`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIPNET EU S.R-O.
`
`Petitioner
`
`V.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, INC-
`Patent Owner
`
`Patent No- 6,108,704
`
`Filing Date: September 25, 1995
`
`Issue Date: August 22, 2000
`Title: POINT—TO-POINT INTERNET PROTOCOL
`
`Inter Partes Review No. Unassigged
`
`PETITION FOR INTER PAR TES REVIEW
`
`UNDER 35 U.S.C. §§ 311—319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`Page 1 of 63
`
`LG Electronics Exhibit 1007
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Formalities ....................................................................................................... 2
`
`A.
`
`B
`
`Real Party in Interest ............................................................................. 2
`
`Related Matters ...................................................................................... 3
`
`C.
`
`Fee ......................................................................................................... 3
`
`D
`
`Designation of Lead Counsel and Request for
`Authorization ......................................................................................... 3
`
`E.
`
`Service Information ............................................................................... 4
`
`F.
`
`G.
`
`Power of Attorney ................................................................................. 4
`
`Standing ................................................................................................. 4
`
`111.
`
`Statement of Relief Requested ........................................................................ 4
`
`IV.
`
`Claim Construction .......................................................................................... S
`
`V.
`
`Full Statement of the Reasons for the Relief Requested ................................. 8
`
`VI.
`
`Claim Charts .................................................................................................. 33
`
`VII. Conclusion ..................................................................................................... 59
`
`i
`
`65352612V.1
`
`Page 2 of 63
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001: US. Patent No- 6,108,704 (“the ‘704 patent”)
`
`Exhibit 1002: Form PTO—SB/42 (“IDS”)
`
`Exhibit 1003: NetBIOS “Technical Standard — Protocols for X/Open PC
`
`Interworking: SMB, Version 2” [includes Appendix F “RFC1001, Protocol
`
`Standard for a NetBIOS Service on a TCP/UDP Transport: Concepts and
`
`Methods” & Appendix G “RFC1002, Protocol Standard for a NETBIOS Service
`
`on a TCP/UDP Transport: Detailed Specifications-”] (“NetBIOS”)
`
`Exhibit 1004: Windows NT 3-5 "TCP/IP User Guide, September 21, 1994
`
`(“WINS”)
`
`Exhibit 1005: ht‘gg://en.wikipedia.org/wiki/VVindows NT 3.5 [Wikipedia
`
`entry establishing Sept. 21, 1994 as release date of Windows NT 3.5] (“WINS
`
`Release Date”)
`
`Exhibit 1006: Susan Thomson, et al-, DNS Dynamic Updates, [ETF
`
`DNSIND Working Group (Jul. 14, 1994) (DNS 1)
`
`Exhibit 1007: Susan Thomson, Yakov Rekhter, et al-, DNS Dynamic Updates,
`
`Foils (July 1994) (DNS 2)
`
`ii
`
`Page 3 of 63
`
`
`
`Exhibit 1008: Claim Construction Order in ICT v. Vivox and Stalker (“Claim
`
`Construction Order”)
`
`Exhibit 1009: Joint Claim Construction Chart in Net2Phone Inc. v. eBay Inc.,
`
`Skype Technologies, et al. (“Claim Construction Chart”)
`
`Exhibit 1010: Digital Equipment Corporation Patent 5,483,652 , filed Jan 24,
`
`1994 (“DEC ‘652”)
`
`Exhibit 1011: Ryan, “LAN Manager 2.0," 1990 (“Messenger — Ryan”)
`
`Exhibit 1012: Robert Cowart, et al. “Windows NT Unleashed”, March 1994
`
`(“Messenger — NT Unleashed”) [Exhibits 1011 & 1012 together are “Messenger”].
`
`Exhibit 1013: P. Mockapetris, “RFC1034. DOMAIN NAMES — CONCEPTS
`
`AND FACILITIES” (“DNSOrig”).
