`
`Address to:
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`Po. Box 1450
`
`Alexandria. Virginia 22313-1450
`
`1.
`
`[X]
`
`This is a request for ex parte reexamination pursuant to 37 CFR 1.510 of patent number
`6 108 704
`issued August 22, 2000 . The request is made by:
`
`[
`
`] patent owner
`
`[ X]
`
`third party requester.
`
`[ X]
`
`The name and address of the person requesting reexamination is:
`EDWIN H. TAYLOR
`BLAKELY SOKOLOFF TAYLOFI & ZAFMAN LLP
`1279 OAKMEAD PAFIKWAY
`SUNNYVALE CALIFORNIA 94085
`
`[
`
`] a. A check in the amount of $2.520 is enclosed to cover the reexamination fee. 37 CFR i.20(c)(i);
`
`[ X] b. The Commissioner is hereby authorized to charge the fee as set forth in 37 CFR 1.20(c)(i)
`to Deposit Account No. 02-2666
`;or
`
`[
`
`] c. Payment by credit card. Form PTO-2038 is attached.
`
`4.
`
`Any refund should be made by
`[
`]
`check or
`.
`02-2666
`[ X]
`credit to Deposit Account No.
`37 CFR 1.26.
`If payment is made by creditcard, refund must be to creditcard account.
`
`[ X]
`
`A copy of the patent to be reexamined having a double column format on one side of a separate paper
`is enclosed. 37 CFR 1.510(b)(4).
`EXHIBIT A
`
`CD—FlOM or CD-Ft in duplicate, Computer Program (Appendix) or large table
`
`Nucleotide and/or Amino Acid Sequence submission
`If applicable, all or the following are necessary
`
`a.
`
`b.
`
`[
`
`[
`
`] Computer Readable Forrn (CFIF)
`
`] Specification Sequence Listing on:
`
`i
`
`[
`
`I
`
`]CD-FIOM (2 copies) or CD-Ft (2 copies); or
`
`] P3P9r
`
`c.
`
`[
`
`] Statements verifying identity oi above copies
`
`A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is
`included.
`
`Fleexamination of c|aims(s)
`
`1-7 and 10-44
`
`is requested.
`
`A copy of every patent or printed publication relied upon is submitted herewith including a listing
`thereof on Form PTO-1449 or PTO/SB/08.
`
`(Page 1 of 2)
`Based on Form PTO/SB/57 (02-01) as modified by BLAKELY, SO KOLOFF, TAYLOR & ZAFMAN LLP on 05/09/03
`
`Page 1 of 500
`
`LG Electronics Exhibit 1022
`
`
`
`An English language translation of all necessary and pertinent non-English language patents and/or
`printed publications is included.
`
`The attached detailed request includes at least the following items:.
`
`a. [X]
`
`A statement identifying each substantial new question of patentability based on prior patents
`and printed publications 37 CFFI 1.510(b)(1)
`
`b. [X] An identification of every claim for which examination is requested, and a detailed
`explanation of the pertinency and manner of applying the cited art to every claim for which
`reexamination is requested. 37 CFFI 1.51(b)(2)
`
`A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.510(e)
`
`It is certified that a copy of this request (if filed by other than the patent owner) has been served in
`a.
`its entirety on the patent owner as provided in 37 CFR l.33( ).
`The name and address of the party served and the date of service are:
`JEFFFIEY S. GINSBERG ESQ.
`KENYON & KENYON
`ONE BROADWAY
`NEW YOFIK NY 10004
`
`Date of Service:
`
`Februag 17, 2009
`
`: or
`
`[
`
`]
`
`b. A duplicate copy is enclosed since service on patent owner was not possible.
`
`15.
`
`[x]
`
`CorrespondenceAddress: Directall communication about the reexamination to:
`
`[ X]
`OR
`
`Customer Number:
`
`8791
`Type Customer Number here
`
`] Firm or Individual Name:
`
`Edwin H. Taylor
`
`Address (line 1)
`
`1279 Oakmead Parkway
`
`Address (line 2)
`
`lace ustomer Number
`
`ar
`
`a La
`
`here
`
`City Sunnyvale
`
`State California
`
`Zip
`
`94085-4040
`
`Country
`
`USA
`
`Telephone
`
`(408) 720-8300
`
`Fax
`
`(408)720-8383
`
`16.
