`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SONY CORPORATION
`
`Petitioner
`
`v.
`
`INNOVATIVE COIVIMUNICATIONS TECHNOLOGIES, INC-
`
`(now STRAIGHT PATH [P GROUP, INC.)
`
`Patent Owner
`
`Patent No. 6,009,469
`
`Filing Date: September 25, 1996
`
`Issue Date: December 28, 1999
`
`Title: GRAPHIC USER INTERFACE FOR
`
`INTERNET TELEPHONY APPLICATION
`
`
`In fer Partes Review No- IPR2014—0023 1 , Filing Date December 5 , 2013
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`TO PETITION FOR INTER PAR TES REVIEW
`
`Page 1 of 67
`
`LG Electronics Exhibit 1026
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... l
`
`I.
`
`THE ’469 PATENT ......................................................................................... 2
`
`II-
`
`THE ’469 PATENT EX PARTE REEXAMINATION ................................... 3
`
`III-
`
`PETITIONER’S REQUEST FOR INTER PARTES REVIEW ....................... 5
`
`IV.
`
`LEGAL STANDARD ..................................................................................... 7
`
`ARGUMENT ............................................................................................................. 8
`
`I.
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`
`DISCLOSURES OF THE ’469 PATENT ....................................................... 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Challenged Claims Require Either Querying into On—Line
`Status of a Second Process, Dynamic Addressing, or
`Forwarding a Unique Identifier of a Process to a Server ......................9
`
`Petitioner’s Suggestion that “On—Line” Means “Registered with
`a Server” Is Improper .......................................................................... 14
`
`Petitioner’s Suggestion that “Accessible” Means “Registered
`with a Server” Is Baseless ................................................................... 21
`
`Petitioner’s Alternative Constructions for “Query” Have No
`Basis in the Claims or Specification ...................................................22
`
`Petitioner’s Construction for “Determining the Currently
`Assigned Network Protocol Address [] Upon Connection to the
`Computer Network” Eliminates Claim 1’s Dynamic Addressing
`Requirement ........................................................................................25
`
`II.
`
`PETITIONER HAS FAILED TO DEMONSTRATE THAT EACH
`
`LIMITATION OF THE CHALLENGED CLAIMS IS FOUND IN
`
`THE ASSERTED PRIOR ART .................................................................... 29
`
`A.
`
`The Challenged Claims are Patentable over the Microsoft
`Manual in View of Either Palmer or Pinard ........................................ 30
`
`Page 2 of 67
`
`Page i
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`
`
`The Microsoft Manual Only Discloses a Database of
`Registered Computer Names, and Does Not Query the
`On—Line Status of a Process ...................................................... 31
`
`The Microsoft Manual in Combination with Palmer Does
`
`Not Render Obvious Claims 3, 9—10, and 17—1 8 Because
`
`the References Do Not Teach a Query into the On—Line
`Status of a Process ..................................................................... 35
`
`The Microsoft Manual in Combination with Palmer and
`
`Pinard Does Not Render Obvious Claims 9—10 and 17—1 8
`
`Because the References Do Not Teach a Query into the
`On—Line Status of a Process ...................................................... 37
`
`The Microsoft Manual in Combination with Palmer Does
`
`Not Render Obvious Claims 1—3 Because the References
`
`Do Not Teach Transmitting a Unique Identifier of a
`Process ....................................................................................... 38
`
`The Claims Require Either a Query into On—Line Status or
`Dynamic Addressing, and are Therefore Patentable over
`VocalChat, Alone or in Combination with Pinard or RFC 1541 ........40
`
`1.
`
`VocalChat Does Not Teach a Query into On—Line Status
`of a Process ............................................................................... 41
`
`VocalChat, Alone or in Combination with Pinard, Does
`
`Not Render Obvious the Query into On—Line Status of
`Claims 3, 9-10, and 17-18 .........................................................47
`
`VocalChat, Alone or in Combination with RFC 1541,
`
`Does Not Render Obvious the Dynamic Addressing or
`Unique Identifier Requirement of Claims 1—3 ..........................47
`
`a.
`
`The VocalChat References Do Not Render
`
`Obvious Claims 1—3 Because VocalChat Does Not
`
`Teach Dynamic Addresses or Unique Identifiers ...........48
`
`Petitioner Has Not Established the Obviousness of
`
`Combining RFC 1541 with VocalChat .......................... 50
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`Page 3 of 67
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`Page ii
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`
`
`C.