`
`Exhibit 1014: “VocalTec ware lets users make voice calls over ‘Net,”
`
`Network World, Feb. 13, 1995 (“VocalTec”).
`
`Exhibit 1015: Taligent Patent 5,566,278 (“Taligent ‘278”)_
`
`iii
`
`Page 4 of 63
`
`
`
`Introduction
`
`Petition Eligibility. Through counsel, real party in interest Sipnet EU
`
`S-R.O. (“Petitioner”) hereby petitions for initiation of inter partes review of US.
`
`Patent No. 6,108,704 (“the ‘704 Patent”), with an assignment from the previous
`
`owners to Innovative Communications Technologies, Inc. (all owners collectively
`
`referred to as “Patent Owner”), recorded in the U-S. Patent Office Database. The
`
`‘704 Patent issued on August 22, 2000, more than nine months prior to the filing of
`
`this petition- The ‘704 Patent is currently asserted in a co—pending litigation,
`
`against third parties not affiliated with petitioner. See Exhibit 1006. Petitioner has
`
`not been served with a complaint alleging infringement of the ‘704 Patent. Thus,
`
`the ‘704 Patent is eligible for inter partes review.
`
`Summary. The ‘704 Patent claims are directed to computers registering an
`
`internet address with a name server over a network (e.g-, Internet) so they can
`
`initiate point—to—point communication (e.g-,
`
`text messaging).
`
`In previous
`
`prosecution, Patent Owner acknowledged that such registration and point—to—point
`
`communication is in the prior art, but claimed that determining that the computers
`
`are online is new, by providing dynamic addressing that tracks new addresses for
`
`the same computer each time it connects to the network.
`
`In particular,
`
`the
`
`NetBIOS prior art submitted in the ex—parte reexamination was argued to not have
`
`dynamic addressing.
`
`Page 5 of 63
`
`
`
`The WINS prior art (not previously considered) was designed EXPLICITLY
`
`to provide a NetBIOS "name server" function in a DHCP (dynamic addressing)
`
`environment, and thus teaches what is claimed, alone or in combination with
`
`NetBIOS.
`
`Patent Owner has previously argued that prior art only shows addresses
`
`being registered, not “dynamically” determining that a process (program) is
`
`“online.” However, the only way taught in the ‘704 Patent to determine if a
`
`process is online is if it has provided an address to the name server. Patent Owner
`
`has also argued that prior art shows registering a computer, not a process
`
`(program) on that computer. However, NetBIOS and WINS contemplated
`
`registering processes, and the submitted Messenger prior art is an example of such
`
`a process.
`
`In addition, other combinations of prior art teach the invention, with its
`
`dynamic nature, as described below.
`
`Formalities
`
`A.
`
`Real Party in Interest
`
`The real party in interest, Sipnet EU S-R.O.
`
`is a limited liability Czech
`
`company with its headquarters and principal business address at T. G. Masaryka,
`
`859/18, 360 01 Karlovy Vary, Ceska republika.
`
`Page 6 of 63
`
`
`
`B.
`
`Related Matters
`
`The ‘704 Patent has been involved in eX—parte
`
`reexamination No.
`
`90/010,416 and the following lawsuits:
`
`Net2Phone, Inc. v. eBay Inc., Skype Inc., et al-, Civil Action No. 06—2469
`
`(D. New Jersey, filed 6—1—2006) [the “Skype litigation”]
`
`Innovative Communications Technologies, Inc. v. Stalker Software, Inc.,
`
`etc. U-S. District Court, Docket No. 2:12—cv—00009—RGD—TEM; v. ooVoo, LLC,
`
`Docket No. 2:12—cv—00008—RGD—DEM; and v. Vivox, Inc., Docket No. 2:12—cv—
`
`00007—RGD—LRL (all E.D. Virginia, all filed 1—4—2012) [collectively the “Stalker
`
`litigation”]
`
`C.
