`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`SONY CORPORATION
`Petitioner
`v.
`
`INNOVATIVE COMMUNICATIONS TECHNOLOGIES, INC.
`(now 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. IPR2014-00230, Filing Date December 5, 2013
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`Page 1 of 67
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`LG Electronics Exhibit 1022
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`TABLE OF CONTENTS
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`INTRODUCTION ..................................................................................................... 1
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`I.
`
`
`THE ’704 PATENT ......................................................................................... 2
`
`II.
`
`
`THE ’704 PATENT EX PARTE REEXAMINATION ................................... 3
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`III.
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`PETITIONER’S REQUEST FOR INTER PARTES REVIEW ....................... 6
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`
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` LEGAL STANDARD ..................................................................................... 8 IV.
`
`ARGUMENT ...........................................................................................................10
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`I.
`
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’704 PATENT .....................................................10
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`A.
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`Each Challenged Claim Requires a Query into the On-Line
`Status of a Second Process, Rather than a Query into Whether a
`Process Has Registered with a Server .................................................11
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`1.
`
`2.
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`Petitioner’s Suggestion That “On-Line” Means
`“Registered with a Server” Has No Basis in the Claims or
`Specification ..............................................................................15
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`Petitioner’s Alternative Constructions for “Query” Have
`No Basis in the Claims or Specification ...................................23
`
`B.
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`Petitioner’s Construction for “A Network Protocol Address
`Received [] Following Connection to the Computer Network”
`Eliminates Claim 1’s Dynamic Addressing Requirement ..................26
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`II.
`
`
`PETITIONER HAS FAILED TO DEMONSTRATE THAT EACH
`LIMITATION OF THE CHALLENGED CLAIMS IS FOUND IN
`THE ASSERTED PRIOR ART ....................................................................29
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`A.
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`The Challenged Claims Require a Query Into On-Line Status,
`and Are Therefore Patentable over the Microsoft Manual,
`Alone or in Combination with Palmer or Pinard ................................31
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`Page 2 of 67
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`1.
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`2.
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`The Microsoft Manual Does Not Teach a Query into On-
`Line Status of a Process and Therefore Does Not
`Anticipate Claim 1 ....................................................................32
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`The Microsoft Manual in Combination with Either
`Palmer or Pinard Does Not Teach a Query into On-Line
`Status of a Process and Therefore Does Not Render
`Obvious Claims 11-12, 19, 22-23, or 30 ...................................37
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`B.
`
`The Claims Require a Query into On-Line Status or Dynamic
`Addressing, and are Therefore Patentable over VocalChat,
`Alone or in Combination with Pinard or RFC 1541 ...........................39
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`1.
`
`The Asserted References Do Not Disclose a Query into
`the On-Line Status of a Process ................................................39
`
`a.
`
`b.
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`VocalChat Does Not Teach the Required Query
`into the On-Line Status of a Process ..............................40
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`VocalChat in Combination with Pinard Does Not
`Render Obvious the Required Query into On-Line
`Status of Claims 11-12, 19, 22-23, or 30 ........................46
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`2.
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`The Asserted References Do Not Render Obvious the
`Dynamic Address Allocation of Claim 1 ..................................47
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`a.
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`b.
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`VocalChat Does Not Disclose Dynamic
`Addressing ......................................................................47
`
`Petitioner Has Not Established the Obviousness of
`Combining VocalChat with RFC 1541 ..........................48
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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 ..............................................51
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`1.
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`2.
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`Petitioner Has Admitted that Little-1994 Should Not Be
`Considered by the Board ...........................................................52
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`The Asserted References Do Not Teach the Required
`Connection Between Two Processes, Receiving the
`Network Protocol Address of the Second Process, or
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`Establishing Communication Responsive to the Network
`Protocol Address .......................................................................53
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`a.
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`b.
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`Little-1994 Does Not Teach a Point-to-Point
`Communication with a Second Process .........................53
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`Little-1994 in Combination with RFC 791, Little-
`1993, Pinard, or RFC 1541 Do Not Disclose a
`Connection Between Two Processes ..............................57
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`3.