`
`Little—1994 in Combination with RFC 791, RFC 1541, Little—
`
`1993, or Pinard Does Not Teach the Required Point—to—Point
`Communication with a Second Process .............................................. S3
`
`1.
`
`Petitioner Has Admitted that Little—1994 Should Not Be
`
`Considered by the Board ........................................................... S4
`
`The Asserted References Do Not Teach the Required
`Connection Between Two Processes ........................................ 54
`
`a.
`
`Little—1994 Does Not Teach a Point—to—Point
`
`Communication with a Second Process, Receiving
`the Network Protocol Address of a Second
`
`Process, or Establishing a Communication
`Responsive to the Network Protocol Address ................ 55
`
`b.
`
`Little—1994 in Combination with RFC 791, RFC
`
`1541 , Little—1993, or Pinard Do Not Render
`
`Obvious Claims 1—3, 9—10, or 17—18 Because the
`
`References Do Not Teach Communication with a
`
`Second Process ............................................................... 58
`
`Little—1994 in Combination with RFC 791 and RFC 1541
`
`Does Not Render Obvious Claims 1—3 Because Petitioner
`
`Has Not Established the Obviousness of Combining RFC
`1541 with Little-1994 ............................................................... 59
`
`CONCLUSION ........................................................................................................ 60
`
`Page 4 of 67
`
`Page iii
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`CFMT, Inc. v. YieldUp Int’l Corp,
`349 F.3d 1333 (Fed. Cir- 2003) ______________________________________________________________________________ 7
`
`In re Bond,
`
`910 F.2d 831 (Fed. Cir- 1990) ................................................................................ 8
`
`In re Robertson,
`
`169 F.3d 743 (Fed. Cir- 1999) ..............................................................................45
`
`In re Suitco Smface, Inc.,
`603 F.3d 1255 (Fed. Cir- 2010) .............................................................................. 8
`
`KSR Int’l Co. v. Teleflex Inc,
`550 U-S- 398 (2007) .................................................................................. 8, 52, 60
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc,
`602 F.3d 1325 (Fed. Cir- 2010) .............................................................................. 7
`
`Statutes
`
`35 U-S-C. § 314(a) .................................................................................................2, 7
`
`Regulations
`37 C-F.R- § 42.100(b) ................................................................................................ 8
`
`Page 5 of 67
`
`Page iv
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`
`
`Straight Path IP Group, Inc., formerly Innovative Communications
`
`Technologies, Inc- (“Patent Owner”), respectfully submits this Preliminary
`
`Response opposing the Petition for Inter Partes Review filed by Sony Corporation
`
`(“Petitioner” or “Sony”) concerning US. Patent No. 6,009,469 (“the ’469 Patent”).
`
`INTRODUCTION
`
`The ’469 Patent relates to point—to—point communication between two on—
`
`line processes, in which a first process queries a server to determine the on—line
`
`status of a second process before establishing this point—to—point communication-
`
`A 2010 ex parte reexamination confirmed claims 1—3, 9, and 17—18 of the ’469
`
`Patent. Notwithstanding this confirmation, Petitioner now challenges the same
`
`claims (as well as claim 10) on the basis of three primary references: (1) the
`
`Microsoft Manual; (2) VocalChat; and (3) Little—1994. None of these references,
`
`whether alone or in combination with Sony’s other cited references, anticipate or
`
`render obvious these claims.
`
`The Microsoft Manual only teaches a query into the address of a computer,
`
`rather than the claimed query into the can-line status of a process running on that
`
`computer. Likewise, Sony itself has admitted that VocalChat does not disclose a
`
`query into the on—line status of a process, and that it also does not disclose the
`
`dynamic addressing requirement of claims 1—3- Moreover, Petitioner has admitted
`
`that Little—1994 should not be considered by the Board, as its invalidity contentions
`
`Page 6 of 67
`
`Page 1
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`
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`relating to Little—1994 require the adoption of an unsupported claim construction.
`
`Ultimately, Petitioner’s conclusory arguments rest on hindsight, fail to account for
`
`the fact that the cited references do not disclose all the claims’ requirements (even
`
`in combination), and ignore the difficulties that these references otherwise describe
`
`in combining the claimed features.
`
`Therefore, Petitioner has not established a reasonable likelihood of
`
`prevailing on its invalidity contentions, as required by 35 U-S.C. § 314(a)-
`
`Accordingly, Patent Owner respectfully submits that Petitioner’s Request for Inter
`
`Partes Review be denied, for the reasons explained more fully below.