`
`[X]
`
`The patent is currently the subject of the following concurrent proceeding(s):
`
`[
`
`[
`
`[
`
`]
`
`]
`
`]
`
`a. Copending reissue Application No.
`
`b. Copending reexamination Control No.
`
`c. Copending Interference No.
`
`[X]
`
`d. Copending litigation styled:
`
`Net2Phone, Inc. v. eBay, Inc., Skype Technologies SA, and Skype, Inc., Case No. 06-2469,
`United States District Court for the District of New Jersey.
`
`WARNING: Information on this form may become public. Credit Card information should not be
`included on this form. Provide credit card information and authorization on PTO-2038.
`
`/ET/
`
`Authorized Signature
`
`/02-17-2009/
`
`Date
`
`[
`
`]
`
`For Patent Owner Requester
`
`[ X]
`
`For Third Party Requester
`
`Page 2 of 2
`Based on Form PTO/SB/57 (02-01) as modified by BLAKELY, SO KOLOFF, TAYLOR & ZAFMAN LLP on 05/09/03
`
`Page 2 of 500
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Request for Ex Parte Reexamination
`
`REQUEST FOR EX PARTE
`REEXAMINATION
`
`U.S. Patent No. 6,108,704
`
`Issued: August 22, 2000
`
`For: Point-to-Point Internet Protocol
`
`Attorney Docket No.: 03801.Gl84
`
`Requester: Skype, Inc.
`
`Customer No.: 08791
`
`RE UEST FOR EX PARTE REEXAMINATION UNDER 35 U.S.C.
`
`302
`
`Mail Stop Ex Pane Reexam
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`Pursuant to the provisions of 35 U.S.C. §§ 302-307, the undersigned hereby requests an
`
`ex parte reexamination of claims 1-7 and 10-44 of United States Patent No. 6,108,704 (“the ‘704
`
`patent,“ Exhibit A) which issued on August 22, 2000 to Glenn W. I-lutton et al. resulting from a
`
`patent application filed on September 25, 1995. The Requester hereby asserts that claims 1-7
`
`and 10-44 of the ‘704 patent are unpatentable over prior art references not before the Patent and
`
`Trademark Office (PTO) during prosecution of the ‘704 patent.
`
`Page 3 of 500
`
`
`
`TABLE OF CONTENTS
`
`).—(
`
`PENDING LITIGATION ......................................................................... .. 5
`
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS ........... .. 5
`
`III.
`
`OVERVIEW OF THE ‘704 PATENT ........................................................... .. 7
`
`A.
`
`B.
`
`Subject Matter of the ‘704 Patent ......................................................... .. 7
`
`Prosecution History of the ‘704 Patent ................................................... ..
`
`I0
`
`IV.
`
`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS
`REQUIRED BY 37 C.F.R 1.510 (b)(1) ......................................................... ..
`
`12
`
`12
`
`13
`
`A.
`
`B.
`
`C.
`
`D
`
`E.
`
`F.
`
`G.
`
`I-I.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M.
`
`N.
`
`SNQs Raised by NetBIOS (Claims 1-7 and 32-44) ................................... ..
`
`SNQs Raised by NetBIOS in view of RFC 1531 (Claims 1-7 and 32-44) .......... ..
`
`SNQS Raised by NetBIOS in view of Pinard (Claims 10-17, 19-28, and 30-31). 14
`
`SNQS Raised by NetBIOS in view of Pinard and further in view of VocalChat
`User’s Guide (Claims 18 and 29) .......................................................... .. 15
`
`SNQS Raised by Etherphone (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44) ...... ..
`
`15
`
`SNQ Raised by Etherphone in Vl€-W of NetBIOS (Claim 3) . .
`
`. . .
`
`. .
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`. .
`
`. . .
`
`. . . ..
`
`SNQ Raised by Etherphone in view of Vin (Claim 32) ................................ ..
