`
`US PATENT 6,108,704
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SIPNET EU S.R.O-
`
`Petitioner
`v.
`
`STRAIGHT PATH IP GROUP, 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. IPR2013—00246, Filing Date April 11, 2013
`
`PATENT OWNER’S RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.120
`
`Page 1 of 67
`
`LG Electronics Exhibit 1023
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`Table of Contents
`
`INTRODUCTION ..................................................................................................... l
`
`I.
`
`BACKGROUND FACTS ............................................................................... 4
`
`II-
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW AND
`
`THE BOARD’S DECISION TO INSTITUTE ............................................... 5
`
`ARGUMENT ............................................................................................................. 7
`
`1.
`
`STALKER SOFTWARE IS A REAL PARTY—IN—INTEREST IN
`
`THE PROCEEDING; THEREFORE THE PROCEEDING SHOULD
`
`BE DISMISSED .............................................................................................. 8
`
`A.
`
`Stalker Software is Estopped from Initiating an Inter Fortes
`
`Review under 37 CFR § 42.101 ............................................................ 8
`
`B.
`
`Stalker Software is a Real Party—in-Interest Because Stalker
`
`Software Provided the WINS Prior Art to Petitioner ............................ 9
`
`C.
`
`Dismissal of the Proceeding and Sanctions are Appropriate
`
`Under 37 CFR § 42.12 Due to Sipnet’s Misrepresentation of the
`
`Real Party—in—Interest .......................................................................... 14
`
`II.
`
`THE PRIOR ART DOES NOT TEACH A QUERY OR A
`
`DETERMINATION AS TO THE ON—LINE STATUS OF A
`
`PROCESS, AS REQUIRED BY EACH CHALLENGED CLAIM ............. 16
`
`A.
`
`B.
`
`Legal Standards ................................................................................... 18
`
`Each Challenged Claim Require a Query or a Determination as
`
`to On—Line Status of the Second Process ............................................ 19
`
`C.
`
`The Specification Fully Supports that the Challenged Claims
`
`Require a Query or a Determination as to On—Line Status .................25
`
`D.
`
`Neither NetBIOS nor WINS Teaches a Query or a
`
`Determination as to the On—Line Status of the Second Process .......... 31
`
`i
`
`Page 2 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`1.
`
`In NetBIOS, Registration of a Node Does Not
`
`Teach a Query or a Determination as to the On—
`
`Line Status of the Second Process .................................. 33
`
`2.
`
`Petitioner Fails to Demonstrate That NetBIOS
`
`Teaches a Query or a Determination of the On—
`
`Line Status of the Second Process .................................. 36
`
`3.
`
`In WINS, Registration of a Computer Does Not
`
`Teach a Query or a Determination as to the On—
`
`Line Status of the Second Process .................................. 39
`
`4.
`
`Petitioner Fails to Demonstrate That WINS
`
`Teaches a Query or a Determination of the On—
`
`Line Status of the Second Process .................................. 44
`
`E.
`
`Neither NetBIOS Nor WINS Teach Additional Limitations
`
`Found in Dependent Claims 5, 6, and 7 ..............................................46
`
`F.
`
`Claims 33—37 Are Not Rendered Obvious by NetBIOS in View
`
`of WINS ............................................................................................... 49
`
`III- NETBIOS DOES NOT TEACH DYNAMIC ADDRESS
`
`ALLOCATION, AS REQUIRED BY EACH CHALLENGED
`
`CLAIM ........................................................................................................... 50
`
`A.
`
`The Claims and Specification Require Dynamic Address
`
`Allocation ............................................................................................ 50
`
`B.
`
`NetBIOS Does Not Teach Dynamic Addressing ................................ 53
`
`IV.