`
`I.
`
`THE ’469 PATENT
`
`The ’469 Patent is entitled “Graphic user interface for internet telephony
`
`application,” and was filed September 25, 1996 and issued on December 28, 1999.
`
`As stated in the Abstract of the ’469 Patent, the claimed invention relates generally
`
`to “[a] communication utility for establishing real—time, point—to—point
`
`communications between processes over a computer network.”1 To achieve the
`
`objective of facilitating a point—to—point communication link between the two
`
`processes, the ”469 Patent teaches “transmitting fiom a client process to a server a
`
`query as to whether a second client process is connected to the computer
`
`1 ’469 Patent at Abstract.
`
`Page 7 of 67
`
`Page 2
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`
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`network.”2 If the server determines that the second process is on-line, it will
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`provide the requesting process with the network protocol address of the requested
`
`process in order to establish a point—to—point communication link between the two
`
`processes. Significantly, the invention of the ’469 Patent was explicitly created to
`
`facilitate this communication in the context of dynamically assigned addresses.3
`
`II.
`
`THE ’469 PATENT EX PAR TE REEXAMINATION
`
`The ’469 Patent was previously the subject of a third—party request for ex
`
`parte reexamination initiated on February 23, 2009 (Control No. 90/010,422). The
`
`request challenged claims 1—3, 5—6, 8—9, and 14—18 on the basis of six groups of
`
`references, including VocalChat and the Pinard reference relied upon by
`
`Petitioner.4 On May 10, 2010, the Patent Office issued a Reexamination
`
`Certificate confirming the patentability of claims 5 and 6, and determining claims
`
`1—3, 9, 14—1 8 to be patentable as amended.5 In the reexamination, Patent Owner
`
`demonstrated that claim 1’s limitation of “program code for determining the
`
`2 ’469 Patent at 3:19—21
`
`3 ’469 Patent at 2:35—3 8. (“Due to the dynamic nature of temporary [P addresses of
`
`some devices accessing the Internet, point—to—point communications in real—time of
`
`voice and video have been generally difficult to attain”).
`
`4 Ex. 2002, Request for Ex Parte Reexamination at 1—3.
`
`5 Ex. 2003, ’422 Reexamination Certificate at 16.
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`Page 8 of 67
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`Page 3
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`
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`currently assigned network protocol address of the first process upon connection to
`
`the computer network” established a dynamic element not present in the prior art.6
`
`The Examiner also noted that VocalChat did not teach dynamic addressing, and
`
`attempted to combine VocalChat with DHCP to allegedly render obvious the
`
`“dynamic addressing” limitation? The Examiner also stated that claim 9 was
`
`allowable because the “prior art does not explicitly teach a method for establishing
`
`a point—to—point communication including querying the server process as to the on—
`
`line status of the first callee process.”8
`
`The reexamination thus established that the submitted prior art failed to
`
`disclose limitations of the challenged claims. The Examiner also ultimately
`
`dismissed VocalChat from consideration because the requestor had failed to
`
`establish the public availability of the references.9
`
`6 Ex. 2004, Notice of Intent to Issue a Reexamination Certificate at 4—5; see also
`
`Ex. 2005, Final Rejection at 14 (“Examiner first notes that claim 8 does not require
`
`any dynamic addressing limitations, unlike claims 1 and 5.”) (emphasis added).
`
`7 Ex. 2006, Reexam—Non—Final Action at 22.
`
`8 Ex. 2004, Notice of Intent to Issue Ex Parte Reexamination Certificate at 5.
`
`9 Ex- 2005, Final Rejection at 12—13.
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`Page 9 of 67
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`Page 4
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`
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`HI.
`
`PETITIONER’S REQUEST FOR INTER PARTES REVlEW
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`Sony’s Petition requests cancellation of claims 1—3, 9—10, and 17—18 as
`
`obvious in view of the following prior art references. Notably, Petitioner has
`
`asserted an obviousness argument for each of its invalidity contentions, although
`
`the Petition is devoid of any significant obviousness analysis. For ease of
`
`reference, Sony’s invalidity grounds are summarized below:
`
`Primary
`
`Asserted Reference(s)
`
`Claims
`
`Reference
`
`Microsoft
`
`(1) Microsoft Windows NTI'M Version 3-5 TCPIP.HLP
`
`Manual
`
`(“Microsoft Manual”); and (2) US. Patent No.