`
`17
`
`17
`
`SNQS Raised by Etherphone in view of Vin and further in view of RFC 1531
`(Claim 33) . . . . . . . . . . . . . . . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`
`. . . . . .. 18
`
`SNQS Raised by Etherphone in view of Pinard (Claims 10-17, 19-28, 30-31) ..... .. 19
`
`SNQ Raised by Etherphone in view of Pinard and further in view of VocalChat
`User’s Guide (Claims 18 and 29) ......................................................... .. 19
`
`SNQS Raised by VocalChat User’s Guide in view of VocalChat Readme, and
`further in view of VocalChat Networking, and further in view of VocalChat Help
`File, and further in view of VocalChat Troubleshooting Help File (collectively
`“VocalChat” or “VocalChatreferences“) (Claims 1-2, 4, 7, 10-11, 19-22, 30-42).. 20
`
`SNQs Raised by VocalChat References in view of RFC l53l(Claims 1-2, 4, 7,
`10-11, 19-22, 30-42) ........................................................................ .. 21
`
`SNQ Raised by VocalChat References in view of NetBIOS (Claim 3) .................. .. 23
`
`SNQS Raised by VocalChat References in view of Pinard (Claims 12-18 and 23-
`29) ......................................................................................................................... .. 23
`
`OVERVIEW OF THE PRIOR ART REFERENCES PRESENTING A SNQ OF
`PATENTABILITY
`
`A.
`
`B.
`
`C.
`
`NetBIOS ..................................................................................... .. 24
`
`Etherphone ................................................................................... .. 26
`
`Combined VocalChat References .
`
`. . .
`
`. . .
`
`. . .
`
`. . .
`
`. . .
`
`. . .
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
`
`.
`
`. .
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`.
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`. .
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`.
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`. .
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`.
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`. .
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`. . .
`
`. . . .. 29
`
`Page 4 of 500
`
`2of 172
`
`
`
`D.
`
`E.
`
`F.
`
`RFC 1531 ...................................................................................... . 33
`
`Vin ............................................................................................ .. 33
`
`Pinatd ......................................................................................... .. 33
`
`VI.
`
`DETAILED EXPLANATION OF THE PERTINENCY AND MANNER OF
`
`APPLYING THE PRIOR ART REFERENCES TO EVERY CLAIM FOR
`
`WHICH REEXAMINATION IS REQUESTED ............................................ .. 39
`
`A.
`
`NetBIOS ..................................................................................... .. 39
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-7 and 32-44) ............................... .. 39
`
`Obviousness Rejections ........................................................... .. 69
`
`(i)
`
`(ii)
`
`\IetBIOS in View of RFC 1531 (Claims 1-7 and 32-44).......... 70
`
`\/Iotivation to Combine NetBIOS with RFC 1531 .............. ..
`
`71
`
`(iii)
`
`\IetBIOS in View of Pinard (Claims 10-17, 19-28, and 30-31).. 71
`
`(iv)
`
`\/Iotivation of Combine NetBIOS and Pinard ................... ..
`
`80
`
`(V)
`
`(vi)
`
`\IetBIOS in view of Pinard and Further in View of
`Voca1Chat User’s Guide (Claims 18 and 29) .................... ..
`
`81
`
`\/Iotivation to Combine VocalChat User‘s Guide with
`\IetBIOS and Pinard ................................................. .. 81
`
`B.
`
`Etherphone .................................................................................. .. 82
`
`1.
`
`2.
`
`Anticipation Rejections (Claims 1-2, 4-7, 10-12, 14, 19-23, 25, 30-44)..... 82
`
`Obviousness Rejections .......................................................... ..
`
`112
`
`(i)
`
`(ii)
`
`Etherphone in View of NetBIOS (Claim 3) ........................ .. 112
`
`Motivation to Combine Etherphone with NetBIOS ............. ..
`
`113
`
`(iii)
`
`Etherphone in View of Vin (Claim 32) ............................ ..
`
`[13
`
`(iv) Motivation of Combine Etherphone and Vin ..................... ..
`
`115
`
`(v)
`
`Etherphone in View of Vin and Further in View
`of RFC 1531 (Claim 33) ............................................. .. 115
`
`(vi) Motivation to Combine Etherphone, Vin and
`RFC 1531 ............................................................. ..
`
`117
`
`(vii)
`
`Etherphone in View of Pinard (Claims 10-17, 19-28, 30-31). 118
`
`(viii) Motivation to Combine Etherphone and Pinatd .................. .. 126
`
`(ix)
`
`(x)
`
`Etherphone in View of Pinard and Further in View of
`VocalChat User‘s Guide (Claims 18 and 29) ..................... ..