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`Petitioner Has Not Established the Obviousness of
`Combining Little-1994 with RFC 1541 to Utilize
`Dynamically Assigned Addresses ............................................58
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`CONCLUSION ........................................................................................................60
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`Page 4 of 67
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`TABLE OF AUTHORITIES
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`
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`Cases
`Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
`713 F.3d 1369 (Fed. Cir. 2013) .............................................................................. 9
`
`CFMT, Inc. v. YieldUp Int’l Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) .............................................................................. 9
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ..............................................................................10
`
`In re Robertson, 169 F.3d 743
`(Fed. Cir. 1999) ....................................................................................................44
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................10
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 9, 50, 59
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`602 F.3d 1325 (Fed. Cir. 2010) .............................................................................. 9
`
`Statutes
`35 U.S.C. § 314(a) .................................................................................................2, 8
`
`Regulations
`37 C.F.R. § 42.100(b) ..............................................................................................10
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`Page 5 of 67
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`Straight Path IP Group, Inc., formerly Innovative Communications
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`Technologies, Inc. (“Patent Owner”), respectfully submits this Preliminary
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`Response opposing the Petition for Inter Partes Review filed by Sony Corporation
`
`(“Petitioner” or “Sony”) concerning U.S. Patent No. 6,108,704 (“the ’704 Patent”).
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`INTRODUCTION
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`The ’704 Patent relates to point-to-point communication between two on-
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`line processes, in which a first process queries a server to determine the on-line
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`status of a second process before establishing this point-to-point
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`communication. A 2010 ex parte reexamination confirmed the claims of the ’704
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`Patent. Notwithstanding this confirmation, Petitioner now challenges claims 1, 11-
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`12, 19, 22-23, and 30 of the ’704 Patent on the basis of three primary references:
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`(1) the Microsoft Manual; (2) VocalChat; and (3) Little-1994. None of these
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`references, whether alone or in combination with Sony’s other cited references,
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`anticipate or render obvious these claims.
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`The Microsoft Manual only teaches a query into the address of a computer,
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`rather than the claimed query into the on-line status of a process running on that
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`computer. Likewise, Sony itself has admitted that VocalChat does not disclose a
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`query into the on-line status of a process, and that it does not disclose the dynamic
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`addressing requirement of the challenged claims. And Little-1994 does not teach a
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`communication between a first and second process at all, as further required by the
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`Page 6 of 67
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`claims. Moreover, Petitioner has admitted that Little-1994 should not be
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`considered by the Board, as its invalidity contentions relating to Little-1994 require
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`the adoption of an unsupported claim construction. Ultimately, Petitioner’s
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`conclusory arguments rest on hindsight, fail to account for the fact that the cited
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`references do not disclose all the challenged claims’ requirements (even in
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`combination), and ignore the difficulties that these references otherwise describe in
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`combining the claimed features.
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`Therefore, Petitioner has not established a reasonable likelihood of
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`prevailing on its invalidity contentions as to any challenged claim, as required by
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`35 U.S.C. § 314(a). Accordingly, Patent Owner respectfully submits that
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`Petitioner’s Request for Inter Partes Review be denied, for the reasons explained
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`more fully below.
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`
`I.
`
`THE ’704 PATENT
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`The ’704 Patent is entitled “Point-to-point internet protocol,” and was filed
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`September 25, 1995 and issued on August 22, 2000. As stated in the Abstract of
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`the ’704 Patent, the claimed invention relates generally to “[a] point-to-point
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`Internet protocol [that] exchanges Internet Protocol (IP) addresses between
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`processing units to establish a point-to-point communication link between the
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`processing units through the Internet.”1
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`1 U.S. Patent No. 6,108,704 (“’704 Patent) at Abstract.
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`Page 7 of 67
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`To achieve the objective of facilitating a point-to-point communication link
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`between the two processes, the ’704 Patent teaches that a first process queries a
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`server to determine the current on-line status and network protocol address of a
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`second process. 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
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`process in order to establish a point-to-point communication link between the two
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`processes. Significantly, the invention of the ’704 Patent was explicitly created to
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`facilitate this point-to-point communication in the context of dynamically assigned
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`addresses.2
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`II.
`
`THE ’704 PATENT EX PARTE REEXAMINATION
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`The ’704 Patent was previously the subject of a third-party request for ex
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`parte reexamination initiated on February 17, 2009 (Control No. 90/010,416).