`
`PETITIONER HAS FAILED TO ESTABLISH THAT WINS IS
`
`PRIOR ART ................................................................................................... 54
`
`CONCLUSION ........................................................................................................ 60
`
`ii
`
`Page 3 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`Cases
`
`Table of Authorities
`
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`713 F.3d 1369 (Fed- Cir- 2013) ............................................................................ 19
`
`Brackelmyer v. Ground Heaters, Inc.,
`445 F.3d 1374 (Fed. Cir- 2006) ............................................................................ 54
`
`CFMT, Inc. v. YieldUp Int’l Corp,
`349 F.3d 1333 (Fed. Cir- 2003) ............................................................................ 19
`
`Constant v. Advanced Micro—Devices, Inc. ,
`
`848 F.2d 1560 (Fed. Cir- 1988) ............................................................................ 58
`
`Finjan, Inc. v. Symantec Corp,
`2013 WL 5302560 (Sept- 19, 2013 D- Del.) ........................................................ 58
`
`In re Bond,
`
`910 F.2d 831 (Fed. Cir- 1990) .............................................................................. 19
`
`In re Guan Inter Partes Reexamination Proceeding,
`Control No. 95/001,045, “Decision Vacating File Date,” (Aug. 25, 2008)
`
`_______________________________________________________________________________________________________________ 1, 9, 10, 12
`
`In re Hall,
`
`781 F.2d 897 (Fed. Cir- 1986) ______________________________________________________________________________ 58
`
`In re Suitco Sulface, Inc.,
`603 F.3d 1255 (Fed. Cir- 2010) _____________________________________________________________________ 18, 19
`
`In re Wyer,
`655 F.2d 221 (CCPA 1981) __________________________________________________________________________________ 54
`
`Norton Corp. v. Snyker Corp,
`363 F.3d 1321 (Fed. Cir- 2004) ____________________________________________________________________________ 55
`
`Northern Telecom, Inc. v. Datapoint Corp,
`908 F.2d 931 (Fed. Cir- 1990) ______________________________________________________________________________ 54
`
`Rackable Systems, Inc. v. Super Micro Computer Inc.,
`2007 WL 1223807 (April 25, 2007 NB. Cal-) ____________________________________________________ 59
`
`iii
`
`Page 4 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`ResQNet.c0m, Inc. v. Lansa, Inc,
`533 F. Supp- 2d 397 (S.D-N.Y. 2008) __________________________________________________________________ 54
`
`ResQNet.com, Inc. v. Lama, Inc,
`594 F.3d 860 (Fed. Cir- 2010) .............................................................................. 55
`
`Verizon Servs. Corp. v. Cox Fibernet Van, Inc,
`602 F.3d 1325 (Fed. Cir- 2010) ............................................................................ 19
`
`Vizio, Inc. v. ITC,
`
`605 F.3d 1330 (Fed. Cir- 2010) ............................................................................49
`
`Statutes
`
`35 U-S-C. § 312 ........................................................................................................ 18
`
`35 U-S-C. § 316 ........................................................................................................ 18
`
`Regulations
`37 C.F.R. § 42.101 ............................................................................................ 1, 8, 9
`
`37 C.F.R. § 42.104 ................................................................................................... 18
`
`37 C.F.R. § 42.22 ..................................................................................................... 18
`
`iv
`
`Page 5 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`Straight Path IP Group, Inc., formerly Innovative Communications
`
`Technologies, Inc- (“Patent Owner”) respectfully submits this Response opposing
`
`the Petition for Inter Partes Review filed by SIPNET EU S-R.O. (“Petitioner”) in
`
`connection with U-S. Patent No- 6,108,704 (“the ’704 Patent”).
`
`INTRODUCTION
`
`This response presents four issues for the Board’s consideration:
`
`1. Under 37 C.F.R. § 42.101(b), a real party—in—interest is estopped from filing
`
`a petition for interpartes review if the entity had been served with a complaint for
`
`patent infiingement more than one year earlier. Patent Owner served Stalker
`
`Software, Inc- with a complaint for patent infiingement of the ’704 Patent more
`
`than a year prior to the filing of the instant petition. Although Petitioner
`
`represented that Sipnet is the only real party—in—interest of this proceeding,
`
`Petitioner has now admitted that Stalker Software provided Petitioner with the
`
`WINS reference that has been used to challenge the patentability of claims 1—7 and
`
`32—42. Under In re Guan, an entity that provides the prior art on which the inter
`
`partes review is to be based is a real party—in—interest. Stalker Software is thus a
`
`real party—in—interest and the proceeding should be dismissed in its entirety
`
`pursuant to 37 C.F.R. § 42.101(b). In addition, sanctions are warranted in the form
`
`of a dismissal and attorney fees under 37 CFR § 42.12 as a result of Petitioner’s
`
`misrepresentation that Sipnet is the only real party—in—interest.
