UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., and HULU, LLC,
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner
`________________
`
`Case No. IPR2015-00209
`U.S. Patent No. 6,108,704
`________________
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction......................................................................................................1
`The Petition is Statutorily Barred ....................................................................2
`This Inter Partes Review Should Not Have Been Instituted
`A.
`Because Hulu Previously Filed A Civil Action Challenging The
`Validity Of The ’704 Patent Claims......................................................2
`This Inter Partes Review Should Not Have Been Instituted
`Because The Petition Was Filed More Than One Year After
`Service Of Straight Path’s ITC Complaint............................................3
`1.
`Straight Path’s ITC Complaint Was Served On
`Petitioners More Than A Year Before They Filed Their
`Petition ........................................................................................4
`The Petition is Untimely and Barred Under Section
`315(b)..........................................................................................5
`III. Background And Overview Of The ’704 Patent .............................................6
`A.
`The Problems And Solutions Identified By The ’704 Patent ...............8
`1.
`The ’704 Patent Also Describes the Use of a Display
`Screen and Various Interface Elements....................................11
`The Challenged ’704 Patent Claims....................................................12
`1.
`The challenged claims concern application programs, not
`computer operating systems......................................................12
`The challenged claims concern the determination of
`whether a process is currently connected to the computer
`network, not whether it was previously connected...................14
`All But One of the Challenged Claims Also Concern
`User Interface Elements............................................................14
`The ’704 Patent’s Prosecution History ...............................................15
`1.
`The Original Prosecution ..........................................................15
`The Ex Parte Reexaminations ..................................................15
`2.
`
`B.
`
`B.
`
`C.
`
`2.
`
`2.
`
`3.
`
`i
`
`

`
`B.
`
`B.
`
`V.
`
`VI.
`
`IV.
`
`The WINS and NetBIOS References ............................................................16
`A.
`NetBIOS and WINS Both Disclose a Name Server for
`Registering the Name of a Computer, Not a Computer
`Application ..........................................................................................18
`Neither NetBIOS nor WINS Discloses a Means for
`Determining Whether a Computer is Actually Connected to the
`Network at the Time Another Computer Seeks to Communicate
`With It..................................................................................................19
`Claim Constructions ......................................................................................22
`A.
`The Material Claim Construction Issues Facing The Board...............22
`B.
`The Correct Claim Construction Analysis Under The District
`Court Standard.....................................................................................23
`The Petition Fails To Identify the “Process” Claim Elements in any of
`the References................................................................................................26
`A.
`The Plain And Ordinary Meaning of the Term “Process” means
`“A Running Instance of a Computer Program or Application”..........27
`1.
`Petitioner’s Do Not Construe the Term Process, Yet Use
`The Term Contrary to Its Ordinary Meaning ...........................30
`Petitioner Failed To Prove That WINS and/or NetBIOS
`Disclose the Claimed “Process” Elements..........................................31
`VII. Petitioners’s References Do Not Disclose The “Is Connected To The
`Network”/”On-Line Status” Elements ..........................................................36
`A.
`Petitioner Has Not Overcome The Heavy Presumption That “Is
`Connected to the Computer Network” And “On-line Status”
`Should Be Given Their Ordinary Meaning.........................................37
`1.
`The Ordinary Meaning of “Is Connected To The
`Computer Network” And “On-line Status” Does Not
`Include Registered With a Server .............................................38
`a.
`The ordinary meaning of on-line and connected is
`“connected to the computer network,” not registered with a
`server .................................................................................38
`b. The ordinary meanings of “is” and “status” provide a
`temporal requirement that is ignored by Petitioner’s
`proposed construction .......................................................39
`
`ii
`
`

`
`2.
`
`B.
`
`B.
`
`Petitioner And Its Expert Admit That The Patentees Did
`Not Disclaim Or Specially Define The Ordinary Meaning
`of “On-Line Status” or “Is Connected To The Computer
`Network”...................................................................................42
`a.
`The Specification Confirms That The Ordinary Meaning
`Should Apply.....................................................................43
`b. The Prosecution History Confirms That The Ordinary
`Meaning Should Apply .....................................................46
`Petitioner Failed To Prove That NetBIOS and WINS Disclose
`The “Is Connected To The Network” And “On-Line Status”
`Elements. .............................................................................................48
`VIII. Petitioner’s References Do Not Disclose the “Interface Element
`Representing a First Callee Process” Limitations Found in Challenged
`Claims 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31..........................................52
`A.