`
`126
`
`Motivation to Combine VocalChat with Etherphone
`and Pinard . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`. . .
`
`. . .
`
`. . . . . . . . .. 127
`
`Page 5 of 500
`
`3 of 172
`
`
`
`C.
`
`VocalChat User’s Guide in view of Voca1Chat Readme, and further in view of
`
`VocalChat Networking, and further in view of VocalChat Help File, and further
`in view of VocalChat Troubleshooting Help File (collectively “VocalChat” or
`“VocalChat references”) (Claims 1-2, 4, 7, 10-11, 19-22, 30-42) ................... ..
`
`127
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Motivation to Combine the VocalChat References ........................... ..
`
`128
`
`Voca1Chat references further in view of RFC 1531 (Claims 1-2, 4, 7, 10-
`11, 19-22, 30-42) .................................................................. .. 163
`
`Motivation to Combine Voca1Chat references and RFC 1531 .............. ..
`
`I64
`
`The Voca1Chat References in view of NetBIOS (Claim 3) .................. ..
`
`I64
`
`Motivation to Combine the VocalChat References with NetBIOS ......... ..
`
`165
`
`The VocalChat References in view of Pinard (Claims 12-18 and 23-29)....
`
`165
`
`Motivationto Combine Voca1Chatand
`
`I68
`
`VII.
`
`LIST OF EXHIBITS ............................................................................... ..
`
`I68
`
`VIII. CONCLUSION ..................................................................................... ..
`
`171
`
`Page 6 of 500
`
`4 of 172
`
`
`
`I.
`
`PENDING LITIGATION
`
`The ‘704 patent is the subject of pending litigation, Net2Phone, Inc. v. eBay, Inc.. Skype
`
`Technologies SA, and Skype, Inc., Case No. 06-2469, instituted by the current assignee,
`
`Net2Phone, Inc., in the United States District Court for the District of New Jersey. Net2Phone
`
`alleges that Skype Technologies SA, Skype, Inc. and eBay Inc. infringe claims 1, 2, 4-7, 11, 22,
`
`32-44 of the ‘704 patent. The parties have submitted their claim construction briefs and a
`
`Markman hearing is currently scheduled for March 2, 2009. The Court has not yet set a schedule
`
`for summary judgment proceedings. No trial date has been set. Skype, Inc., plans to file a
`
`motion to stay the above-entitled litigation pending reexamination on the grounds that a stay of
`
`litigation at this time will permit the Court and parties to benefit from the PTO’s guidance on
`
`issues of patentability and to avoid further costly legal proceedings that would otherwise burden
`
`the Court and parties. Claim Construction Briefs submitted by the parties to the pending
`
`litigation are set forth in Exhibits S-X.
`
`II.
`
`LISTING OF PRIOR ART PATENTS AND PRINTED PUBLICATIONS
`
`In accordance with 37 C.F.R. §§ 1.510(b)(l) and (b)(2), reexamination of claims 1-7 and
`
`10-44 of the ‘704 patent is requested in view of the following references:
`
`Exhibit B
`
`The Open Group, Technical Standard, Protocols for X/Open PC
`
`Interworking SMB, Version 2, (1992) (“NetBIOS”), which published as
`
`a single publication containingzl (a) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Concept and Methods, RFC 1001
`
`(March 1987) (“RFC 1001”); and (b) Protocol Standard for a NetBIOS
`
`Service on a TCP/UDP Transport: Detailed Specifications, RFC 1002
`
`(March 1987) (“RFC 1002“).
`
`Exhibit C
`
`Etherphone: Collected Papers 1987-1988 (May 1989) (collectively
`
`referred to herein as “Etherph0ne”). These papers, which published
`
`together as a single publication, include the following:2
`
`1 NetBIOS published as a single reference with RFC 1001 and RFC 2002.
`2 The five papers comprising this reference were published together as set forth on the first page of this reference.
`Thus. all five papers are a single reference.
`
`Page 7 of 500
`
`5 of 172
`
`
`
`a.
`
`Polle T. Zellweger, et al., An Overview of the Etherphone
`
`System and its Applications, IEEE CONFERENCE ON COMPUTER
`
`WORKSTATIONS (March 1988), 160-168 (hereinafter “Zellweger 1”).