`
`Page 6 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`2. The challenged claims of the ’704 Patent each require a query or a
`
`determination regarding the on—line status of a process in order to establish a point—
`
`to—point communication link between two processes. The NetBIOS and WINS
`
`references do not teach ascertaining the on—line status of a process (a computer
`
`program running on a computer), or even the on—line status of the computer itself.
`
`As confirmed by technical expert Professor Ketan Mayer—Patel, the references each
`
`teach that the identified query only requests the network address of a second
`
`computer, and in addition, that the response to the query is sent without
`
`determining whether the second computer is on—line with the network. WINS,
`
`which is an implementation of the NetBIOS protocol, specifically teaches that a
`
`query of its database is not a query or a determination as to the on—line status of a
`
`process running on a computer or whether the computer itself is running- WINS
`
`“does not ensure that the related device is currently running, only that a computer
`
`claimed the particular IP address” is in its database.1 As a result, neither NetBIOS
`
`1 EX- 1004, Windows NT 3-5, TCP/IP User Guide (“WINS”) at 57. EX. 1004
`
`includes page numbers indicated by the publication itself and different page
`
`numbers provided by Petitioner. All references herein will be to the page numbers
`
`as printed in WINS itself, not the page numbers provided by Petitioner-
`
`Page 7 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`nor WINS alone or in combination teaches a query or a determination as to the on—
`
`line status of a process.
`
`3- The challenged claims of the ’704 Patent each require that the network
`
`address be assigned “following connection to the computer network.” The
`
`Examiner in a previous reexamination concluded that this language required
`
`dynamic assignment of network addresses, and Professor Mayer—Patel agrees with
`
`that conclusion. The Board has already identified that the NetBIOS reference does
`
`not teach dynamic address assignment- Therefore, NetBIOS does not anticipate
`
`any challenged claim.
`
`4. Petitioner has the burden to establish that the WINS reference was a publicly
`
`available document and therefore qualifies as prior art. Petitioner has admitted that
`
`it only obtained the WINS reference from Stalker Software. Patent Owner has
`
`requested confirmation fiom Petitioner that the WINS reference was a publicly
`
`available document. Petitioner has repeatedly failed to provide evidence to address
`
`the public availability of WINS. As Petitioner has been unable to satisfy its
`
`burden, the WINS reference cannot form the basis of Petitioner’s anticipation and
`
`obviousness arguments
`
`Accordingly, Straight Path respectfully requests confirmation of the
`
`challenged claims, for the reasons explained more fillly below.
`
`Page 8 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`I.
`
`BACKGROUND FACTS
`
`The ’704 Patent is entitled “Point—to—point internet protocol,” and was filed
`
`September 25, 1995 and issued on August 22, 2000. As stated in the Abstract of
`
`the ’704 Patent, the claimed invention relates generally to “[a] point—to—point
`
`Internet protocol [that] exchanges Internet Protocol (IP) addresses between
`
`processing units .. . that have an art-line status with respect to the Internet .. .,
`
`transmitting a query .
`
`.
`
`. to determine the rim-line status of a second processing
`
`unit, -
`
`.
