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 IPR2015-01011
`Patent 6,108,704 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 IPR2015-01011
`Patent 6,108,704 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 IPR2015-01011
`Patent 6,108,704 C1
`
`
`I.
`
`INTRODUCTION
`
`Cisco Systems, Inc. and AVAYA, Inc. (collectively, “Petitioner”)
`
`filed a Petition requesting an inter partes review of claims 1, 11, 12, 14, 16,
`
`22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the
`
`’704 patent”). Paper 2 (“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, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of
`
`the ’704 patent.
`
`A. Related Proceedings
`
`Petitioner indicates that the ’704 patent is the subject of Straight Path
`
`IP Grp., Inc. v. Cisco Systems, 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 ʼ704 patent is the subject of Certain
`
`Point-to-Point Network Commc’n. Devices and Products Containing Same,
`
`Inv. No. 337-TA-892 (USITC). Id. at 4. Petitioner indicates that the ʼ704
`
`patent is also the subject of Samsung Elecs. Co. v. Straight Path IP Grp.,
`
`Inc., IPR2014-01366 (PTAB) and LG Elecs., Inc. v Straight Path IP Grp.,
`
`Inc., IPR2015-00209 (PTAB). Id. at 1–2. The ʼ704 patent was the subject
`
`of Sipnet EU S.R.O. v. Straight Path IP Grp., Inc., IPR2013-00246 (PTAB)
`
`(“Sipnet”). Id. at 2.
`
`2
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`
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`Case IPR2015-01011
`Patent 6,108,704 C1
`
`
`Petitioner further indicates that the ʼ704 patent is related to U.S.
`
`Patent No. 6,009,469 (“the ʼ469 patent”) and U.S. Patent No. 6,131,121
`
`(“the ʼ121 patent”). Id. at 1. The ʼ469 patent and the ʼ121 patent are the
`
`subject of Samsung Elecs., Co. v. Straight Path IP Grp., Inc., IPR2014-
`
`01367 (PTAB), and Samsung Elecs., Co. v. Straight Path IP Grp., Inc.,
`
`IPR2014-01368 (PTAB), respectively. Id. at 1–2. The ʼ121 patent and
`
`ʼ469 patent are also the subject of LG Elecs., Inc. v. Straight Path IP Grp.,
`
`Inc., IPR2015-00196 (PTAB), and LG Elecs., Inc. v. Straight Path IP Grp.,
`
`Inc., IPR2015-00198 (PTAB), respectively. Id. at 2.
`
`B. Illustrative Claim
`
`Petitioner challenges claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31of
`
`the ’704 patent. Pet. 34–60. Independent claim 1 is illustrative of the claims
`
`at issue and follows:
`
`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;
`
`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
`
`3
`
`
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`Case IPR2015-01011
`Patent 6,108,704 C1
`
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`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.
`
`C. The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s
`
`contentions of unpatentability of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and
`
`31 of the ’704 patent under 35 U.S.C. §§ 102, 103(a), as follows (see Pet. 7,
`
`34–60):
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`Microsoft Manual1
`Microsoft Manual and
`NetBIOS2
`Microsoft Manual,
`NetBIOS, and Palmer3
`Microsoft Manual,
`NetBIOS, Palmer, and Pinard4
`Microsoft Manual,
`NetBIOS, Palmer, Pinard, and
`Pitkin5
`
`§ 102(a)
`
`1, 11, 12, 22, and 23
`
`§ 103(a)
`
`1, 11, 12, 22, and 23
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`11, 12, 14, 16, 22, 23, 27,
`30, and 31
`11, 12, 14, 16, 22, 23, 27,
`30, and 31
`
`1, 11, 12, 14, 16, 22, 23,
`27, 30, and 31
`
`II. ANALYSIS
`
`Petitioner argues that claims 1, 11, 12, 22, and 23 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Microsoft Manual and NetBIOS, and
`
`
`
`1 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`2 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`3 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`4 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1021, “Pinard”).
`5 U.S. Patent No. 5,341,477, issued Aug. 23, 1994 (Ex. 1015, “Pitkin”).
`
`4
`
`
`
`Case IPR2015-01011
`Patent 6,108,704 C1
`
`claims 11, 12, 14, 16, 22, 23, 27, 30, and 31 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Microsoft Manual, NetBIOS, and Palmer.
`
`Pet. 7, 35–54. Petitioner submits arguments and evidence identical to those
`
`submitted in IPR2014-01366. Pet. 5. Petitioner proposes the same claim
`
`construction and argues the same rationale of unpatentability of claims 1, 11,
`
`12, 14, 16, 22, 23, 27, 30, and 31 as presented in IPR2014-01366. Pet. 7,
`
`23–54; Samsung Elecs. Co. v. Straight Path IP Grp., Inc., IPR2014-01366,
`
`Paper 1, 5, 20–49. Petitioner further relies on the same Declaration by
`
`Dr. Henry Houh in support of the alleged grounds of unpatentability.
`
`Pet. 35–54; 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 IPR2014-01366, Samsung
`
`Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`
`Telecommunications America, LLC (collectively, “Samsung”),
`
`demonstrated a reasonable likelihood of prevailing in establishing the
`
`unpatentability of claims 1, 11, 12, 14, 16, 22, 23, 27, 30, and 31 of the
`
`’704 patent. Samsung Elecs. Co. v. Straight Path IP Grp., Inc.,
`
`IPR2014-01366, slip op. at 11–20 (Paper 12). We granted that Petition and
`
`instituted an inter partes review of claims 1, 11, 12, 22, and 23 under
`
`35 U.S.C. § 103 as obvious over Microsoft Manual and NetBIOS, and
`
`claims 14, 16, 27, 30, and 31 under 35 U.S.C. § 103 as obvious over
`
`Microsoft Manual, NetBIOS, and Palmer. Id. at 22.
`
`Accordingly, we incorporate our previous analysis, including our
`
`claim interpretation analysis (see id. at 5–11) and our analysis regarding this
`
`asserted ground of unpatentability (see id. at 11–20), from IPR2014-01366,
`
`5
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`and we determine that Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail in establishing the unpatentability of claims 1, 11, 12,
`
`14, 16, 22, 23, 27, 30, and 31 of the ’704 patent in this Petition for the same
`
`reasons discussed in Samsung Elecs. Co. v. Straight Path IP Grp., Inc.,
`
`IPR2014-01366 (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, 11, 12,
`
`14, 16, 22, 23, 27, 30, and 31 of the ’704 patent.
`
`We have not made a final determination on the patentability of any
`
`challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`
`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, 11, 12, 22, and 23 under 35
`
`U.S.C. § 103(a) over Microsoft Manual and NetBIOS; and
`
`2.
`
`Obviousness of claims 14, 16, 27, 30, and 31 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
`
`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.
`
`6
`
`
`
`Case IPR2015-01011
`Patent 6,108,704 C1
`
`
`
`
`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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