`
`Fee
`
`This petition for inter partes review is accompanied by a payment of
`
`$24,200 and requests review of claims 1—7 and 32—42 of the ’704 patent. See 37
`
`C.F.R. § 42.15. Thus, this petition meets the fee requirements under 35 U-S.C.
`
`§ 312(a)(1).
`
`D.
`
`Designation of Lead Counsel and Request for Authorization
`
`Lead Counsel for Petitioner is Paul C. Haughey, US. Patent and Trademark
`
`Office Registration # 31,83 6, of Kilpatrick Townsend & Stockton LLP- Back—up
`
`Page 7 of 63
`
`
`
`counsel for Petitioner is Michael T. Morlock Registration # 62,245 of Kilpatrick
`
`Townsend & Stockton LLP.
`
`E.
`
`Service Information
`
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, in its entirety, is being served to the address of the attorney or agent of
`
`record. Sipnet EU S.R-O. may be served at its counsel, Kilpatrick Townsend &
`
`Stockton LLP, Two Embarcadero Center, Eighth Floor, San Francisco, CA 94111—
`
`3834-
`
`F.
`
`Power of Attorney
`
`A power of attorney is being filed with the designation of counsel
`
`in
`
`accordance with 37 CPR. § 42-10(b).
`
`G.
`
`Standing
`
`The Petitioner certifies that the ‘704 patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting an inter
`
`partes review challenging the patent claims on the grounds identified in this
`
`petition-
`
`Statement of Relief Requested
`
`Pursuant to 35 U.S.C. § 311, this petition requests cancellation of claims 1—7
`
`and 32—42 as being anticipated under 35 U-S.C. § 102(b) by each of the following
`
`references:
`
`Page 8 of 63
`
`
`
`0 Messenger
`
`0 NetBIOS
`
`o WINS
`
`0 DNS (DNS 1, 2, Orig.)
`
`In addition, this petition requests cancellation of claims 1, 2 and 4—6 as being
`
`anticipated under 35 U-S.C. § 102(b) by DEC ‘652.
`
`In the alternative, this petition requests cancellation of claims 1—7 and 32—42
`
`as being obvious under 35 U.S.C. § 103 over the combination of Messenger and
`
`NetBIOS or WlNS, NetBIOS and WINS, DNS Orig, DNSl and DNS 2, or DNS
`
`(Orig, 1, 2) and any one of VocalTec, Taligent ‘278, ‘704 Patent admitted prior art
`
`and DEC ‘652-
`
`Claim Construction
`
`In inter partes review, claim terms are interpreted under a “broadest
`
`reasonable construction” standard. See 37 CPR. § 42.100Cb). In compliance with
`
`37 CPR. § 1.42-104(b)(4) and for the purposes of this proceeding, Petitioner
`
`states that in general the claim terms are presumed to take on their ordinary and
`
`customary meaning.
`
`‘Connected to the computer network”/”online.” This was not construed by
`
`the court in any of the litigations. EX. 1007 is the Joint Claim Construction Chart of
`
`Page 9 of 63
`
`
`
`the parties in the Skype litigation, showing the side—by—side proposed claim
`
`constructions of
`
`the parties.
`
`The plaintiff s proposed construction of
`
`“connectedfonline” is simply “online.”
`
`Claim terms are generally given their ordinary and customary meaning, as
`
`modified by extrinsic evidence (the patent and file history) and extrinsic evidence-
`
`Dictionary definitions of “online” merely say “connected to a network” (see, e.g-,
`
`http://www.merriam—webster-com/dictionary/online), which is consistent with
`
`Patent Owner’s proposed interpretation, which treats “connected” and “online” as
`
`equivalent. As described in the ‘704 patent,
`
`this is determined by examining
`
`whether a computer has registered with the name server (see Col. 5, lines 24—33:
`
`“Upon the first user initiating the point—to—point Internet protocol when the first
`
`user is logged on to Internet 24,
`
`the first processing unit 12 automatically
`
`transmits its associated E—mail address and its dynamically allocated IP address to
`
`the connection server 26. The connection server 26 then stores these addresses in
`
`the database 34 and timestamps the stored addresses using timer 32. Thefirst user
`
`operating the first processing unit 12 is thus established in the database 34 as an
`
`active on-line party availablefor communication using the disclosed point—to—point
`
`Internetprotocol)
`
`Page 10 of 63
`
`
`
`(
`
`‘Identifier of a process.” This was not construed by the court in any of the
`
`litigations- Patent Owner, in its claim construction brief in the Skype litigation,
`
`said it was an email address or other distinguishing name.