`
`- for establishing a point—to—point communication link between the first and
`
`processing units.”2
`
`The ’704 Patent was previously the subject of Ex Parte Reexamination
`
`Control No. 90/010,416, initiated on February 17, 2009 (the “Previous
`
`Reexamination”). The Patent Office instituted the ex parte reexamination and
`
`initially rejected claims 1—7, 11—20, and 22—42 as being obvious over NetBIOS in
`
`combination with at least one other reference.3 On October 26, 2010, the Patent
`
`Office issued a Reexamination Certificate confirming the patentability of claims 1—
`
`7 and 3242 over NetBIOS.4
`
`2 U.S. Patent No. 6,108,704 (“’704 Patent”) at Abstract (emphasis added)-
`
`3 Ex. 2002, Request for Ex Parte Reexamination at l-
`
`4 Ex. 2003, Reexamination Certificate.
`
`Page 9 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`In the Previous Reexamination, Patent Owner demonstrated that the
`
`limitations including “network protocol address[es] received .. . following
`
`connection to the computer network” established a dynamic element that was not
`
`present in the submitted prior art.5 Specifically, Patent Owner noted that the
`
`asserted NetBIOS reference did not demonstrate actions “following connection to
`
`the computer network” as required by claims 1—7 and 32—42. The Patent Office
`
`ultimately confirmed the patentability of the claims under reexamination. The
`
`Office explained that the prior art did not teach or disclose the dynamic addressing
`
`limitation required by the challenged claims.6
`
`II.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW
`AND THE BOARD’S DECISION TO INSTITUTE
`
`Sipnet’s Petition requested cancellation of claims 1—7 and 32—42 as
`
`anticipated and/or obvious in view of nine different references. The Board’s
`
`Decision narrowed the issues for inter partes review to (1) anticipation of claims 1—
`
`5 See, e.g., Ex. 2004, Response to Non—Final Rejection in a Re—Examination at 7.
`
`(“NetBIOS does not provide dynamic addressing or on—line status. . - [T]he claim
`
`mapping does not allege, much less prove, that NetBIOS teaches ‘the network
`
`protocol address of each respective process forwarded to the database following
`
`connection to the computer network.
`
`) (emphasis in original).
`
`3})
`
`6 Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 2—3.
`
`Page 10 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`7, 32, and 38—42 by NetBIOS, (2) anticipation of claims 1—7 and 32—42 by WINS,7
`
`and (3) obviousness of claims 33—37 by NetBIOS in view of WINS- The Board
`
`noted that an obviousness argument was required for claims 33—37 because
`
`independent claim 33 recited a “dynamic assignment of addresses,” which is not
`
`taught by the NetBIOS reference.
`
`Petitioner requested that, under this broadest reasonable construction
`
`standard, “‘connected/online’ is simply ‘online.
`
`7778
`
`'
`'
`7
`The Board 5 Dec1s1on to
`
`Institute stated that “‘connected to the computer network’ encompasses being ‘on—
`
`line. ”’9 The Board noted that “the ’704 Patent specification discloses ‘ .
`
`. .the
`
`7 The Board’s Decision to Institute concluded that the Petition was granted as to
`
`“Anticipation of claims 1—7 and 38—42 by WINS.” See Decision at 20. However,
`
`in the body of the Decision, the Board stated, “With respect to the remaining
`
`dependent claims 2—7 and 32—42, we have reviewed Petitioner’s supporting
`
`evidence and determine that Petitioner has met its burden under 35 U-S.C. § 314(a)
`
`[with respect to W]NS].” See Decision at 14. Out of an abundance of caution,
`
`Patent Owner provides arguments that all of the challenged claims, including
`
`claims 32—37 are not anticipated by WINS.
`
`8 IPR2013—00246, Paper No- 1 Petition for Inter Partes Review (“Petition”) at 6-
`
`9 IPR2013—00246, Paper No- 11 Decision: Institution of Inter Partes Review
`
`(“Decision”) at 5-
`
`Page 11 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`second processing unit 22, upon connection to the Internet 24 through a connection
`
`service provider, is processed by the connection server 25 to be established in the
`
`database 34 as an active on—line party,
`
`and that a construction of “connected to
`
`the computer network” as “being ‘on—line’” “is both reasonable and consistent with
`
`the ”704 patent specification.”10 The Board also found that for the purposes of its
`
`Decision to Institute, “‘point—to—point communications link’ . . .include[s] direct
`
`communications between two processes over a computer network that are not
`
`intermediated by a server.”11
`
`ARGUMENT
`
`As explained below, challenged claims 1—7 and 32—42 should be confirmed
`
`as patentable because (1) Stalker Software, the real party—in—interest of the
`
`proceeding, is estopped from asserting an interpartes review against the ’704
`
`Patent; (2) Petitioner has failed to demonstrate that NetBIOS and WS teach a
`
`query or a determination as to the on—line status of the second process; (3)
`
`Petitioner has failed to demonstrate that NetBIOS teaches dynamic addressing; and
`
`(4) Petitioner has failed to establish WINS as a publicly available prior art
`
`reference .