`Petitioners Bear The Burden Of Proving Why And How One
`Of Ordinary Skill In The Art Would Combine Pinard with
`WINS and NetBIOS............................................................................52
`Pinard Cannot Remedy WINS and NetBIOS’s Failure to
`Disclose the “Interface Element Representing a Second Callee
`Process”...............................................................................................54
`Petitioner’s Remaining Proposed Constructions Are Not Material To
`The IPR..........................................................................................................58
`Conclusion .....................................................................................................60
`
`IX.
`
`X.
`
`iii
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`505 Games, Inc. v. Babbage Holdings, Inc.,
`IPR2014-00954, Paper No. 17 (PTAB Aug. 22, 2014)…....................................3
`
`ACTV, Inc. v. Walt Disney Company,
`346 F.3d 1082 (Fed. Cir. 2003) ..........................................................................41
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`IPR2013-00276, Paper No. 43 (PTAB Oct. 23, 2014)…...................................53
`
`Aventis Pharma S.A. v. Hospira, Inc.,
`675 F.3d 1324 (Fed. Cir. 2012) ....................................................................24, 25
`
`Callcopy v. Verint Americas, et al.,
`IPR2013-00486, Paper No. 11 (PTAB Feb. 5, 2014).........................................53
`
`Certain Integrated Circuit Telecommunication Chips and Products
`Containing Same, Including Dialing Apparatus,
`Inv. No. 337-TA-337, Order No. 63, 1992 ITC LEXIS 625,
`(U.S.I.T.C. Aug. 28, 1992)… ...............................................................................4
`
`Cisco Systems, Inc. v. AIP Acquisition, LLC,
`IPR2014-00247, Paper No. 20 (PTAB Jul. 10, 2014)........................................23
`
`Dealertrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012) ..........................................................................25
`
`Histologics, LLC v. CDX Diagnostics, Inc.,
`IPR2014-00779, Paper No. 6 (PTAB Sept. 12, 2014)..........................................6
`
`Hockerson-Halberstadt, Inc. v. Converse, Inc.,
`183 F.3d 1369 (Fed. Cir. 1999) ..........................................................................41
`
`In re Chaganti,
`554 Fed. Appx. 917 (Fed. Cir. 2014)............................................................53, 55
`
`In re Kahn,
`441 F.3d 997 (Fed. Cir. 2006) ......................................................................53, 55
`
`iv
`
`

`
`In re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ..............................................................................23
`
`Innolux Corp. v. Semiconductor Energy Lab.,
`IPR2013-00064, Paper 11 (PTAB Apr. 30, 2013)… .........................................23
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..........................................................................25
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007)…..........................................................................52, 53
`
`Laryngeal Mask Co. Ltd. v. Ambu,
`618 F.3d 1367 (Fed. Cir. 2010) ..........................................................................25
`
`Microsoft Corp. v. Secure Web Conference Corp.,
`IPR2014-00745, Paper No. 12 (PTAB Sept. 29, 2014)…......................17, 55, 57
`
`NeuLion, Inc. v. Filippo Costanzo, et al.,
`IPR2014-00526, Paper No. 23 (PTAB Sep. 3, 2014)….........................55, 56, 57
`
`Norman International, Inc. v. Hunter Douglas Inc.,
`IPR2014-00282, Paper No. 8 (PTAB Jun. 20, 2014).. .................................17, 57
`
`Phillips v. AWH Corp.,
`415 F.3d 1301 (Fed. Cir. 2005) ..........................................................................23
`
`Symantec Corp. v. RPost Communications Ltd.,
`IPR2014-00355, Paper No. 12 (PTAB Jul. 15, 2014)…...............................52,53
`
`Texas Instruments, Inc. v. Tessera, Inc.,
`231 F.3d 1325 (Fed. Cir. 2000)… .....................................................................5,6
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ....................................................................24, 25
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ..........................................................................25
`
`Universal Remote Control, Inc. v. Universal Electronics, Inc.,
`IPR2013-00127, Paper No. 32 (PTAB Jun. 30, 2014)… ...................................24
`
`v
`
`

`
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, Paper No. 12 (PTAB Apr. 8, 2013)… ........................30, 54, 55
`
`vi
`
`

`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`CASE IPR2015-00209
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`2004
`
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`
`2018
`2019
`
`2020
`
`Proposed Intervenor Hulu, LLC’s Brief in Support of Motion to
`Intervene Pursuant To Federal Rule of Civil Procedure 24
`Proposed Intervenor Hulu, LLC’s Reply in Support of Motion to
`Intervene
`Hulu, LLC’s Complaint In Intervention filed stamped Oct. 28, 2014
`Straight Path’s District Court Complaints Against LG, Toshiba, and
`Vizio
`Straight Path’s ITC Complaint and Relevant Exhibits
`Notice of Institution of Investigation (337-TA-892)
`LG Notice of Appearance
`Vizio Notice of Appearance
`Toshiba Notice of Appearance
`Straight Path’s Motion to Terminate
`Straight Path Reply in Support of Motion to Terminate
`2014-07-02 Email to counsel for LG, Toshiba and Vizio
`Reserved
`Reserved
`File History for Reexam Control No. 90/010422 (US6009469)
`Joint Submission of Disputed Claim Terms (337-TA-892)
`October 26, 2012 Opinion and Order on claim construction in ICT
`v. Vivox (2:12-cv-00007) and ICT v. Stalker Software (2:12-cv-
`00009)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`Excerpt from QUE’S COMPUTER & INTERNET DICTIONARY (6th ed.