`
`b.
`
`Daniel C. Swinehart, Telephone Management in the
`
`Etherphone System, PROCEEDINGS OF THE IEEE/IEICE GLOBAL
`
`TELECOMMUNICATIONS CONFERENCE (November 1987), 1 176-1 180
`
`(hereinafter “Swinehart 1“).
`
`c.
`
`Douglas B. Terry and Daniel C. Swinehart, Managing
`
`Stored Voice in the Etherphone S)-‘stem, ACM TRANSACTIONS ON
`
`COMPUTER SYSTEMS 6(1) (February 1988), 3-27 (hereinafter “Terry”).
`
`d.
`
`Daniel C. Swinehart, System Support Requirements for
`
`Muiti—media Workstations, PROCEEDINGS OF THE SPEECHTECH ‘88
`
`CONFERENCE (April 1988), 82-83 (hereinafter “S winehart 2").
`
`e.
`
`Polle T. Zellweger, Active Paths through Multimedia
`
`Documents, DOCUMENT MAN IPULATION AND TYPOGRAPHY, J .C. AN VILET
`
`(ED), CAMBRIDGE UNIVERSITY PRESS (1988) (hereinafter “Zellweger 2”).
`
`Exhibit D
`
`Vin, Harrick M., et al., Multimedia Conferencing in the Etherphone
`
`Environment, IEEE COMPUTER SOCEETY (October 1991) (“Vin”); and
`
`Exhibit E
`
`Droms, R., Dynamic Host Configuration Protocol, RFC 1531 (Oct. 1993)
`
`Exhibit F
`
`Exhibit G
`
`Exhibit H
`
`Exhibit I
`
`Exhibit]
`
`Exhibit K
`
`(“RFC 1531")
`
`Pinard, et al., U.S. Patent No. 5,533,110 (“Pinard“)
`
`VocalChat User’s Guide, Version 2.0 (1994) (“User‘s Guide“)
`
`VocalChat Readme File, Version 2.02 (June, 1994) (“Readme”)
`
`VocalChat 1.01 Networking Information (March 6, 1994) (“VocalChat
`
`Networking”)
`
`VocalChat Information, Version 2.02 (July 18, 1994) (“Help File”)
`
`VocalChat Troubleshooting Help File, Version 2.02 (July 18, 1994)
`
`(“Troubleshooting Help File”)
`
`Page 8 of 500
`
`60f 172
`
`
`
`III.
`
`OVERVIEW OF THE ‘704 PATENT
`
`Before providing detailed explanations of the pertinency and manner of applying the
`
`cited prior art to the claims, presented here is an overview of the ‘704 patent and its prosecution
`
`history. The ‘704 patent issued on August 22. 2000, and includes 44 claims, of which claims I,
`
`2, 4, IO, 21, 32, 33, 38, 43, and 44 are independent.
`
`A.
`
`Subject Matter of the ‘704 Patent
`
`The ‘704 patent describes two different techniques for locating computer processes on a
`
`network. Referring to Figure l of the ‘704 patent (reproduced below), one technique relies on a
`
`“connection server“ (26) to locate processes and a second technique relies on a “mail server”
`
`(28) to locate processes.3 According to the first technique, each computer (referred to as a
`
`“processing unit" in the ‘704 patent) registers its IP addresses with the connection server (26).
`
`The IP address of each “online” computer is stored within a database (34) on the connection
`
`server. As described in the ‘704 patent (referring to Figure 1):
`
`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
`l2 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. The first user
`operating the first processing unit I2 is thus established in the database 34 as an
`active on-line party available for communication using the disclosed point-to-
`point Internet protocol. Similarly, a second user operating the second processing
`unit 22, upon connection to the Internet 24 through a connection service provider,
`is processed by the connection server 26 to be established in the database 34 as an
`active on-line party.“
`
`3 The first technique is referred to as the “primary point-to-point Internet protocol“ and the second technique is
`referred to as the “secondary point-to-point internet protocol.“ See. e.g., ‘704 patent. Col. 5. line 55 - Col. 6. line 29.
`‘ ‘704 patent. Col, 5. lines 25-38.