`
`10
`
`-
`-
`Beelsion at 6-
`
`11 Decision at 6—7.
`
`Page 12 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`I.
`
`STALKER SOFTWARE IS A REAL PARTY—IN—INTEREST IN
`
`THE PROCEEDING; THEREFORE THE PROCEEDING
`SHOULD BE DISMISSED
`
`Stalker Software, Inc- (“Stalker Software”) is a real party—in—interest in this
`
`proceeding. Because Stalker Software is estopped fiom participating in this
`
`proceeding and because Sipnet has misrepresented the real party—in—interest of the
`
`proceeding, Patent Owner respectfully requests that this inter partes review be
`
`dismissed in its entirety and that the Board sanction Petitioner by awarding
`
`attorney fees.
`
`A.
`
`Stalker Software is Estopped from Initiating an Inter Partes
`
`Review under 37 CFR § 42.101
`
`37 C.F.R. § 42. 101 (b) estops any entity from filing a petition for interpartes
`
`review regarding a particular patent one year after the entity is served with a
`
`complaint for patent infringement: “A person who is not the owner of a patent
`
`may file with the Office a petition to institute an inter partes review of the patent
`
`unless. . - [t]he petition requesting the proceeding is filed more than one year after
`
`the date on which the petitioner, the petitioner’s real party—in—interest, or a privy of
`
`the petitioner is served with a complaint alleging infringement of the patent.”
`
`Stalker Software, Inc- sells CommuniGate Pro, a software product that
`
`utilizes the system of the ”704 Patent. Patent Owner’s predecessor in interest,
`
`Innovative Communication Technologies, Inc., filed a lawsuit against Stalker
`
`Software on January 4, 2012, alleging that Stalker Software infringed various
`
`Page 13 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`claims of the ’704 Patent through the use of its CommuniGate Pro software.12 The
`
`Complaint was served on February 21, 2012.13 After nearly a year of contentious
`
`litigation, the parties settled- As a result of the litigation, under 37 C.F.R.
`
`§ 42-101(b), Stalker is estopped from filing an inierparies review against the
`
`claims of the ”704 Patent after February 21, 2013. The instant inierparies review
`
`was filed on April 11, 2013, and therefore Stalker Software was estopped fiom
`
`filing the current inter paries review.
`
`B.
`
`Stalker Software is a Real Party—in—Interest Because Stalker
`Software Provided the WINS Prior Art to Petitioner
`
`The Office Patent Trial Practice Guide identifies that, “[a]t a general level,
`
`the ‘real party—in—interest’ is the party that desires review of the patent itself.” 14 In
`
`re Guam Inter Paries Reexamination Proceeding sets out the standard for
`
`determining whether an entity is the real party—in—interest in in ier paries review
`
`12 EX. 2021, Complaint against Stalker Software, Inc. at 11 3 (“Defendant
`
`CommuniGate has infringed and is infiinging the ’704 Patent, by at least selling,
`
`offering to sell, and using VoIP products andfor services, such as CommuniGate
`
`Pro Server, that infiinge one or more claims of the ’704 Patent”)-
`
`13 EX. 2022, Summons Issued as to Stalker Software, Inc.
`
`14 Office Patent Trial Practice Guide at 16.
`
`Page 14 of 67
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`proceedings.15 Specifically, In re Guan states that an entity “cannot do any of the
`
`following and not identify the other entity as real party in interest: .