`
`The following terms were construed as set forth in the Claim Construction
`
`Order of EX- 1006 fiom the Stalker litigation:
`
`“Process” is “a running instance of a computer program or application.”
`
`“Point to point” is “communications between two processes over a computer
`
`network that are not intermediated by a connection server.”
`
`(
`
`‘Dy_namically assigped network protocol address” is “a network protocol
`
`address assigned to a host for a limited period of time (or until the host explicitly
`
`relinquishes the address).”
`
`Means plus function elements.
`
`The only “means plus filnction” element
`
`in the contested claims is the
`
`following element of claim 2:
`
`means, responsive to a query from the first process, for determining the on—
`
`line status of the second process and for transmitting a network protocol address
`
`of the second process to thefirst process in response to a positive determination of
`
`the on—Zine status ofthe second process.
`
`The ‘704 Patent specification describes connection server 26 storing
`
`addresses in database 34 as the elements which establish the on—line status (Col- 5,
`
`7
`
`Page 11 of 63
`
`
`
`lines 25—3 7). The response to a query about online status by server 26 is described
`
`in Col. 5, lines 55—67.
`
`The interpretation and/or construction of the claims in the ‘704 patent
`
`presented either
`
`implicitly or explicitly herein should not be viewed as
`
`constituting, in whole or in part, Petitioner’s own interpretation andfor construction
`
`of such claims, but instead should be viewed as constituting an interpretation
`
`and/or construction of such claims as may be raised by Patent Owner or the Office
`
`through a broadest reasonable claim construction- Petitioner does not agree with
`
`Patent Owner’s own interpretation of the claims, and expressly reserves the right to
`
`present other interpretations of any of the ‘704 patent claims at a later time, which
`
`interpretation may differ, in whole or in part, fiom that presented herein.
`
`Full Statement of the Reasons for the Relief Requested
`
`Summafl
`
`The below chart summaries claim 1 of the ‘704 Patent. The other
`
`independent claims are similar, and the dependent claims do not add any novel
`
`features- As noted earlier, Patent Owner acknowledges that the prior art shows
`
`registration and point—to—point communication, but asserts that determining online
`
`status (dynamic addressing) is new.
`
`“Permanent IP addresses ofusers and devices accessing the Internet readily
`
`support point—to-point communications of voice and video signals over the
`
`8
`
`Page 12 of 63
`
`
`
`Internet. For example,
`
`realtime video teleconferencing has been implemented
`
`using dedicated IP addresses and mechanisms known as reflectors. Due to the
`
`dynamic nature of temporary IP addresses ofsome devices accessing the Internet,
`
`point—to—point communications in realtime of voice and video have been generally
`
`difi‘icult to attain.” (‘704 Patent, col- 1, lines 48—56).
`
`Patent 6,108,704
`
`Plain En_lish Summ.
`
`Software for point—to—point
`communication over the Internet
`
`or other network.
`
`Computer code.
`
`A 1St computer connects to the
`network (e.g., Internet), is
`assigned a network address, and
`provides that address to an
`address server.
`The lSt computer asks the
`address server whether a 2Ild
`
`comuter is online.
`
`The 2‘l computer also provides
`its address to the address server
`
`when it connects to the network
`
`The 15‘ and 2
`
`establish point—to—point
`communication using the address
`of the 2Ild computer.