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`That request “assert[ed] that claims 1-7 and 10-44 of the ’704 Patent are
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`unpatentable over prior art references not before the Patent and Trademark Office
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`(PTO) during prosecution of the ’704 Patent.”3 Several references were asserted
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`during those proceedings, including the VocalChat references and Pinard.
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`2 ’704 Patent at 1:53-56. (“Due to the dynamic nature of temporary IP addresses of
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`some devices accessing the Internet, point-to-point communications in realtime of
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`voice and video have been generally difficult to attain.”).
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`3 Ex. 2002, Request for Ex Parte Reexamination at 1.
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`Page 8 of 67
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`Although the Microsoft Manual was not asserted during that reexamination, the
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`protocol implemented within the Microsoft Manual (“NetBIOS”) was asserted. On
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`March 11, 2009, the Patent Office granted the request for ex parte reexamination
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`for all requested claims. On October 26, 2010, the Patent Office issued a
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`Reexamination Certificate confirming the patentability of claims 1-7 and 32-42.4
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`In the reexamination proceedings, Patent Owner demonstrated that the
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`limitation of a network protocol address received “following connection to the
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`computer network” established a dynamic element that was not present in the
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`submitted prior art.5 Further, Patent Owner pointed out that an “active” limitation
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`of NetBIOS “is not synonymous with an ‘on-line status with respect to the
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`4 Ex. 2003, ’416 Reexamination Certificate at 16. The reexamination certificate
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`also indicates that claims 10, 21, 43, and 44 were canceled during reexamination,
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`claims 8-9 were not reexamined, and that the remaining claims were patentable as
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`amended during reexamination.
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`5 See Ex. 2004, Response to Non-Final Rejection in a Re-Examination at 7.
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`(“NetBIOS does not provide dynamic addressing or on-line status…[T]he claim
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`mapping does not allege, much less prove, that NetBIOS teaches ‘the network
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`protocol address of each respective process forwarded to the database following
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`connection to the computer network.’”) (emphasis in original).
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`Page 9 of 67
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`computer network.’”6 As the Patent Owner noted, “[a]n active name [in NetBIOS]
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`simply refers to a name that has been registered and that has not yet been de-
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`registered, independent of whether the associated computer is or is not on-line.”7
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`The Patent Office agreed with the Patent Owner on these points, and confirmed the
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`patentability of the claims under reexamination. The Office explained that the
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`prior art did not teach or disclose various limitations required by the claims:
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`[P]rior art does not explicitly teach program code for transmitting to
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`the server a network protocol address received by the first process
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`following connection to the computer network (claim 1),…receiving a
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`network protocol address of the first callee process over the computer
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`network from the server (claim 11), program code for receiving a
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`network protocol address of the first callee process over the computer
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`network from the server (claim 22),…in combination with the
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`remaining elements or features of the claimed invention.8
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`The ex parte reexamination thus established that the submitted prior art
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`failed to disclose limitations of the challenged claims. The Examiner also
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`6 Ex. 2004, Response to Non-Final Rejection at 11.
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`7 Ex. 2004, Response to Non-Final Rejection at 11.
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`8 Ex. 2005, Notice of Intent to Issue Ex Parte Reexamination Certificate at 4-5.
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`Page 10 of 67
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`ultimately dismissed the VocalChat references from consideration because the
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`requestor had failed to establish the public availability of the references.9
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`The ’704 Patent is also currently the subject of Inter Partes Review No.
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`IPR2013-00246. The only overlapping claim at issue is claim 1.10
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`III.
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`PETITIONER’S REQUEST FOR INTER PARTES REVIEW
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`Sony’s Petition requests cancellation of claims 1, 11-12, 19, 22-23, and 30
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`as anticipated and/or obvious in view of the following prior art references.
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`Notably, Petitioner has asserted an obviousness argument for all but one of its
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`bases of invalidity, although the Petition is devoid of any significant obviousness
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`analysis. For ease of reference, Sony’s invalidity grounds are summarized below:
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`
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`9 Ex. 2006, Final Rejection at 6 (“PO’s arguments questioning the declaration as
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`well as whether printed publication status has been established as set forth under
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`statute are found persuasive. Examiner therefore withdraws all rejections utilizing
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`the VocalChat references.”).