`
`5,375,068 to Palmer et al. (“Palmer”)
`
`(1) Microsoft Manual; (2) Palmer; and (3) US. Patent
`
`9—10 and
`
`No. 5,533,110 to Pinard et al. (“Pinard”)
`
`17—18
`
`
`
`VocalChat
`
`(l) VocalChat Version 2.0 trouble-hlp; (2) VocalChat
`
`References Version 2-0 readmetxt; (3) VocalChat Version 2.0
`
`User’s Guide; (4) VocalChat Version 2.0 info.hlp; and
`
`(5) VocalChat Version 2.0 voclchat-hlp (collectively,
`
`“VocalChat References”)
`
`(l) VocalChat References; and (2) Droms, R-,
`
`Dynamic Host Configuration Protocol, RFC 1541
`
`(Oct. 1993) (“RFC 1541”)
`
`(l) VocalChat References; and (2) Pinard
`
`9—10 and
`l 7- l 8
`
`Page 10 of 67
`
`Page 5
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`
`
`(1) Little, T.D.C., et al., “Client—Server Metadata
`
`Management for the Delivery of Movies in a Video—
`
`On—Demand System,” First International Workshop on
`
`Services in Distributed and Networked Environments,
`
`June 27—28, 1994 (“Little-1994”); and (2) Postel, J.,
`
`Internet Protocol, RFC 791 (Sept. 1981) (“RFC 791”)
`
`(l)Little—1994; (2) RFC 791; and (3) RFC 1541
`
`1-3
`
`(1) Little—1994; and (2) Little, T.D-C., et al-, “A Digital
`
`9—10 and
`
`On—Demand Video Service Supporting Content—Based
`
`17—18
`
`
`
`Queries,” Proc. 1st ACM International Conference on
`
`Multimedia, August 1993 (“Little—1993”); and
`
`(3) RFC 791
`
`(1) Little—1994; (2) Pinard; and (3) RFC 791
`
`9—10 and
`17—18
`
`As shown above, each obviousness contention is based on (1) the Microsoft
`
`Manual; (2) VocalChat; or (3) Little—1994. As more fully discussed below, these
`
`three references are missing significant limitations required by the’469 claims:
`
`0 The Microsoft Manual and VocalChat lack a query into the on—line status of
`
`a process. Each reference establishes connections with any computer or
`
`process that has previously been registered in its system, rather than
`
`determining whether that process is currently on—line. As will be shown
`
`below, a previous registration does not indicate the current on—line status of a
`
`process.
`
`0 The Microsoft Manual and VocalChat do not teach the transmission of a
`
`unique identifier of a computer process.
`
`0 Petitioner has admitted that Little—1994 should not be considered, because
`
`the Board should not consider Little—1994 unless it adopts an unsupported
`
`claim construction.
`
`Page 11 of 67
`
`Page 6
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`
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`0 Little—1994 only discloses communications between the first process and the
`
`server, rather than communications between the required first and second
`
`process.
`
`0 Neither VocalChat nor Little—1994 teach dynamic addressing.
`
`As will be shown below, Petitioner’s invalidity contentions are based in
`
`large part on unsupported and flawed claim construction proposals and a selective
`
`reading of the prior art.
`
`IV.
`
`LEGAL STANDARD
`
`The applicable standard for instituting an interpartes review is set forth at
`
`35 U.S.C. § 314(a), which provides in relevant part:
`
`THRESHOLD—The Director may not authorize an inter partes
`
`review to be instituted unless the Director determines that -
`
`-
`
`. there is
`
`a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition-
`
`To anticipate a claim, the prior art reference “must disclose each and every
`
`limitation of the claimed invention.”10 To invalidate a claim by obviousness based
`
`on multiple references, the prior art still must disclose all the limitations of the
`
`-
`-
`a
`11
`-
`claims. Moreover, a patent composed of several elements is not proved obv1ous
`
`1" Verizon Servs. Corp. v. Cox Fibemet Va, Inc, 602 F.3d 1325, 1336—37 (Fed.
`
`Cir. 2010)-
`
`11 See CFMT, Inc. v. YieldUp 1m”! Corp, 349 F.3d 1333, 1342 (Fed- Cir- 2003)
`
`Page 12 of 67
`
`Page 7
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`
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`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art
`
`[I]t can be important to identify a reason that would have prompted
`
`a person of ordinary skill in the relevant field to combine the elements in the way
`
`'
`'
`'
`the claimed new mventlon does-
`
`,7 12
`
`ARGUMENT
`
`I.