`
`computers
`
`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
`:4 am roduct comrisin_:
`
`a computer usable medium having program
`code embodied in the medium, the program
`code comrisin_:
`
`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 com uter network'
`
`program code for receiving a network protocol
`address of the second process fiom the server,
`when the second process is connected to the
`com uter 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
`rocess over the com uter network.
`
`Page 13 of 63
`
`
`
`It is important to note that the only way described in the ‘704 Patent to
`
`“dynamically” determine that a process (computer) is online is by determining if it
`
`has provided an address to the name server. In previous proceedings, patent owner
`
`has tried to obfuscate and shift the focus by arguing the prior art doesn’t show
`
`anything more, but the ‘704 Patent also doesn’t show anything more. The prior art
`
`can’t be held to a higher standard of enablement than the patent itself.
`
`Overview of invalidig analysis
`
`NetBIOS- NetBIOS (Network Basic Input/Output System) was originally
`
`developed for IBM's PC—Network in the early 1980s. NetBIOS is a software
`
`interface that allows applications on different computers to communicate within a
`
`computer network, such as a local area network or the Internet. In general,
`
`NetBIOS enables point—to—point communications between two or more "point—to—
`
`point" nodes through a dedicated directory service provided by a "NetBIOS Name
`
`Server."
`
`The claims of the ‘704 Patent are directed to learning the network address of
`
`another party for a point—to—point communication (e.g-, video call). A network
`
`name server keeps this data, and provides the numerical address in response to a
`
`query for a party.
`
`In the eX—parte reexaminations, it was shown that the prior art
`
`NetBIOS did this, but the Patent Owner argued that the invention was doing this
`
`10
`
`Page 14 of 63
`
`
`
`for dynamic addresses (e. g., where a different address is assigned each time a node
`
`goes “online”).
`
`The Patent Examiner agreed that NetBIOS provides the same address
`
`determining mechanism as described in the patent, but an expert declaration argued
`
`that “bringing dynamic addressing into a NetBIOS type system would create a new
`
`set of obstacles that would need to be solved that are not obvious in view of the
`
`combination of references.” What the expert failed to mention was that the
`
`obstacles had already been overcome, and they had nothing to do with registering
`
`an address-
`
`
`WINS. The WINS (Windows Internet Name Service) prior art (which was
`
`not considered in the ex—parte reexaminations) is the Microsoft implementation of
`
`a NetBIOS "Name Server". The WINS server was designed EXPLICITLY to
`
`provide a NetBIOS "name server" function in a DHCP (dynamic addressing)
`
`environment. Thus, it is clearly obvious to combine the dynamic addressing of
`
`WINS with NetBIOS to produce the invention, and this was in fact done.
`
`Messenger. OS/2 LAN Manager 2.0 released in 1990, and Microsoft
`
`Windows NT (including Windows NT 3-5 released in 1994) came with the
`
`Messenger Service (which was not considered in the ex—parte reexaminations).
`
`Messenger was an application that allowed point—to—point communication using
`
`NetBIOS and W8. The Messenger Service process detects when the computer
`
`11
`
`Page 15 of 63
`
`
`
`connects to the network ("gets online") and sends the NetBIOS name registration
`
`request (sent to the WINS name server in a WINS environment)- When a message
`
`is to be exchanged, a query is sent to the WINS name server to find out if the
`
`destination is online and to learn its network address. If the destination is online, a
`
`message is sent to the retrieved network address-
`
`It
`
`is received with the
`
`Messenger Service process on the receiving computer and displayed there in a pop—
`
`up window. the claims of the ‘704 patent do not require two—way communication,
`
`but even so, it would be obvious to enable a response, as received data packets
`
`include the sender’s network protocol address.