`
`-
`
`. 3). Allow
`
`another entity to direct or control the content, (e.g-, provide the prior
`
`patents/printed publications on which the reexam is to be based)”16
`
`Petitioner Sipnet is a reseller of Voice over IP (“VOIP”) services in the
`
`Czech Republic, Russia and Ukraine.17 Sipnet’s VOIP offerings are “Powered by
`
`CommuniGate Pro-” 18 Stalker Software and Sipnet have an ongoing business
`
`relationship through Sipnet’s use and reselling of the CommuniGate Pro
`
`software.19 When the infringement litigation was filed against Stalker in January
`
`2012, Stalker contacted Petitioner to inform the company of the impending
`
`15 See In re Guan Inter Partes Reexamination Proceeding, Control No- 95/001,045,
`
`“Decision Vacating File Date,” (Aug. 25, 2008). The Patent Office has adopted the
`
`real party—in—interest analysis in In re Guan in the interpartes review proceedings.
`
`See Office Patent Trial Practice Guide at 14—19-
`
`16 In re Guam, “Decision Vacating Filing Date” at 8-
`
`17 See EX- 2024, Sipnet—Contacts.
`
`13 See EX- 2025, Sipnet.net-
`
`19 See EX- 2025, Sipnet.net; see also EX. 2026, Dec. 10, 2013 Petitioner’s Response
`
`to Patent Owner’s Narrowed Discovery Requests of Dec. 6, 2013 at 2.
`
`Page 15 of 67
`
`10
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`litigation.20 By Sipnet’s own admission, Stalker Software then provided Petitioner
`
`with Exhibit 1004, the WS reference.21 Petitioner then utilized the WINS
`
`reference for the basis of its anticipation challenges to claims 1-7 and 32—42, and
`
`its obviousness challenges to claims 33—37.22 Under In re Guam, the fact that
`
`WlNS was provided to Sipnet by Stalker Software demonstrates that Stalker
`
`Software is a real party—in—interest of the current inter partes review.
`
`Petitioner only revealed Stalker’s involvement in the instant inter partes
`
`review after repeated discovery requests by Patent Owner. First, Patent Owner
`
`requested information on the real party—in—interest when the Petition was initially
`
`filed, but Petitioner refilsed, claiming that the request would only be proper after
`
`institution of interpartes review.23 After institution, Patent Owner again attempted
`
`to understand the relationship between Sipnet and Stalker Software.24 Petitioner
`
`20 See EX. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1.
`
`21 See EX. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1.
`
`22 Paper No. 1, Petition-
`
`23 EX. 2011, Correspondence from P. Haughey to P. Lee (“With regard to your
`
`letter’s specific requests for discovery, these are all premature. The period for
`
`patent owner discovery will begin after the Patent Office initiates an Inter Partes
`
`Review.”).
`
`24 See EX. 2027, Oct. 28, 2013 Patent Owner’s First Set of Interrogatories at 7.
`
`Page 16 of 67
`
`11
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`again objected, this time claiming that Patent Owner’s requests were overbroad.25
`
`Patent Owner then narrowed its discovery requests, and Petitioner was finally
`
`forced to reveal that Stalker Software provided Sipnet with the WINS reference.26
`
`Petitioner has continued to refuse to answer discovery requests regarding the
`
`financial relationship between Sipnet and Stalker Software, which would present
`
`further evidence establishing Stalker Software as the inter partes review’s real
`
`party—in—interest.27
`
`In addition, other circumstantial evidence strongly indicates that Stalker
`
`Software is controlling this interpartes review. First, two of Petitioner’s
`
`evidentiary witnesses regarding the WINS reference have connections to Stalker
`
`Software that were not disclosed by Petitioner. German Myzovsky is the Sipnet
`
`25 EX. 2028, Nov. 26, 2013 Petitioner’s Objections to Patent Owner’s First Set of
`
`Interrogatories.