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`
`DISCLOSURES OF THE ’469 PATENT
`
`In an inter partes review, claims are to be given their broadest reasonable
`
`interpretation in light of the specification-” This broadest reasonable interpretation
`
`of the claims must be “consistent with the specification.”14 A claim construction
`
`may be “unreasonably broad” if it is not “read in light of the specification and
`
`teachings in the underlying patent.”15
`
`(non—obviousness ruling proper when “no combination of the prior art, even if
`
`supported by a motivation to combine, would disclose all the limitations of the
`
`claims”).
`
`12 KSR Inr'z Co. v. Teleflex Inc, 550 US. 398, 418 (2007).
`
`13 37 C.F.R. §42-100(b)-
`
`1“ In re Suirco Surface, Ire, 603 F.3d 1255, 1260 (Fed. Cir- 2010) (quoting In re
`
`Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
`
`15 In re Suites, 603 F.3d at 1260.
`
`Page 13 of 67
`
`Page 8
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`
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`Given this standard, Petitioner has proposed a number of flawed claim
`
`constructions- For purposes of this Preliminary Response and as further described
`
`below, Patent Owner focuses on two key limitations, which are most relevant to
`
`the prior art asserted by Petitioner- First, Petitioner has proposed incorrect
`
`constructions for “transmitting, from the first process to the server process, a query
`
`as to whether the second process is connected to the computer network” /
`
`“querying the server process to determine if the first callee process is accessible.”
`
`Moreover, Petitioner has proposed improper constructions for “connected to the
`
`computer network” / “on—line” and “accessible,” which are part of the above
`
`limitations. Petitioner has improperly argued that “connected to the computer
`
`network” may be established by registration of a process, and effectively construed
`
`the above limitations as a query into registration rather than the required query
`
`into art-line status of a process- Second, Petitioner’s proposed construction of
`
`“program code for determining the currently assigned network protocol address of
`
`the first process upon connection to the computer network” eliminates the dynamic
`
`addressing requirement of the limitation by replacing relevant language of the
`
`limitation.
`
`A.
`
`The Challenged Claims Require Either Querying into On—
`
`Line Status of a Second Process, Dynamic Addressing, or
`
`Forwarding a Unique Identifier of a Process to a Server
`
`At issue in the Petition are claims 1—3, 9—10, and 17—18. Claims 3, 9—10, and
`
`Page 14 of 67
`
`Page 9
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`
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`17-18 require a query as to the on-line status of a second process, not just a query
`
`into whether a computer or process is registered with a server. Each challenged
`
`claim also requires executing a process by the computer system, and claims 1-3
`
`require that a unique identifier of that process be forwarded to the server process-
`
`Claims 1—3 further require dynamic addressing, as claimed by “determining the
`
`currently assigned network protocol address. . .upon connection to the computer
`
`network.” The relevant limitations of each challenged claim are set forth below.
`
`A computer program product for use with a computer system having a
`display, the computer system capable of executing a firstprocess and
`connecting to other processes and a server process over a computer
`network, the computer program product comprising a computer usable
`medium having computer readable code means embodied in the
`medium comprising:
`a. program code for generating a user—interface enabling control
`of a first process executing on the computer system;
`b. program code for determining the currently assigned
`network protocol address of the first process upon connection
`to the computer network;
`c. program code responsive to the currently assigned network
`protocol address of the first process, for establishing a
`communication connection with the server process and for
`
`
`
`forwarding the assigned network protocol address ofthefirst
`process and a unique identifier ofthefirstprocess to the server
`process upon establishing a communication connection with the
`server process; and
`(:1. program code, responsive to user input commands, for
`establishing a point-to—point communications with another
`process over the computer network.