`1995)
`Reserved
`
`vii
`
`

`
`2021
`2022
`2023
`2024
`2025
`2026
`2027
`2028
`2029
`
`2030
`
`2031
`
`2032
`2033
`2034
`2035
`2036
`2037
`2038
`2039
`
`Excerpt from MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)
`Excerpt from DICTIONARY OF COMPUTER WORDS (Rev. ed. 1994)
`File History for U.S. Patent No. 6,131,704
`File History for Reexam Control No. 90/010416 (US6131704)
`Declaration of Michael C. Newman
`Biography of Michael C. Newman
`Reserved
`Modifying WINS Server Defaults
`Straight Path v. Bandwidth.com, Inc., Memo & Order Construing
`Claims, 2014 U.S. Dist. Lexis 25394 (Feb. 25, 2014)
`Reserved
`Barron’s – Dictionary of Computer and Internet Terms (5th Ed.),
`page 18.
`Dictionary of Computer Words (1995), page 196.
`Modifying WINS Server Defaults
`Definition of “Status”
`Excerpts from Microsoft Computer Dictionary (1997)
`Excerpts from Oxford Dictionary of Current English (1999)
`Aug. 6, 2015 deposition transcript of Bruce Maggs
`‘704 Declaration of Stuart Stubblebine
`May 26, 2015 deposition transcript of Henry Houh
`
`viii
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`I.
`
`Introduction
`
`In the Board’s Decision (Paper No. 20, “Institution Decision”), it instituted
`
`inter partes review of Straight Path IP Group’s U.S. Patent No. 6,108,704 on only
`
`the following Grounds, references, and claims identified in Petitioners’ Petition:
`
`Ground
`
`References
`
`WINS & NetBIOS
`
`Basis
`
`§ 103(a)
`
`Challenged Claims
`
`1
`
`1
`
`2
`
`WINS, NetBIOS, & Pinard
`
`§ 103(a)
`
`11, 12, 14, 16, 19, 22, 23,
`27, 30, and 31
`
`Petitioners have not met their burden of proving any of these challenged
`
`claims are unpatentable under these Grounds for at least the following reasons:
`
`
`
`“Process” vs. Computer or Computer Operating System:
`
`Petitioners wrongly identify a computer or a computer operating system to satisfy
`
`the many claim elements drawn to a “process.” However, the term “process” as
`
`used in the ’704 patent means an “application program,” not a computer or its
`
`operating system. Petitioners’ own expert, Dr. Bruce Maggs, admitted at his
`
`deposition that “process” means an “application or computer program.” Because
`
`Petitioners do not identify an application program in either the WINS or NetBIOS
`
`references, they have not shown all elements of the ’704 patent claims are taught
`
`by these references.
`
`1
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`
`
`“Is Connected” vs. Registration: Contrary to Petitioners’ proposed
`
`construction, Dr. Maggs testified that all of the challenged claims require a query
`
`as to whether a process is connected to the computer network at the time of the
`
`query, which the references admittedly cannot do.
`
`
`
`No “Representing” Interface: The references do not disclose the
`
`“interface element representing a first callee process.” This limitation is required
`
`by all of the challenged claims except claim 1, but it was not construed by
`
`Petitioner, its expert, or the Board.