`
`26 EX. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at 1 (“In October
`
`2012 German Myzovsky contacted Stalker Software, Inc- and asked for a copy of
`
`the “Microsoft Windows NT Server 3.5, TCP/IP manual” referred to in the
`
`litigation- An electronic copy was provided to him.”); see also In re Guam,
`
`“Decision Vacating Filing Date” at 8.
`
`27 EX. 2029, Dec. 20, 2013 Petitioner’s Response to Patent Owner’s Supplemental
`
`Discovery Requests of Dec. 11, 2013 at 6.
`
`Page 17 of 67
`
`12
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`employee who was provided the WINS reference by Sipnet. Petitioner stated that
`
`Mr- Myzovsky “has no relationship with Stalker Software, Inc. other than as a
`
`customer,” but MI. Myzovsky had worked with Stalker Software at Tario
`
`Communications for several years before joining Sipnet.28 Yuri Kolesnikov, the
`
`declarant who has attempted to establish the public availability of WINS, has no
`
`apparent connection to Sipnet but use to be featured on Stalker Software’s website
`
`as a promoter of its CommuniGate software.29 Second, Sipnet is a Czech
`
`Republican company with offices in the Czech Republic, Russia, and Ukraine, but
`
`maintains no presence in the United States.30 Sipnet has asserted that it is planning
`
`to expand into the US. market and as a result wants to invalidate the ’704 Patent.3’1
`
`However, Sipnet has rejected Straight Path’s offer of a license of the ”704 Patent
`
`28 See, e.g., EX. 2030, CommuniGate— Tario Communications.
`
`29 See EX. 2031, CommuniGate— Yuri Kolesnikov.
`
`30 See EX. 2024, Sipnet— Contacts.
`
`31 EX. 2032, Dec. 4, 2013 Telephonic Hearing Before the Administrative Patent
`
`Judges, at 18:9—17- Notably, Sipnet would in fact be a licensee of Straight Path if
`
`Sipnet wished to enter the U-S. market, as a result of the Stalker litigation, which
`
`resulted in a license to Stalker to the ’704 Patent for the CommuniGate Pro
`
`software. See EX. 2026, Dec. 10, 2013 Petitioner’s Response to Discovery, at l.
`
`Page 18 of 67
`
`13
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`and instead demanded to receive money and an ownership interest in Straight Path
`
`in exchange for an agreement to dismiss the interpartes review.32
`
`Patent Owner respectfully submits that Stalker Software, as the provider of
`
`the WINS reference, is a real party—in—interest of this proceeding- Dismissal of this
`
`interpartes review in its entirety is thus appropriate under 37 C.F.R. § 42.101, as
`
`real party—in—interest Stalker Software is unable to maintain this proceeding.
`
`C.
`
`Dismissal of the Proceeding and Sanctions are Appropriate
`
`Under 37 CFR § 42.12 Due to Sipnet’s Misrepresentation of
`
`the Real Party—in—Interest
`
`Dismissal of this proceeding and sanctions are also appropriate pursuant to
`
`37 C.F.R. § 42.12, which provides that a proceeding may be dismissed and
`
`sanctions may be imposed for “[m]isrepresentation of a fact,” as well as “[f]ailure
`
`to comply with an applicable rule.” Here, Sipnet misrepresented that it was the
`
`sole real party—in—interest of the proceeding.33 Sipnet also violated 37 C.F.R.
`
`§ 42.8(1) by failing to identify Stalker Software as a real party—in—interest.34
`
`32 Ex. 2032, Dec. 4, 2013 Telephonic Hearing at 21:16—20; see also Ex- 2020,
`
`Declaration of David K. Callahan Pursuant to 37 C.F.R. § 42.53.