`
`Dflamic DNS. Dynamic DNS (Domain Name Service) is essentially the
`
`same as WlNS Name Server for NetBIOS, but for the standard Internet Domain
`
`Name System. Dynamic DNS allows a client system to connect to the DNS server
`
`and to update its DNS records, such as linking the system identifier (domain name)
`
`with the assigned IP address. The Dynamic DNS drafts were submitted to the
`
`Patent Office during the ex—parte reexamination, but were buried in the 100s of
`
`submitted references and were never pointed out to the Examiner nor commented
`
`on by the Examiner- It is clear the Examiner did not read it. Further, 37 CFR 1.2
`
`requires that all Office business be transacted in writing. Thus, the Office cannot
`
`presume that a prior art reference was previously relied upon or discussed in a
`
`prior Office proceeding if there is no basis in the written record to so conclude
`
`12
`
`Page 16 of 63
`
`
`
`other than the examiner’s initials or a check mark on a PTO 1449 form, or
`
`equivalent, submitted with an information disclosure statement.
`
`“Online” simply means registered. The showing of dynamic addressing by
`
`WINS or DNS is sufficient to show determining when a process is online. While
`
`claim 1 refers to “when the second process is connected to the network,” some of
`
`the claims (e.g., claim 2) use the term "online." The only description in the ‘704
`
`Patent of how it is determined that a process is online is that it has registered, since
`
`the process must go online in order to get an assigned address and register it (i_e.
`
`there is a record in the name server database and this record has not expired).
`
`Thus, any argument that “online” means more than this would make the claims
`
`invalid as not enabled- Thus, prior art (e.g., WlNS, dynamic DNS), which shows a
`
`registration that hasn’t been deleted,
`
`in fact shows determining the process is
`
`online as described in the ‘704 Patent.
`
`Per the ‘704 Patent, the process is presumed to stay online until it is de—
`
`registered. The patent does describe de—registering when a process logs off, but
`
`this simply shows when a process is offline, not online. The ‘704 Patent teaches
`
`that client processes may send an "off—line message" to the connection or name
`
`server upon logout, which results in the client's directory entry being deleted fiom
`
`the server's database or being flagged as off—line ('704 patent, col. 6:6—16). The
`
`patent also describes a time—stamp, but this simply says when it registered and was
`
`13
`
`Page 17 of 63
`
`
`
`online, not whether it continues to be online. Dependent claims 3 and 7 add the
`
`time stamp and off—line status limitations, thus these clearly aren’t required for the
`
`connection or online status of the independent claims. Also, this is consistent with
`
`Patent Owner’s proposed claim construction, as well as comments in the ‘704
`
`Patent and file history, e-g.:
`
`“...when the first user is logged on to Internet
`
`transmits its
`
`dynamically allocated IP address... The connection server 26 then stores these
`
`addresses in the database 34 and timestamps the stored addresses... Thefirst user
`
`. is thus established in the database 34 as an active on—line party available for
`
`communication using the disclosed point—to—point Internet protocol-” (Col- 5, lines
`
`24—33 — full quote under claim construction above)
`
`“As discussed previously, the reporting or “logging—in” of a client process
`
`with an address directory to provide the server with the current network protocol
`
`address at which the process can be located is not shown in the prior art.” [March
`
`4, 1999 amendment, p. 16, lines 7—10]-
`
`Patent Owner has argued that the prior art doesn’t show more than the ‘704
`
`Patent about how to determine a process is online. Throughout the ex—parte
`
`reexamination and the various litigations, Patent Owner has adopted a strategy of
`
`trying to divert attention and make things seem more complex than they are- The
`
`declaration of expert Ketan Mayer—Patel, for example, says the NetBIOS prior art
`
`14
`
`Page 18 of 63
`
`
`
`“active” status doesn’t mean it is online, and that the NetBIOS LISTEN doesn’t
`
`mean a process is online. These extra steps are irrelevant, since the ‘704 patent
`
`doesn’t teach anything beyond registration as indicating online status. What is
`
`sufficient for enablement of the ‘704 Patent is sufficient for the prior art.
`
`Other Patent Owner argflents. The Patent Owner has made a series of
`
`other arguments in the prior reexamination and the litigations- None of the
`
`litigations has proceeded to judgment, and thus no judge or jury has agreed with
`
`any of these arguments. The common thread is an argument that the prior art
`
`doesn’t show more than the ‘704 Patent itself claims or shows. In particular:
`
`1. NetBIOS and Dynamic DNS are protocols/interfaces, not applications.