`
`A.
`
`The Petition is Statutorily Barred
`II.
`This Inter Partes Review Should Not Have Been Instituted
`Because Hulu Previously Filed A Civil Action Challenging The
`Validity Of The ’704 Patent Claims
`The Board did not have the authority to institute this inter partes review.
`
`Under 35 U.S.C. § 315(a), “an inter partes review may not be instituted if, before
`
`the date on which the petition for such a review is filed, the petitioner or real party
`
`in interest filed a civil action challenging the validity of a claim of the patent.”
`
`Because Hulu filed a civil declaratory judgment action challenging the validity of
`
`the ’704 patent claims prior to filing the Petition, the Petition should not have been
`
`instituted.
`
`In August 2013, Straight Path field suit against LG, Toshiba and Vizio in the
`
`Eastern District of Virginia. Hulu moved to intervene on October 3, 2014, filing
`
`2
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`along with its motion to intervene a declaratory judgment complaint. (See Ex.
`
`2001). In its motion to intervene, Hulu stated that it was challenging the validity of
`
`the ’704 patent claims by stating that Hulu “shares with its partners both their
`
`claims of invalidity regarding Straight Path’s patent and their defenses of non-
`
`infringement,” (id. at 9-10), and further sought “adjudication as to whether …
`
`Straight Path’s patent are invalid.” (Id. at 1). In its reply brief, Hulu sought a
`
`decision by the court “both as to invalidity and non-infringement.” (Ex. 2002 at 6).
`
`Hulu’s complaint in intervention requested a finding that “Hulu does not
`
`infringe…a valid claim, if any, of the ’704 Patent.” (Ex. 2003 at 5 (emphasis
`
`added)). Hulu thus challenged the validity of all claims of the ’704 patent.
`
`Therefore, because Hulu filed a civil action challenging the validity of all the
`
`claims of the ’704 patent before filing this Petition, the requested inter partes
`
`review “may not be instituted.” 35 U.S.C. § 315(a). Furthermore, this bar applies
`
`not just to Hulu, but to each of the Petitioners, because “there is but a single party
`
`filing the petition, no matter how many companies are listed as petitioner or
`
`petitioners.” 505 Games, Inc. v. Babbage Holdings, Inc., IPR2014-00954, Paper
`
`No. 17 at 2 (PTAB Aug. 22, 2014).
`
`B.
`
`This Inter Partes Review Should Not Have Been Instituted
`Because The Petition Was Filed More Than One Year After
`Service Of Straight Path’s ITC Complaint
`
`3
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`The Board did not have authority to institute this inter partes review because
`
`35 U.S.C. § 315(b) requires that “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
`
`which the petitioner . . . is served with a complaint alleging infringement of the
`
`patent.” Because Petitioners LG, Toshiba and Vizio were served with a complaint
`
`alleging infringement of the ’704 patent more than a year prior to the filing of the
`
`Petition, the Petition is time barred and should not have been instituted.
`
`1.
`
`Straight Path’s ITC Complaint Was Served On Petitioners
`More Than A Year Before They Filed Their Petition
`
`On August 1, 2013, Straight Path filed complaints against LG, Toshiba, and
`
`Vizio in both the International Trade Commission (“ITC”) and in the Eastern
`
`District of Virginia (“EDVA”). Each complaint alleged infringement of Straight
`
`Path patents, including of the ’704 patent. (See Ex. 2004). Straight Path made the
`
`same allegation in both the ITC and in the EDVA complaints, but the allegations in
`
`the ITC complaint were substantially more detailed. (Compare, e.g., Ex. 2004 with
`
`Ex. 2005, and Exhibit 25 thereto). This is because the ITC has a higher pleading
`
`standard. See 19 C.F.R. § 210.12; see also Certain Integrated Circuit
`
`Telecommunication Chips and Products Containing Same, Including Dialing
`
`Apparatus, Inv. No. 337-TA-337, Order No. 63, 1992 ITC LEXIS 625, at 33 n.7
`
`(U.S.I.T.C. Aug. 28, 1992) (“[U]nlike notice pleading in a district court, the ITC
`
`4
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`requires fact pleading in section 337 proceedings.”). Straight Path’s ITC Complaint
`
`includes detailed infringement contentions. (See Ex. 2005).