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`10 See Ex. 2007, IPR2013-00246 Paper No. 11, Decision to Institute. Patent Owner
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`is currently challenging whether the pending inter partes review should have been
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`instituted due to a real party-in-interest conflict and is seeking sanctions from the
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`petitioner in that proceeding.
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`Page 11 of 67
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`Asserted Reference(s)
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`Claims
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`
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`Primary
`Reference
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`Microsoft
`Manual
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`
`VocalChat
`References
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`
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`Microsoft Windows NT™ Version 3.5 TCPIP.HLP
`(“Microsoft Manual”)
`(1) Microsoft Manual; and
`(2) U.S. Pat. No. 5,375,068 to Palmer et al. (“Palmer”)
`(1) Microsoft Manual;
`(2) Palmer; and
`(3) U.S. Pat. No. 5,533,110 to Pinard et al. (“Pinard”)
`
`(1) VocalChat Version 2.0 trouble.hlp;
`(2) VocalChat Version 2.0 readme.txt;
`(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”)
`(1) VocalChat References; and
`(2) Droms, R., Dynamic Host Configuration Protocol,
`RFC 1541 (Oct. 1993) (“RFC 1541”)
`(1) VocalChat References; and
`(2) Pinard
`
`1
`
`11-12, 19,
`22-23, 30
`11-12, 19,
`22-23, 30
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`1, 11-12,
`19, 22-23,
`30
`
`1
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`11-12, 19,
`22-23, 30
`
`1
`
`1
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`11-12, 19,
`22-23, 30
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`11-12, 19,
`22-23, 30
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`Little-1994 (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”)
`(1) Little-1994;
`(2) RFC 1541; and (3) RFC 791
`(1) Little-1994; and
`(2) Little, T.D.C., et al., “A Digital On-Demand Video
`Service Supporting Content-Based Queries,” Proc. 1st
`ACM International Conference on Multimedia, August
`1993 (“Little-1993”)
`(1) Little-1994; and
`(2) Pinard
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`Page 12 of 67
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`As shown above, each invalidity contention is based on (1) the Microsoft
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`Manual; (2) VocalChat; or (3) Little-1994. As more fully discussed below, these
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`three references are missing significant limitations required by the’704 claims:
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` The Microsoft Manual and VocalChat lack a query into the on-line status of
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`a process. Each reference establishes connections with any computer or
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`process that has previously been registered in its system, rather than
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`determining whether that process is currently on-line. As will be shown
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`below, a previous registration of a process does not indicate the current on-
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`line status of that process.
` Petitioner has admitted that Little-1994 should not be considered, because its
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`first proposed construction for query is unsupported, and the Board should
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`not consider Little-1994 if it does not adopt this unsupported construction.
` Little-1994 only discloses communications between a single process and a
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`server, as opposed to communications between the required first and second
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`process.
` VocalChat and Little-1994 teach static addressing, and Petitioner has not
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`established the obviousness of combining either reference with RFC 1541.
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`Petitioner’s invalidity contentions are based in large part on flawed and
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`unsupported claim construction proposals and a selective reading of the prior art,
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`as described below.
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`IV.
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`LEGAL STANDARD
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`The applicable standard for instituting an inter partes review is set forth at
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`35 U.S.C. § 314(a), which provides in relevant part:
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`Page 13 of 67
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`THRESHOLD—The Director may not authorize an inter partes
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`review to be instituted unless the Director determines that . . . there is
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`a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.
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`To anticipate a claim, the prior art reference “must disclose each and every
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`limitation of the claimed invention.”11 To invalidate a claim by obviousness based
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`on multiple references, the prior art still must disclose all the limitations of the
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`claims.12 Moreover, “a patent composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently, known in
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`the prior art ... [I]t can be important to identify a reason that would have prompted
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`a person of ordinary skill in the relevant field to combine the elements in the way
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`the claimed new invention does.”13
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`11 Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed.
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`Cir. 2010).
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`12 See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
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`(supporting a finding of no obviousness when “no combination of the prior art,
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`even if supported by a motivation to combine, would disclose all the limitations of
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`the claims”); see also Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc.,
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`713 F.3d 1369, 1375 (Fed. Cir. 2013).
