Trials@uspto.gov
`571-272-7822
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` Paper 11
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` Entered: June 5, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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` Paper 11
`
`
` Entered: June 5, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`
`I.
`
`INTRODUCTION
`
`Cisco System, Inc. and AVAYA, Inc. (collectively, “Petitioner”) filed
`
`a Petition requesting an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17,
`
`and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469 patent”).
`
`Paper 3 (“Pet.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted “unless . . . there is
`
`a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” After considering the
`
`Petition and associated evidence, we conclude that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing
`
`unpatentability of all the challenged claims. Thus, we authorize institution
`
`of an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
`
`’469 patent.
`
`A. Related Proceedings
`
`Petitioner indicates that the ’469 patent is the subject of Straight Path
`
`IP Grp., Inc. v. Cisco Sys., Inc., No. 3:14-cv-04312 (N.D. Cal.) and Straight
`
`Path IP Grp., Inc. v. AVAYA, Inc., No. 3:14-cv-04309 (N.D. Cal.). Pet. 2.
`
`Petitioner also indicates that the ʼ469 patent is the subject of Certain Point-
`
`to-Point Network Commc’n Devices and Prods. Containing Same, Inv. No.
`
`337-TA-892 (USITC). Id. at 4. Petitioner indicates that the ʼ469 patent is
`
`also the subject of Samsung Elecs. Co. v. Straight Path IP Grp., Inc.,
`
`IPR2014-01367 (PTAB) and LG Elecs., Inc. v Straight Path IP Grp., Inc.,
`
`IPR2015-00198 (PTAB). Id. at 1–2.
`
`Petitioner further indicates that the ʼ469 patent is related to U.S.
`
`Patent No. 6,108,704 (“the ʼ704 patent”) and U.S. Patent No. 6,131,121
`
`(“the ʼ121 patent”). Id. at 1. The ʼ704 patent was the subject of Sipnet EU
`
`2
`
`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`S.R.O. v. Straight Path IP Grp., Inc., IPR2013-00246 (PTAB) (“Sipnet”).
`
`Id. at 2. The ʼ704 patent and the ʼ121 patent are the subject of Samsung
`
`Elecs., Co. v. Straight Path IP Grp., Inc., IPR2014-01366 (PTAB), and
`
`Samsung Elecs., Co. v. Straight Path IP Grp., Inc., IPR2014-01368 (PTAB),
`
`respectively. Id. at 1–2. The ʼ704 patent and ʼ469 patent are also the subject
`
`of LG Elecs., Inc. v. Straight Path IP Grp., Inc., IPR2015-00209 (PTAB),
`
`and LG Elecs., Inc. v. Straight Path IP Grp., Inc., IPR2015-00196 (PTAB),
`
`respectively. Id. at 2.
`
`B. Illustrative Claim
`
`Petitioner challenges claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
`
`’469 patent. Pet. 37–60. Independent claim 1 is illustrative of the claims at
`
`issue and follows:
`
`A computer program product for use with a computer
`1.
`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:
`a.
`
`b.
`
`c.
`
`program code for generating a user-interface
`enabling control of a first process executing on the
`computer system;
`program code for determining the currently
`assigned network protocol address of the first
`process upon connection to the computer network;
`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
`process upon establishing a communication
`connection with the server process; and
`
`3
`
`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`
`d.
`
`program code, responsive to user input commands,
`for establishing a point-to-point communications
`with another process over the computer network.
`
`C. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s
`
`contentions of unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of
`
`the ’469 patent under 35 U.S.C. §§ 102, 103(a), as follows (see Pet. 7, 37–
`
`60):
`
`Reference(s)
`
`Basis
`
`Microsoft Manual1
`Microsoft Manual and
`NetBIOS3
`Microsoft Manual,
`NetBIOS, and Palmer5
`Microsoft Manual,
`NetBIOS, Palmer, and Pinard6
`
`
`
`Claims
`Challenged
`1–3, 5, 6, and 92
`
`1–3, 5, 6, and 94
`
`§ 102(a)
`
`§ 103(a)
`
`§ 103(a)
`
`9, 10, 14, 17, and 18
`
`§ 103(a)
`
`1, 9, and 14
`
`1 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`2 Although Petitioner first identifies claim 17 as challenged under this
`ground, Petitioner’s argument and claim charts do not include claim 17.
`Accordingly, we do not understand Petitioner to have challenged claim 17
`under this ground. Compare Pet. 7 with id. at 37–48.
`3 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING:SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`4 Although Petitioner first identifies claim 17 as challenged under this
`ground, Petitioner’s argument and claim charts do not include claim 17.