`
`On September 4, 2013, the ITC officially served Straight Path’s Complaint
`
`on LG, Toshiba, and Vizio pursuant to 19 C.F.R. § 210.11(a)(1). (See Ex. 2006 at
`
`2-5). Yet, LG, Toshiba, and Vizio waited for over a year before filing the present
`
`Petition on October 31, 2014. All the Petitioners appeared in the ITC by September
`
`16, 2014. (See Exs. 2007-2009). On May 5, 2014, Straight Path requested that the
`
`investigation be terminated and the Commission subsequently terminated the
`
`investigation. As a result of the termination, on July 18, 2014, the EDVA court
`
`lifted the relevant stays and re-opened Straight Path’s infringement actions against
`
`LG, Toshiba, and Vizio. In each case, the parties worked together to transfer the
`
`discovery obtained in the ITC for use in each district court case. (See Ex. 2012).
`
`2.
`
`The Petition is Untimely and Barred Under Section 315(b)
`
`That the complaint served on Petitioners was filed in the ITC rather than in
`
`civil court does not preclude application of the Section 315(b) statutory bar. The
`
`language of Section 315(b) does not limit it to only “civil” complaints. Instead, the
`
`language of Section 315(b) makes plainly clear that any complaint alleging patent
`
`infringement can trigger the one year statutory period. The Board’s Institution
`
`Decision goes directly against Federal Circuit precedent. The Federal Circuit has
`
`long held that ITC Investigations are indeed litigations. Texas Instruments, Inc. v.
`
`5
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`Tessera, Inc., 231 F.3d 1325, 1330 (Fed. Cir. 2000) (“this court has consistently
`
`treated section 337 patent infringement proceedings as litigation.”)
`
`Moreover congress was careful not to limit Section 315(b). On February 28,
`
`2011, the Senate introduced an amendment, S.23 “Patent Reform Act of 2011,”
`
`which amended the text of a proposed version of Section 315(b) from requiring “a
`
`civil action” to only requiring a “complaint.” See 157 Cong. Rec. S941 (daily ed.
`
`Feb. 28, 2011) (emphasis added). The Senate introduced Amendment S.23 on
`
`January 25, 2011, and passed the amended version on March 8, 2011 with the
`
`“civil action” limitation removed.
`
`The Section 315(b) bar is unaffected by the withdrawal of Straight Path’s
`
`ITC complaint. The parties continue to litigate the same claims raised in the ITC
`
`action in the co-pending district court cases. See, e.g., Histologics, LLC v. CDX
`
`Diagnostics, Inc. et al., IPR2014-00779, Paper 6 at 4-5 (PTAB Sept. 12, 2014)
`
`(denying inter partes review where patent owner’s action was dismissed, but same
`
`allegations against petitioner were in a co-pending case).
`
`Therefore, this IPR is barred under Section 315(b).
`
`III.
`
`Background And Overview Of The ’704 Patent
`
`The ’704 patent concerns a system for enabling “realtime point-to-point
`
`communications” between running computer applications connected to the same
`
`computer network, including applications that allow “realtime video
`
`6
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`teleconferencing” or other “point-to-point communications in realtime of voice and
`
`video.” (Ex. 1001 (U.S. Patent No. 6,108,704) at 1:10-13, 1:50-56, 7:-32-41, 8:21-
`
`22). Many application programs can be installed on a computer, but not all of them
`
`are typically running at the same time. (Ex. 2038, Declaration of Stuart
`
`Stubblebine (“Stubblebine Decl.”) at ¶ 12). Even if a computer is itself connected
`
`to a network such as the Internet (i.e., is “on-line”), at least some of the computer’s
`
`programs may still be off-line and unavailable for communication over the
`
`network. (Id.; see also Ex. 2037, Deposition of Bruce Maggs (“Maggs Depo.”) at
`
`130:2-21). Because real-time point-to-point communications can only be
`
`established between applications that are on-line at the time the desired
`
`communication is sought, (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 it is sought. (Ex.
`
`2038 at ¶ 13; Ex. 1001 at 1:63-2:10, 3:40-54, 5:15-6:16, 10:4-37, claims 1, 2, 4, 32,
`
`33, 38).
`
`7
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
`
`A.