`
`33 Paper 1, Petition at 2. Petitioner has also maintained that Stalker and Sipnet
`
`have no relationship beyond the fact that “Stalker Software, Inc- is a vendor of the
`
`CommuniGate Pro communication product employed in some of Sipnet EU
`
`systems and offerings.” See also EX. 2026, Dec. 10, 2013 Petitioner’s Response to
`
`Page 19 of 67
`
`14
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`Further, Petitioner’s refusal to acknowledge Stalker Software’s involvement
`
`in the instant proceeding until several months into the discovery process has led to
`
`the incursion of additional and unnecessary fees by Patent Owner. Patent Owner
`
`attempted to resolve the issue of Stalker Software’s involvement in this proceeding
`
`prior to institution of interpartes review. On June 11, 2013, Patent Owner
`
`requested information regarding any other entities that could be a real party—in—
`
`interest. 35 Petitioner refused to answer Patent Owner’s inquiry and did not
`
`confirm Stalker Software’s involvement in the proceeding until December 2013 .36
`
`In contrast to Petitioner’s actions, the Office requires the identification of a
`
`petition’s real party—in—interest prior to institution of in fer partes review to ensure
`
`“proper application of the statutory estoppel provisions,” in order to “protect patent
`
`owners from harassment. . . , to prevent parties from having a ‘second bite at the
`
`Discovery at 2.
`
`34 37 C.F.R. §42_8(b)(1)_
`
`35 See EX. 2010, June 11, 2013 Letter fiom P. Lee to P. Haughey.
`
`36 See EX. 2011, June 17, 2013, Correspondence from P. Haughey to P. Lee
`
`(“Sipnet is the only real party in interest. With regard to your letter’s specific
`
`requests for discovery, these are all premature. The period for patent owner
`
`discovery will begin after the Patent Office initiates an Inter Partes Review.”).
`
`Page 20 of 67
`
`15
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`apple,’ and to protect the integrity of both the USPTO and Federal Courts.”37 Had
`
`Petitioner accurately represented Stalker Software’s involvement in the Petition,
`
`the petition for inter partes review would have been dismissed pursuant to 37
`
`C.F.R. §42_101(b).
`
`Patent Owner respectfully requests sanctions in the form of compensatory
`
`expenses, including attorney fees and dismissal of the petition in its entirety, as
`
`authorized by 37 C.F.R. § 42.12(b).
`
`II.
`
`THE PRIOR ART DOES NOT TEACH A QUERY OR A
`DETERMINATION AS TO THE ON—LINE STATUS OF A
`
`PROCESS, AS REQUIRED BY EACH CHALLENGED CLAINI
`
`Substantively, the challenged claims of the ’704 Patent are patentable for at
`
`least the reason that neither NetBIOS nor WINS teach a query or a determination
`
`as to the on—line status of a process. One of the objectives of the ’704 Patent is to
`
`establish a point—to—point communication link between a first and second process.
`
`In order to establish this point—to—point communication link, each challenged claim
`
`of the ’704 Patent does more than simply provide that the network address of the
`
`second process be sent to the first process; instead, the challenged claims require a
`
`query or a determination of the on—line status of the second process (whether the
`
`second process is connected to the network) to ensure that the second process is
`
`37 Office Patent Trial Practice Guide at 14.
`
`Page 21 of 67
`
`16
`
`
`
`CASE NO. IPR2013-00246
`
`US PATENT 6,108,704
`
`indeed on-line. And notably, a process is not itself a computer but a program
`
`running on a computer-
`
`As explained below, the NetBIOS and WINS prior art merely demonstrates
`
`a query as to whether the network address of a computer is registered in a database,
`
`and not a query or a determination as to whether a process is on—line. NetBIOS
`
`and WINS both provide a database in the form of a name server, which is designed
`
`to provide a directory of the network addresses of the computers that have
`
`registered their names in the database. Notably, WINS is an implementation of
`
`NetBIOS. But neither reference teaches a query or a determination as to whether
`
`the computer, let alone the process running on the computer, is on—line, which
`
`alone would ensure the establishment of a point—to—point communication link
`
`between the two processes. In fact, the WINS reference specifically teaches that a
`
`query of its database is not a query or a determination as to the on—line status of the
`
`process running on the computer, or even whether the computer itself is running,
`
`since a response from WINS “does not ensure that the related device is currently
`
`running, only that a computer claimed the particular IP address” in its database?8
`
`As the patent’s objective is to enable point—to—point communications between two
`
`on—line processes, a server