`
`Independent claim 1 first identifies that the process of the challenged claims
`
`is a computer program, via the language “[a] computer program product for use
`
`Page 15 of 67
`
`Page 10
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`
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`with a computer system. . ., the computer system capable of executing a first
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`process-” It reiterates the execution of this process in step (a) (“a first process
`
`executing on the computer system”). Claim 1 further requires forwarding a
`
`“unique identifier” of this computer program to the server, rather than forwarding
`
`an identifier of the computer itself (“program code. . .for forwarding the assigned
`
`network protocol address of the first process and a unique identifier ofthe first
`
`process to the server process upon establishing a communication connection with
`
`the server process”). Claim 1 also requires dynamic address allocation, by
`
`claiming “program code for determining the currently assigned network protocol
`
`address of the first process upon connection to the computer network.” Last,
`
`claim 1 incorporates the ”469 Patent objective of establishing a point—to—point
`
`communication between two processes, rather than just a connection between a
`
`first process and a server (“executing a first process and connecting to other
`
`processes and a server process”; “establishing a point—to—point communications
`
`with another process over the computer network”). Claim 2 is dependent upon
`
`claim 1 and therefore incorporates the above limitations.
`
`I recess is connected to the com I uter network.
`
`The computer program product of claim 2 wherein the program code
`for establishing a point—to—point communication link fiirther comprise:
`d.2 program code for transmitting, from the first process to the
`server process, a query as to whether the secondprocess is
`connected to the computer network; and
`d3 program code means for receiving a network protocol address
`of the second process from the server process, when the second
`
`Page 16 of 67
`
`Page 11
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`
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`Claim 3 requires “transmitting. . .a query as to whether the second process is
`
`connected to the computer network” and receiving a response to the query “when
`
`the second process is connected” for the purpose of “establishing a point—to—point
`
`communication link” between the two processes. Because it depends from claim
`
`2, claim 3 also incorporates the limitations requiring (1) execution of a process, (2)
`
`transmission of a unique identifier of that process, (3) point—to—point
`
`communication between two processes, and (4) dynamic address allocation-
`
`In a computer system having a display and capable of executing a
`process, a method for establishing a point-to-point communication
`from a caller process to a callee process over a computer network,
`the caller process capable of generating a user interface and being
`
`operatively connected to the callee process and a server process
`over the computer network, the method comprising the steps of:
`A. generating a user—interface element representing a first
`communication line;
`
`
`
`B. generating a user interface element representing a first callee
`
`process;
`C. querying the server process to determine ifthefirst callee
`process is accessible; and
`D. establishing a point-to-point communication link from the
`caller process to the first callee process, in response to a user
`associating the element representing the first callee process with
`the element representing the first communication line, wherein
`step C further comprises the steps of:
`Cl querying the server process as to the on-line status of
`thefirst callee process; and
`C2 receiving a network protocol address of the first callee
`
`16 Claim 17 depends fiom claim 9 and thus requires the following limitations.
`
`Claim 18 depends from claim 17, and thus also requires the following limitations.
`
`Page 17 of 67
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`Page 12
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`
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`_ rocess over the comuter network fiom the server rocess.
`
`Independent claim 9 requires “querying the server process to determine if
`
`the first callee process is accessible” in order to “establish[] a point—to—point
`
`communication from a caller process to a callee process.” Claim 9 specifies that
`
`the query into the accessibility of the callee process is performed by “querying the
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`server process as to the on—line status” of that process, and that the first caller
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`process then receives a network protocol address of the first callee process.
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`Claim 9, like claim 1, also identifies that the process of the claim is a
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`computer program rather than a computer itself (“a computer system. . . capable of
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`executing a process”), and requires a point—to—point communication between two
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`processes rather than just a connection between one process and the server
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`(“establishing a point—to—point communication from a caller process to a callee
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`process , establishing a point—to—point communication link fiom the caller process
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`to the first callee process”).
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`Claim 10 The method of claim 8 further comprising the step of:
`E. generating a user—interface element representing a second
`communication line.
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`Claim 8. In a computer system having a display and capable of
`executing a process, a method for establishing a point-to-point
`communication from a caller process to a callee process over a
`computer network, the caller process capable of generating a user
`interface and being operatively connected to the callee process and a
`server process over the computer network, the method comprising the
`steps of:
`A. _eneratin; a user—interface element r resentin_ a first
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`communication line;
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`the element representing the first communication line.
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`B. generating a user interface element representing a first callee
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`process;
`C. guerving [sic, “qaetying”] the server process to determine if
`thefirst calleeprocess is accessible; and
`D. establishing a paint-ta-paint communication link from the
`caller process to the first callee process, in response to a user
`associating the element representing the first callee process with
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`Claim 10 depends from claim 8, which is not included in Petitioner’s request
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`for inter partes review. Claim 8, as identified above, requires (1) querying
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`whether a callee process is accessible, (2) executing a process, and (3) establishing
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`point—to—point communication between a caller and callee process. Claim 10
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`therefore requires these same limitations.