`
`The Problems And Solutions Identified By The ’704 Patent
`
`The ’704 patent application was filed on September 25, 1995, when the
`
`Internet was in its infancy. (Ex. 1001 at [22]). The ’704 patent specification
`
`explains that the increased popularity of on-line services such as America Online
`
`spurred the development of computer programs that provide on-line services such
`
`as real-time video conferencing. (Ex. 1001 at 1:9-20, 1:48-56, 7:32-41, 8:21-22).
`
`When repeatedly logging on and off of the Internet, programs may receive a new,
`
`temporary (or “dynamically allocated”) IP address each time they reconnect to the
`
`network. (Ex. 2038 at ¶ 14; Ex. 1001 at 1:35-47, 5:14-29, 6:6-16). Unlike
`
`permanent IP addresses that do not change, these “dynamic” IP addresses made it
`
`difficult to establish communications between computer programs that (a) are not
`
`permanently connected to the network and (b) may have a new, as-yet-unknown IP
`
`address when they reconnect to the network. (Ex. 2038 at ¶ 15; Ex. 1001 at 1:48-
`
`56). The ’704 patent solved these two problems. (Ex. 2038 at ¶ 16; Ex. 1001 at
`
`1:63-2:10, 5:15-6:16, 7:32-36, 10:4-37, claims 1, 2, 4, 32, 33, 38).
`
`The ’704 patent solved the problem of realtime point-to-point
`
`communications between computer programs that are not permanently connected
`
`to a network and may have a new IP address each time they reconnect to a network
`
`by providing a real-time point-to-point Internet communications protocol for:
`
`(1) determining whether a specific, targeted computer program is currently
`
`8
`
`

`
`Case IPR2015-00209
`U.S. Patent No. 6,108,704
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`running and connected to a network; (2) determining that computer program’s
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`address on the network at the time the communication is sought; and
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`(3) establishing a point-to-point communication with that computer program. (Ex.
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`1001 at 1:63-2:10, 5:15-6:16, 7:32-36, 10:4-37, claims 1, 2, 4, 32, 33, 38).
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`In one embodiment, the disclosed protocol works as follows: a first user who
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`is connected to the Internet or other computer network (the caller) and who wishes
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`to communicate with another user over the Internet launches an application
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`program on her computer or her Personal Digital Assistant (“PDA”) and connects
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`that program to the network. (Ex. 2038 at ¶ 17; Ex. 1001 at 3:40-46, 4:26-32, 5:21-
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`24, 10:4-9). This program, which can be written in C++, then transmits its IP
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`address to a “connection server,” which, among other things, may then determine
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`whether other programs are on-line and available for communication, and if so,
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`facilitate communications between different on-line programs. (Ex. 2038 at ¶¶ 17,
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`26; Ex. 1001 at 3:40-55, 5:25-31, 5:55-6:15, 10:4-21). From this initial
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`transmission, the connection server obtains and stores the first user’s then-current
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`dynamic IP address in a database. (Ex. 2038 at ¶ 17; Ex. 1001 at 5:25-31). This
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`initial transmission also establishes the first user’s computer program as an “active
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`on-line party” in the connection server database. (Ex. 2038 at ¶ 17; Ex. 1001 at
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`5:31-34, 5:55-60, 6:1-16).
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`But the first user’s program may later disconnect from the network, and
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`therefore no longer be an “active on-line party” available for a point-to-point
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`communication. (Ex. 2038 at ¶ 18; Ex. 1001 at 6:1-14). Accordingly, to determine
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`if the user’s program is actually connected to the network and available for
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`communication, the specification discloses that “[w]hen a user logs off or goes off-
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`line from the Internet 24, the connection server 26 updates the status of the user in
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`the database 34; for example by removing the user’s information.” (Ex. 2038 at ¶
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`18; Ex. 1001 at 6:6-14). The connection server could also use a status flag to
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`identify that a registered program is off-line. (Id.)
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`Like the first user, a second user (the callee) may also start an application on
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`his connected computer or PDA, thereby storing his then-current IP address in the
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`connection server database and establishing his program as active and on-line. (Ex.
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`2038 at ¶ 19; Ex. 1001 at 5:34-38, 10:4-7). The first user’s program can attempt to
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`initiate a point-to-point connection with the second user’s program by sending a
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`request to the connection server. (Ex. 2038 at ¶ 19; Ex. 1001 at 3:40-43, 5:45-56,
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`10:7-10, 28-32).