`
`True but irrelevant. Both are clearly directed to enabling dynamic addressing and
`
`point to point communications, and describe the use by applications, thus enabling
`
`applications. The only description in the ‘704 Patent claims is how the application
`
`uses such a protocol/interface, not other aspects of an application. Also,
`
`Messenger clearly is such an application.
`
`2. NetBIOS and Dynamic DNS register a computer, not an application
`
`running on the computer. This is just what the ‘704 Patent does. The claims don’t
`
`describe anything more than registering the computer. There is no recitation of
`
`any lower level address information. The claims refer to registering a “network
`
`15
`
`Page 19 of 63
`
`
`
`protocol address.” As noted above under claim construction,
`
`the one court to
`
`construe terms said this was the address of the host, not an application on the host.
`
`The ‘704 Patent does variously describe a session number and sockets,
`
`which could correspond to an application, as opposed to a process. However, this
`
`is information exchanged between applications, not registered with the network
`
`address. As noted in the ‘704 Patent, this was a standard technique in the prior art:
`
`Afier the initiation of either the primary or the secondary point-to—point
`
`Internet protocols described above in conjunction with FIGS. 1—2,
`
`the point—to—
`
`point communication link over the Internet 24 may be established as shown in
`
`FIGS. 3—4 in a manner known in the art. (Col. 7, lines 60—64)-
`
`The Windows Messenger service registers both the computer name (such as
`
`"Joe's Desktop"), and the user name (such as "Joe T—Rex Smith"), and can register
`
`any other unique name using NetBIOS name server such as WINS.
`
`While the DNS "A—records" are originally designed to name hosts, there is
`
`no requirement to do so, and there are special domains which are designed for a
`
`particular
`
`application- For
`
`example,
`
`there
`
`can
`
`be
`
`a DNS A—record
`
`"joe-company.com" which is a generic A—record for Joe's computer. At the same
`
`time, the DNS name "joe—treX—smith.voipcompany.com" name can be registered by
`
`a VoIP application (manufactured by some VoIPCompany,
`
`Inc.) on the
`
`"voipcompany- dom. "
`
`Page 20 of 63
`
`16
`
`
`
`With respect to Messenger,
`
`it clearly is a registered application, not a
`
`computer.
`
`3. NetBIOS was limited to a LAN, and only later expanded to a WAN with
`
`limited success. There is no limitation on the size of the network in the ‘704 Patent
`
`claims-
`
`4. All addresses may not be available in NetBIOS 0r Dynamic DNS. Patent
`
`Owner has variously argued that NetBIOS allows different “scopes” where a
`
`computer on a different scope may not be discoverable. There is nothing in the
`
`‘704 Patent claims specifying any requirement that all computers be reachable, or
`
`any speed requirement, or any mechanism for accomplishing that.
`
`In any event, in the '704 Patent, if there are several groups of applications
`
`with separate "connection servers", there is no teaching of how the applications in
`
`different groups can locate each other. In contrast, both NetBIOS and Dynamic
`
`DNS provide means for the processes employing the same or different Name
`
`Servers to locate each other.
`
`5. The Patent Owner argued that DNS database changes may not be
`
`propagated fast enough. However, there is no requirement under patent law for
`
`prior art to work all the time, or in any contemplated situation. Also, DNS
`
`propagation takes place only when so called “secondary” or “caching” DNS
`
`servers are involved- When all registration information is stored with a single name
`
`17
`
`Page 21 of 63
`
`
`
`server (as described in the ‘704 Patent and its preferred embodiments), no DNS
`
`change propagation takes place, and all changes are effective immediately.
`
`A.