`
`Page 9 of 500
`
`7 of 172
`
`
`
`
`
`FIG. I
`
`In order to initiate a connection with the second computer (22) on the network, the first
`
`computer (12) retrieves the current IP address of the second computer from the connection server
`
`(26). Once the first computer knows the IP address of the second computer, it can establish a
`
`point-to-point connection with the second computer. As described in the ‘704 patent:
`
`The first processing unit 12 then sends a query, including the E-mail address of
`the callee, to the connection server 26. The connection server 26 then searches the
`
`database 34 to determine whether the callee is logged-in by finding any stored
`information corresponding to the callee’s E-mail address indicating that the callee
`is active and on-line. If the callee is active and on-line, the connection server 26
`
`then performs the primary point-to-point Internet protocol; i.e. the IP address of
`the callee is retrieved from the database 34 and sent to the first processing unit 12.
`The first processing unit 12 may then directly establish the point-to-point Internet
`communications with the callee using the IP address of the callee.5
`
`The second technique for locating computers on a network (the “secondary point-to-point
`
`Internet protocol”) utilizes the email server (28) illustrated in Figure l. The second technique is
`
`used “if the connection server 26 is noii-responsive, inoperative, and/or unable to perform the
`
`primary point-to-point Internet protocol, as a non-responsive condition.“6 Using the second
`
`technique, the first computer (12) transmits an email message which includes the IP address of
`
`the first user and a session number (referred to as a “<ConnectRequest>“ message).7 After
`
`receiving the email message from the mail server, the second computer (22) uses the IP address
`
`and session number to establish a point-to-point connection with the first computer (12). As
`
`described in the ‘704 patent:
`
`5 ‘704 patent. Col, 5. lines 55-67.
`6 704 patent. Col. 6. lines 20-23.
`7 704 patent. C01. 6. lines 31-36.
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`Page 10 of 500
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`8 of 172
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`Upon detecting and/or receiving the incoming E-mail signal from the first
`processing unit 12, the second processing unit 22 may assign or may be assigned
`a temporary IP address. Therefore, the delivery of the E-mail through the Internet
`24 provides the second processing unit 22 with a session number as well as IP
`addresses of both the first processing unit 12 and the second processing unit 22.
`
`Point-to-point communication may then be established by the processing units l2,
`22. For example, the second processing unit 22 may process the E-mail signal to
`extract
`the <ConnectRequest> message,
`including the IP address of the first
`processing unit 12 and the session number. The second processing unit 22 may
`then open a socket and generate a <ConnectOK> response signal, which includes
`the tempsorary IP address of the second processing unit 22 as well as the session
`number.
`
`While the independent claims of the ‘704 patent are not expressly limited to a particular
`
`protocol standard, the embodiments described in the ‘704 patent utilize the TCP/IP protocol.9
`
`Thus, the focus of the ‘704 patent is a central repository of IP addresses which is queried to
`
`locate computers on a network.
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`The ‘704 patent also describes a graphical user interface (‘‘GUI’‘) for managing calls on a
`
`computer. The GUI, illustrated in Figures 5 and 6 of the ‘704 patent (reproduced above),
`
`includes a status area (38) which is used to indicate .
`
`.
`
`.
`
`. a called user by name and/or by IP address or telephone number; a current
`.
`function such as C2; a current time; a current operating status such as “IN USE”,
`
`3 ‘7o4 pate11l.C0l. 7. lines 10-25.
`° See, e.g.. 704 patent. Col. 5. lines 8-14 and 22-38.
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`Page 11 of 500
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`90f 172
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`13
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`and other control icons such as a down arrow icon 40 for scrolling down a list of
`parties on a current conference line. The operating status may include such
`annunciators as “IN USE“, “IDLE”, “BUSY”, “NO ANSWER“, “OFFLINE”,
`“CALL“, “DIALING“, “MESSAGES”, and “SPEEDDIAL.“‘°
`
`Figures 5 and 6 also illustrate a set of graphical icons (42) which are “configured to
`
`substantially simulate a telephone handset or a cellular telephone interface.““ The icons provide
`
`functions typically found on a telephone such as speed dial (SPD), hold (HLD), send (i.e., initiate
`
`call) (SND), end call (END), mute (MUT). Icons are also provided to indicate individual
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`telephone “lines” (Ll-L3) and “conference lines” (Cl-C3). An active call may be transferred to
`
`a different line by “by clicking and dragging the status area 38, which is represented by a
`
`reduced icon 46. Dragging the reduced icon 46 to any one of line icons L1-L4 transfers the
`
`called party in use to the selected line, and dragging the reduced icon 46 to any one of
`
`conference line icons C1-C3 adds the called party to the selected conference call.“‘2
`
`B.
