`automatically from the processing unit of the use prior to being disconnected
`
`20
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`LG v. Straight Path, IPR2015-00209
`Straight Path - Exhibit 2038 - Page 22
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`
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`Case IPR2015-00209
`Patent No. 6,108,704
`
`from the connection server 26. Accordingly, an off-line user is effectively
`disabled from making and/or receiving point-to-point Internet
`communications.
`(Ex. 1001 at 6:6-16.)
`
`34.
`
`The ’704 patent teaches that, once registered, a name of a user will
`
`remain in the database regardless of whether the user is actually on-line. The
`
`claimed query determines whether the named user is actually on-
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