`
`Claims 1—7 and 32—42 should be cancelled under 35 U.S.C. § 102 as
`
`anticipated by Messenger (Exhibits 1011 & 1012) or obvious from
`
`Messenger
`
`Claim 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:
`
`Messenger Service discloses a computer program product for use with a
`
`computer system. The Messenger Service is used to send a real—time message to
`
`other users, computers, or messaging names on the network. If the message is sent
`
`to a username, that user must be logged on and running the Messenger Service to
`
`receive the message ("Messenger —NT Unleashed”, p. 678”)
`
`a computer usable medium having program code embodied in the medium,
`
`the program code comprising:
`
`When started,
`
`the Messenger Service code (as any other executable
`
`computer program code) is loaded into random access memory, which is a
`
`computer usable medium, and executed by a computer processor.
`
`program code for transmitting to the server a network protocol address
`
`received by thefirst processfollowing connection to the computer network;
`
`18
`
`Page 22 of 63
`
`
`
`The Messenger Service application includes a program code which detects
`
`when the computer connects to the network ("gets online") and sends the NetBIOS
`
`name registration request (in the WINS environment, the name registration request
`
`is sent to the WINS name server).
`
`These name registration requests contain an identifier, and the service type
`
`0X03 — "Messenger service", registering that process (as opposed to the entire
`
`computer) with the NetBIOS Name Server (WINS), which plays the role of the
`
`'704 "connection server".
`
`program code for transmitting,
`
`to the server, a query as to whether the
`
`second process is connected to the computer network;
`
`The Messenger Service application includes program code which sends a
`
`request to the NetBIOS Name Server (WINS), for the specified username and the
`
`required service type (0X03 — messenger service).
`
`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;
`
`If the NetBIOS server returns a positive response, that response contains the
`
`address of the "service process-"
`
`19
`
`Page 23 of 63
`
`
`
`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.
`
`The Messenger Service application contains the "net send" program code
`
`that uses NetBIOS to perform point—to—point communication with that process by
`
`sending the specified message text data to that address.
`
`Claims 2—7 and 32—42 The corresponding and additional elements of these
`
`claims, are shown similarly to claim 1 above. Due to the page limit, these are not
`
`all set forth in the claim charts below to avoid repetition and save space.
`
`B.
`
`Claims 1—7 and 32—42 should be cancelled under 35 U.S.C. § 103 as
`
`obvious over NetBIOS (Exhibit 1003) or WINS (Exhibit 1004) in
`
`view of Messenger (Exhibits 1011 & 1012)
`
`Messenger shows the process (application) that connects to the Internet, and
`
`either NetBIOS or WINS shows the name server. The claim charts indicate these
`
`elements in all the claims-
`
`Claim 1
`
`Refer to the claim charts below for the claim language and corresponding
`
`teachings of the prior art. As summarized in the chart above, claim 1 sets forth:
`
`Each computer connects to the network (e.g., Internet), and is assigned a
`
`network address. The computer provides that address to an address server.
`
`The 1st computer asks the address server whether a 2nd computer is online.
`
`20
`
`Page 24 of 63
`
`
`
`The 1st and 2nd computers establish point—to—point communication using the
`
`address ofthe 2nd computer.
`
`While Patent Owner has argued that the prior art fails to teach providing
`
`addresses in a dynamic environment, the word “dynamic” does not appear in claim
`
`1. Apparently, Patent Owner interprets being “online” to mean dynamic. Claim 1
`
`also doesn’t use the word “online,” but rather simply “connected,” without any
`
`elaboration of how that is determined.
`
`In fact,
`
`the only way the ‘704 Patent
`
`teaches determining if a process is online is by looking to see if it has registered an
`
`address with the “connection server” (also known as “name server”).
`
`NetBIOS is a software interface that allows applications on different
`
`computers to communicate within a computer network, such as a local area
`
`network
`
`or
`
`the
`
`Internet-
`
`In
`
`general, NetBIOS
`
`enables
`
`point—to—point
`
`communications between two or more "point—to—point" nodes through a dedicated
`
`directory service provided by a "NetBIOS Name