`
`Prosecution History of the ‘704 Patent
`
`The application which resulted in the ‘704 patent was filed on September 25, 1995. The
`
`‘704 patent application” initially included a total of 20 claims. This was extended to 53 claims
`
`via a preliminary amendment. 14
`
`The PTO mailed a first Office Action on June 2, 1997, rejecting all 53 claims under 35
`
`U.S.C. § 103 as being unpatentable in view of several prior art references, including Civanlar,
`
`U.S. Patent No. 5,581,552 (“Civanlar”). As noted by the Examiner, Civanlar discloses “a
`
`colnmunication protocol in which the requesting node sends a request for comlnunication with
`
`another node through an address server. which contains an address database, to obtain the
`
`address and routing information necessary to complete the communication.“l5
`
`The Applicants filed an Amendment and Response on December 2, 1997 in which they
`
`added claims 54-68 and distinguished the invention from the cited references as follows:
`
`current
`the
`determining
`for
`techniques
`provides
`invention
`Applicant's
`dynamically assigned network protocal [sic] address of a user process connected
`
`1° ‘704 patent. Col. 8. lines 42-50.
`“ ‘704 patent. Col. 3. lines 58-60.
`1" ‘704 patent. Col. 9. lines 36-42.
`13 Application serial no. 08/533.1 1 resulting in the ‘704 patent is referred to as the “‘704 application.“
`14 See Preliminary Amendment (April 5. 1996).
`15 Office Action (June 2. 1997). page 3.
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`Page 12 of 500
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`10 of 172
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`
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`to the network. The first technique utilizes a dedicated server which acts as a
`network address/information directory from which calling processes can obtain
`information. When a first process connects to the networks, the process logs-on
`to the server and provides the server with the network protocal [sic] address under
`which the process is currently operating. A second process wishing to establish
`communications with the first process, connects to the server and request the
`network protocal [sic] address under which the first process is currently operating.
`Upon receipt of the network protocal [sic] address of the first process, the second
`process establishes communications with the first process directly, without any
`intervention [sic] from the address/information server.”
`
`The Applicants also submitted a Declaration of Prior Invention under 37 U.S.C. § l.l3l,
`
`stating “to overcome the rejection of all claims under 35 U.S.C. § 103 as being unpatentable over
`
`Civanlar, et al. in view of Morgan et al. and/or further in view of December et al .
`
`.
`
`. In light of
`
`the declaration and accompanying exhibits, all rejections based on the Civanlar et al. reference
`
`are deemed moot.“”
`
`The PTO mailed a second Office Action on April 14, 1998 indicating a restriction
`
`requirement under 35 U.S.C. § l2l. The Applicants mailed a response to the restriction
`
`requirement on August ll, I998, electing a group of claims (Group 1).
`
`An Office Action mailed on October 28, 1998 rejected all pending claims under 35
`
`U.S.C. § l02(e) and 35 U.S.C. § l03. The Applicants mailed an Amendment and Response on
`
`March 1, I999, cancelling claims 1-4 and 6-11 and amending numerous claims. The Applicants
`
`again distinguished the alleged “invention” over the cited prior art, stating:
`
`.
`Applicants’ invention solves a fundamental problem associated with the Internet. .
`The problem is: How can a global network user be located if he/she has no
`permanent network address?
`
`Applicants have disclosed a solution to the above-described problem. The solution
`utilizes a client/server system. In the disclosed system, a client process contacts a
`dedicated address directory server and forwards to the server the network protocol
`address to which it has been assigned upon connection to the computer network,
`along with other identification information. The dedicated address directory server
`maintains a compilation or list of entries, each of which contain a process identifier
`and the corresponding network protocol address forwarded to the server by the
`process itself. Other processes wishing to contact a desired target process simply
`
`16 Office Action Response (December 2. 1997). page 8.
`17 Amendment and Response (December 2. 1997). page 7. We question the sufficiency of the support document.