`Accordingly, we do not understand Petitioner to have challenged claim 17 as
`part of this ground. Compare Pet. 7 with id. at 37–48.
`5 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`6 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1021, “Pinard”).
`
`4
`
`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`Microsoft Manual,
`NetBIOS, Palmer, Pinard, and
`Pitkin7
`
`§ 103(a)
`
`3, 6, and 98
`
`II. ANALYSIS
`
`Petitioner argues that claims 1–3, 5, 6, and 9 are unpatentable under
`
`35 U.S.C. § 103 (a) as obvious over Microsoft Manual and NetBIOS, and
`
`claims 10, 14, 17, and 18 are unpatentable under 35 U.S.C. § 103 as obvious
`
`over Microsoft Manual, NetBIOS, and Palmer. Pet. 7, 37–54. Petitioner
`
`submits arguments and evidence identical to those submitted in IPR2014-
`
`01367. Pet. 5. Petitioner proposes the same claim construction and argues
`
`the same rationale of unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and
`
`18 as presented in IPR2014-01367. Pet. 7, 24–54; Samsung Elecs. Co. v.
`
`Straight Path IP Grp., Inc., IPR2014-01367, Paper 1, 4–5, 21–49. Petitioner
`
`further relies on the same Declaration by Dr. Henry Houh in support of the
`
`alleged grounds of unpatentability. Pet. 37–54; Ex. 1004. Straight Path IP
`
`Group, Inc. (“Patent Owner”) and Petitioner filed a stipulated proposed
`
`order defining the parameters of joinder. See Paper 10.
`
`We determined that the Petitioner in IPR2014-01367, Samsung
`
`Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`
`Telecommunications America, LLC (collectively, “Samsung”),
`
`
`
`7 U.S. Patent No. 5,341,477, issued Aug. 23, 1994 (Ex. 1015, “Pitkin”).
`8 Although Petitioner first identifies claims 1 and 5 as challenged under this
`ground, Petitioner’s argument does not include claims 1 and 5. Accordingly,
`we do not understand Petitioner to have challenged claims 1 and 5 as part of
`this ground. Compare Pet. 5 with id. at 53–54.
`
`5
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`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`demonstrated a reasonable likelihood of prevailing in establishing the
`
`unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent.
`
`Samsung Elecs. Co. v. Straight Path IP Grp., Inc., IPR2014-01367, slip op.
`
`at 10–19 (Paper 12). We granted that Petition and instituted an inter partes
`
`review of claims 1–3, 5, 6, and 9 under 35 U.S.C. § 103 as obvious over
`
`Microsoft Manual and NetBIOS, and claims 10, 14, 17, and 18 under
`
`35 U.S.C. § 103 as obvious over Microsoft Manual, NetBIOS, and Palmer.
`
`Id. at 21.
`
`Accordingly, we incorporate our previous analysis, including our
`
`claim interpretation analysis (see id. at 6–10) and our analysis regarding this
`
`asserted ground of unpatentability (see id. at 10–19), from IPR2014-01367,
`
`and we determine that Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail in establishing the unpatentability of claims 1–3, 5, 6, 9,
`
`10, 14, 17, and 18 of the ’469 patent in this Petition for the same reasons
`
`discussed in Samsung Elecs. Co. v. Straight Path IP Grp., Inc., IPR2014-
`
`01367 (PTAB Mar. 6, 2015).
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in establishing unpatentability of claims 1–3, 5, 6,
`
`9, 10, 14, 17, and 18 of the ’469 patent.
`
`We have not made a final determination on the patentability of any
`
`challenged claims.
`
`6
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`
`
`Case IPR2015-01007
`Patent 6,009,469 C1
`
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review
`
`hereby is instituted as to the following proposed grounds:
`
`1.
`
`Obviousness of claims 1–3, 5, 6, and 9 under 35 U.S.C.
`
`§ 103(a) over Microsoft Manual and NetBIOS; and
`
`2.
`
`Obviousness of claims 10, 14, 17, and 18 under
`
`35 U.S.C. § 103(a) over Microsoft Manual, NetBIOS, and
`
`Palmer;
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified above and no other grounds are authorized; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`commences on the entry date of this Decision.
`
`
`
`For PETITIONER:
`
`David Cavanaugh
`Jason Kipnis
`Wilmer, Cutler, Pickering, Hale and Dorr
`David.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`For PATENT OWNER:
`
`William Meunier
`Matthew Durell
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`WAMeunier@mintz.com
`MDurell@mintz.com
`
`7
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