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`13 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`Page 14 of 67
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`ARGUMENT
`
`
`I.
`
`PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS ARE
`UNSUPPORTED AND CONTRADICTED BY THE CLEAR
`DISCLOSURES OF THE ’704 PATENT
`
`In an inter partes review, claims are to be given their broadest reasonable
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`interpretation in light of the specification.14 This broadest reasonable interpretation
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`of the claims must be “consistent with the specification.”15 A claim construction
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`may be “unreasonably broad” if it is not “read in light of the specification and
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`teachings in the underlying patent.”16
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`Given this standard, Petitioner has proposed a number of flawed claim
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`constructions. For purposes of this Preliminary Response and as further described
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`below, Patent Owner focuses on two key limitations, which are most relevant to
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`the prior art asserted by Petitioner. First, Petitioner has proposed incorrect
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`constructions for “transmitting to the server, a query as to whether the second
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`process is connected to the computer network” / “querying the server as to the on-
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`line status of the first called process.” Moreover, Petitioner has proposed an
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`improper construction for “connected to the computer network” / “on-line,” which
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`14 37 C.F.R. § 42.100(b).
`
`15 In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010) (quoting In re
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`Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
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`16 In re Suitco, 603 F.3d at 1260.
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`Page 15 of 67
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`is part of the above limitations. Petitioner has improperly argued that “connected
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`to the computer network” may be established by previous registration of a process,
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`and effectively construed the above limitations as a query into registration rather
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`than the required query into on-line status of a process. Second, Petitioner’s
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`proposed construction for “program code for transmitting to the server a network
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`protocol address received by the first process following connection to the computer
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`network” eliminates the dynamic addressing requirement of the limitation.
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`A. Each Challenged Claim Requires a Query into the On-Line
`Status of a Second Process, Rather than a Query into
`Whether a Process Has Registered with a Server
`
`At issue in the Petition are claims 1, 11-12, 19, 22-23, and 30. The three
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`independent claims – claims 1, 11, and 22 – require a query into the on-line status
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`of a second process, not just a query into whether a computer or process is
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`registered with a server. As identified below, the claim language of the
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`independent claims requires “transmitting, to the server, a query as to whether the
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`second process is connected to the computer network,” “querying the server as to
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`the on-line status of the first called process,” or “querying the server as to the on-
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`line status of the first callee process.”17 Therefore, each claim requires a query
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`17 ’704 Patent at 11:12-14; Ex. 2003, ’416 Reexamination Certificate at 16 (1:46-
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`47, 2:37-38).
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`Page 16 of 67
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`whether the computer program is on-line, and not merely whether the network
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`address of the computer program, or the computer itself, is registered in a server.
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`Claim 1
`
`A computer program product for use with a computer system, the
`computer system executing a first process and operatively
`connectable to a second process and a server over a computer
`network, the computer program product comprising:
`a computer usable medium having program code embodied in
`the medium, the program code comprising:
`program code for transmitting to the server a network
`protocol address received by the first process following connection to
`the computer network;
`program code for transmitting, to the server, a query as
`to whether the second process is connected to the computer
`network;
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`program code for receiving a network protocol address
`of the second process from the server, when the second process is
`connected to the computer network; and
`program code, responsive to the network protocol
`address of the second process, for establishing a point-to-point
`communication link between the first process and the second
`process over the computer network.
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`Independent claim 1 requires “a query as to whether the second process is
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`connected” and receiving a response to the query “when the second process is
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`connected” for the purpose of “establishing a point-to-point communication link”
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`between the two processes. Claim 1 also identifies that the process is a computer
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`program (“A computer program product for use with a computer system, the
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`computer system executing a first process”).
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`Page 17 of 67
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`Claim 1118 In a computer system, a method for establishing a point-to-point
`communication link from a caller process to a callee process over a
`computer network, the caller process having a user interface and
`being operatively connectable to the callee process and a server over
`the computer network, the method comprising the steps of:
`A. providing a user interface element representing a first
`communication line;
`B. providing a user interface element representing a first callee
`process; and
`C. 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:
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`c.1 querying the server as to the on-line status of the
`first callee process; and
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`c.2 receiving a network protocol address of the first
`callee process over the computer network from the server.