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`B.
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`Petitioner’s Suggestion that “On—Line” Means “Registered
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`with a Server” Is Improper
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`Petitioner acknowledged that the broadest reasonable construction is the
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`proper stande to apply in an inter partes review, and that “connected to the
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`computer network” and “on—line” should therefore be construed as “on—line, e. g.,
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`registered with a server.”17 This definition is not based on the specification, but
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`instead misconstrues a prior Board Decision to Institute in a pending in ter partes
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`review involving related U.S. Patent 6,108,704 (“’704 Patent”).18
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`17 Petition at 19.
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`18 Petition at 19.
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`Page 19 of 67
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`Page 14
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`In the pending interpartes review, the Board agreed, for at least the
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`purposes of its Decision to Institute, that the ’704 Patent specification (which is
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`incorporated in its entirety into the ’469 Patent) supports a construction of
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`“connected to the computer network” as “being on—line.”19 Patent Owner agrees
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`that the claims require and the specification confirms that “connected to the
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`computer network” requires that a process “is on—line.” The Board, however, then
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`stated that “being ‘on—line,’ [] can be done by registering an address with the
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`server.”20 Patent Owner respectfully disagrees with the Board’s conclusion that
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`registration of a process can satisfy the ’469 Patent’s on—line requirement. As will
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`be demonstrated below, the ’469 Patent does not teach that previous registration of
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`a process is an indication of the current on—line status of that process. The Board
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`therefore erred in determining that past registration of a process can be used in
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`determining whether or not a process is currently on—line.
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`Petitioner has adopted this same flawed construction, proposing that “on—
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`line” be construed as “on—line, e.g-, registered with a server.” The reason for
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`Petitioner’s construction is that the cited prior art only teaches initial registration,
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`but does not teach determination of on—line status- In fact, the asserted prior art
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`demonstrates that registration is a one—time, initial enrollment of a process or
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`19 Ex. 2007, [PR2013—00246 Paper No. 11, Decision to Institute at 5—6-
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`2" Ex. 2007, [PR2013—00246 Paper No. 11, Decision to Institute at 6.
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`computer within a system. Specifically, the Microsoft Manual states that a
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`computer “registers its name and IP address on the network during system
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`start“)?21 Similarly, VocalChat specifies that its “Address Book contains the
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`names of all the network users who have VocalChat installed,” and that “[t]his
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`information is set during installation.
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`7322
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`'
`In both references, the server only relles
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`upon this previous registration to establish connections to a second computer or
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`process. In the Microsoft Manual, “[a]ny name—to—[P address mapping registered
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`with a WINS server can be provided reliably as a response to a name query.”23 In
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`VocalChat, “users can open the Address Book. . .and access any ofthe users
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`listed.”24 Because these connections are based on initial registration, rather than
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`current on—line status, each reference cautions that the requested computer or
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`process may not be connected to the network at the time of the query- Specifically,
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`in the Microsoft Manual, “a mapping in the database does not ensure that the
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`related device is currently running,” and in VocalChat, calls are made “even when
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`the user is away and his system is not warking.”25 Registration in a system thus
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`21 EX. 1014, Microsoft Manual at 62 (emphasis added).
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`22 EX. 1023, User Guide at 28 (emphasis added).
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`23 EX. 1014, Microsoft Manual at 69 (emphasis added).
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`24 EX. 1023, User Guide at 10 (emphasis added).
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`25 EX. 1014, Microsoft Manual at 69; EX- 1023, User Guide at 10 (emphasis
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`does not indicate whether a process is currently on—line, and a response based on
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`the previous registration of a process does not convey information regarding
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`whether that process is on—line at the time of the query.
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`The ’469 Patent, in contrast to the above references, requires more than a
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`query into whether a process is simply registered in the server. Instead, as shown
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`above, claims 3, 9—10, and 17—18 clearly require a query into whether the process is
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`currently on-line, so that the two processes may engage in a point—to—point
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`communication link. Because registration does not require that a process remains
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`on—line with the network, a response based on the previous registration of a process
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`does not satisfy the required query- Further, the ’469 Patent specification
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`repeatedly requires a specific query into or a determination of “on—line status.”
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`For example, the Summary of the Invention states that a “query” is
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`transmitted from a process to a