`“webph,doc.“ submitted with the Declaration of Prior Invention. However. because the prior an we rely upon
`predates the priority date of this document. we did not perform a detailed analysis related to this document.
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`Page 13 of 500
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`11 of 172
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`query the address directory server to determine whether the target process is on-line
`and the current network protocol address at which the target process is located.”
`
`In addition, with respect to independent Claims 10 and 21 of the ‘704 patent (and
`
`associated dependent claims), the Applicants argued that these claims were “directed to a method
`
`for establishing a point-to-point communication link with the user interface of a client process by
`
`associating elements representing a communication line and various processes.”'9
`
`A Notice of Allowability was mailed on May 25, I999, allowing Claims 21, 23-24, 26-
`
`64, 66, and 67 (which issued as Claims 1-44). The ‘704 patent issued on August 22, 2000.
`
`IV.
`
`SUBSTANTIAL NEW QUESTION (SNQ) OF PATENTABILITY AS REQUIRED
`BY 37 C.F.R 1.510 (b)(1)
`
`The following section provides a list of the SNQS and detailed explanation of the prior art
`
`references relied upon in the present request for the SNQ, including references not previously
`
`considered by the PTO.
`
`A.
`
`SNQS Raised by NetBIOS
`
`A SNQ as to Claims 1-7 and 32-44 is raised by NetBIOS. NetBIOS anticipates all of the
`
`limitations of these claims, including teachings of Civanlar, which were used by the Examiner in
`
`a § 103 rejection against the instant claims. This reference was removed from consideration due
`
`to the acceptance of a 37 C.F.R. § l.l3l declaration which swore behind the date of Civanlar.
`
`While Civanlar shows an address server for storing network protocol addresses usable by
`
`network nodes to establish point-to-point communications, the question of patentability was
`
`removed when the reference was antedated. See, e.g., Civanlar, col. 3, lines 1-4 (‘‘The address
`
`server contains an address data base for performing address resolution, i.e., translation, between
`
`the at least two addresses of each ELAN end-point in response to requests for such
`
`translations”).
`
`NetBIOS, which was not cited or discussed in the prosecution of the ‘704 patent, presents
`
`a SNQ of patentability because it, like Civanlar, discloses an address server (referred to as a
`
`“NetBIOS Name Server” or “NBNS”) with an address database for storing network protocol
`
`addresses usable by network nodes to establish point-to-point communications, as discussed in
`
`18 Amendment and Response (March 1. 1999). page 14.
`19 Office Action response (March 1. 1999). page 17.
`
`12 ofl72
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`Page 14 of 500
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`
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`detail below. See, e.g., NetBIOS at 367 (describing how the NBNS acts as a “bulletin board’ on
`
`which name/address information is freely posted (and removed) by P and M nodes without
`
`validation by the NBNS. Alternatively, the NBNS may elect to completely manage and validate
`
`names.“). See also id. at 388 (“Name query transactions are initiated by endnodes to obtain the
`
`IP address(es) and other attributes associated with a NetBIOS name.“).
`
`Recall also that, during prosecution of the ‘704 patent, the Applicants argued that the
`
`claimed invention .
`
`.
`
`.
`
`. utilizes a dedicated server which acts as a network address/information
`
`directory from which calling processes can obtain information. When a first
`process connects to the networks, the process logs-on to the server and provides
`the server with the network protocal [sic] address under which the process is
`
`currently operating. A second process wishing to establish communications with
`the first process, connects to the server and request the network protocal [sic]
`address under which the first process is currently operating. Upon receipt of the
`network protocal [sic] address of the first process, the second process establishes
`communications with the first process directly, without any intervention [sic]
`from the address/information server.
`
`Office Action Response (December 2, 1997), page 8. This is precisely the manner in which
`
`nodes in NetBIOS register their own IP addresses with the NBNS and query the NBNS for the IP
`
`addresses of other nodes. See, e.g., id. at 397 (“The NetBIOS session service begins after one or
`
`more IP addresses have been found for the target name. .
`
`.
`
`. NetBIOS session service
`
`transactions, packets, and protocols are identical for all end-node types. They involve only
`
`directed {point-to-point) communications.“) (emphasis added).
`
`For all of the foregoing reasons, NetBIOS would be considered importa