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`Independent claim 11 requires “querying the server as to the on-line status of
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`the first callee process,” for the purpose of “establishing a point-to-point
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`communication link from the caller process to the first callee process.”
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`18 Challenged claims 12 and 19 depend from claim 11 and thus include the
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`limitation of “querying the server as to the on-line status of the first called
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`process.” See Ex. 2003, ’416 Reexamination Certificate at 16 (1:49-52, 2:14-16).
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`Page 18 of 67
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`Claim 2219 A computer program product for use with a computer system
`comprising:
`a computer usable medium having program code embodied in
`the medium for establishing a point-to-point communication link
`from a caller process to a callee process over a computer network,
`the caller process having a user interface and being operatively
`connectable to the callee process and a server over the computer
`network, the medium further comprising:
`program code for generating an element representing a
`first communication line;
`program code for generating an element representing a
`first callee process;
`program code, responsive to a user associating the
`element representing the first callee process with the element
`representing the first communication line, for establishing a point-
`to-point communication link from the caller process to the first
`callee process, wherein the program code for establishing a point-to-
`point communication link further comprises:
`program code for querying the server as to the
`on-line status of the first callee process; and
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`program code for receiving a network protocol
`address of the first callee process over the computer network from
`the server.
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`Independent claim 22 requires “querying the server as to the on-line status of
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`the first callee process,” for the purpose of “establishing a point-to-point
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`communication link from the caller process to the first callee process.”
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`As identified above, each challenged independent claim therefore requires a
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`query into whether the computer program is on-line, not merely whether the
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`19 Challenged claims 23 and 30 depend from claim 22 and thus include the
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`limitation of “querying the server as to the on-line status of the first callee
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`process.” See Ex. 2003, ’416 Reexamination Certificate at 16 (2:42-44, 2:63-65).
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`Page 19 of 67
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`network address of the computer program, or the computer itself, is registered in
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`the database.
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`1.
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`Petitioner’s Suggestion That “On-Line” Means
`“Registered with a Server” Has No Basis in the
`Claims or Specification
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`Petitioner acknowledged that the “broadest reasonable construction” is the
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`proper standard to apply in an inter partes review, and that under such a standard,
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`“connected to the computer network” and “on-line” should be construed as “on-
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`line, e.g., registered with a server.”20 This definition is not based upon the
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`specification, but instead misconstrues a prior Board Decision to Institute in the
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`pending inter partes review involving the ’704 Patent.
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`In the pending inter partes review, the Board agreed, for at least the
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`purposes of its Decision to Institute, that the ’704 Patent specification supports a
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`construction of “connected to the computer network” as “being on-line.”21 Patent
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`Owner agrees that the claims require and the specification confirms that
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`“connected to the computer network” requires that a process “is on-line.” The
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`Board, however, then stated that “being ‘on-line,’ [] can be done by registering an
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`address with the server.”22
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` Patent Owner respectfully disagrees with the Board’s
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`20 Petition at 20.
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`21 Ex. 2007, IPR2013-00246, Paper No. 11, Decision to Institute at 5-6.
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`22 Ex. 2007, IPR2013-00246, Paper No. 11, Decision to Institute at 6.
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`Page 20 of 67
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`conclusion that registration of a process can satisfy the ’704 Patent’s on-line
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`requirement. As will be demonstrated below, the ’704 Patent does not teach that
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`previous registration of a process is an indication of the current on-line status of
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`that process. Therefore, the Board erred in determining that past registration of a
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`process can be used in determining whether or not a process is currently on-line or
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`connected to the computer network.
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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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`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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`startup.”23 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.”24
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`In both references, the server only relies upon this previous registration to
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`establish connections to a second computer or process. In the Microsoft Manual,
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`23 Ex. 1014, Microsoft Manual at 62 (emphasis added).
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`24 Ex. 1023, User Guide at 28 (emphasis added).
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`“[a]ny name-to-IP address mapping registered with a WINS server can be
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`provided reliably as a response to a name query.”25 In VocalChat, “users can open
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`the Address Book…and access any of the users listed.”26 Because these
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`connections are based on initial registration, rather than current on-line status, each
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`reference cautions that the requested computer or process may not be connected