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`In response to the first user’s request, the connection server will search its
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`database to determine if the second user’s program is on-line. (Ex. 2038 at ¶ 19;
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`Ex. 1001 at 5:57-60, 10:28-34). If it is on-line, the connection server will then
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`forward the IP address of the second user’s program to the first program, which
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`then uses that IP address to establish the point-to-point communication between
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`itself and the second user’s program (without intermediation by the connection
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`server). (Ex. 2038 at ¶ 19; Ex. 1001 at 3:40-42, 5:60-67, 10:12-18, 32-37). If,
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`however, the second program is not on-line at the time the first program makes its
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`query, then the connection server sends the first program an “off-line” signal or
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`message. (Ex. 2038 at ¶ 20; Ex. 1001 at 6:1-16, 10:14-21). The connection server
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`will send the first program an “off-line” signal or message when the second
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`program is not currently connected to the network and is flagged as off-line, even
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`if that second program’s name and address remain stored in (or registered with) the
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`connection server. (Ex. 2038 at ¶ 20; Ex. 1001 at 6:1-16, 10:14-21). Thus, as
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`described in the ’704 patent specification, whether a computer program is currently
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`connected to the network or on-line is not and cannot be determined by whether its
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`name and address are registered with a connection server, for the program may be
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`so registered and yet be off-line. (Ex. 1001 at 6:1-14).
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`1.
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`The ’704 Patent Also Describes the Use of a Display Screen
`and Various Interface Elements.
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`The ’704 patent also describes the use of a display screen and various
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`interface elements to help a user to implement point-to-point communications. For
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`example, Figures 5 and 6 depict exemplary display screens that include icons
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`“configured to substantially simulate a telephone handset or a cellular telephone
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`interface to facilitate ease of use, as well as to simulate function keys of a
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`keyboard.” (Ex. 1001 at 8:41-61, FIGS. 5 and 6).
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`The specification describes providing interface elements representing a
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`communication “line” and a callee process. For example, a communication line
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`could be represented by an icon such as the L1-L4 icons depicted in Figure 6. (See
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`Ex. 1001 at 9:3-7). Similarly, a callee process could be represented by, for
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`example, one of a list of names or aliases presented as “an entry in a directory . . .
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`where the directory entries may be scrolled using the status area 38 and the down
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`arrow icon 40 [shown in Figure 6].” (Ex. 1001 at 9:25-33).
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`B.
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`The Challenged ’704 Patent Claims.
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`The challenged claims concern a method, apparatus, or “computer program
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`product” for establishing a point-to-point communication between a first (or caller)
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`process and a second (or callee) process. (Ex. 1001 at claims 1, 11, 12, 14, 16, 19,
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`22, 23, 27, 30, 31).
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`1.
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`The challenged claims concern application programs, not
`computer operating systems.
`All the challenged claims concern individual processes running on a
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`computer system. The claims do not concern the computer system itself. The
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`preambles of the independent claims makes this distinction clear. For example,
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`claim 1 claims a “computer program product for use with a computer system . . .”
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`(Ex. 1001 at claim 1) (emphasis added). Claim 1 is thus directed toward a
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`computer program that is executed by the computer system. It does not claim the
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`computer system itself.
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`Petitioner’s own expert, Dr. Maggs, admitted at his deposition that the claim
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`term “process” should be construed to mean “a running instance of a computer
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`application or program.” (Ex. 2037 at 112:13-113:14). This definition comports
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`with the ’704 patent’s claims and specification. The specification states that “[t]he
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`first processing unit 12 may operate the disclosed point-to-point Internet protocol
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`by a computer program.” (Ex. 1001 at 3:46.) Dr. Maggs admitted that this
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`disclosure was probably an application program, as opposed to a component of an
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`operating system (Ex. 2037 at 112:2-13), let alone the operating system itself.
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`Petitioners offer no construction for the term “process.” Yet Petitioners
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`previously admitted that Patent Owner’s construction is correct. Straight Path
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`accused Petitioner of infringing the ’704 patent in the United States International
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`Trade Commission (Inv. No. 337-TA-892) (the “892 Investigation”). In that
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`litigation, the parties submitted a “Joint Submission of Disputed Claim Terms,” in
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`which Petitioner agreed that the correct construction of the claim term “process” is
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`a “running instance of a computer program or application.” (Ex. 2016 at 12). This
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`is the same construction that Straight Path proposes here.
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`The correct construction of “process” was also addressed in prior lawsuits.
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`In Straight Path IP Group, Inc. v. Bandwidth