Trials@uspto.gov
`571-272-7822
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` Paper 9
`Entered: November 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01398
`Patent 6,108,704 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`
`
`
`
`Cisco Systems, Inc. and AVAYA Inc. (collectively, “Petitioner”) filed
`a Petition requesting an inter partes review of claims 1, 11, 12, 14, 16, 19,
`22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the ’704
`patent”). Paper 4 (“Pet.”). With the Petition, Petitioner filed a Motion for
`Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`Entered: November 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01398
`Patent 6,108,704 C1
`____________
`
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`
`
`
`
`Cisco Systems, Inc. and AVAYA Inc. (collectively, “Petitioner”) filed
`a Petition requesting an inter partes review of claims 1, 11, 12, 14, 16, 19,
`22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the ’704
`patent”). Paper 4 (“Pet.”). With the Petition, Petitioner filed a Motion for
`Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v.
`
`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`Straight Path IP Grp., Inc., Case IPR2015-00209. We have jurisdiction
`under 35 U.S.C. § 314(a), which provides that an inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” After considering the Petition and associated evidence, we
`conclude that Petitioner has demonstrated a reasonable likelihood that it
`would prevail in showing unpatentability of all the challenged claims. Thus,
`we authorize institution of an inter partes review of claims 1, 11, 12, 14, 16,
`19, 22, 23, 27, 30, and 31 of the ’704 patent.
`A. Related Proceedings
`Petitioner indicates that the ’704 patent is the subject of Straight Path
`IP Grp., Inc. v. Cisco Sys., Inc., No. 3:14-cv-04312 (N.D. Cal.), and Straight
`Path IP Grp., Inc. v. AVAYA, Inc., No. 3:14-cv-04309 (N.D. Cal.). Pet. 5.
`Petitioner also indicates that the ʼ704 patent is the subject of Certain Point-
`to-Point Network Commc’n Devices and Prods. Containing Same, Inv. No.
`337-TA-892 (USITC). Id. at 7. Petitioner indicates that the ʼ704 patent is
`also the subject of Samsung Elecs. Co. v. Straight Path IP Grp., Inc., Case
`IPR2014-01366 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., Case
`IPR2015-00209 (PTAB), and Cisco Sys., Inc. v. Straight Path IP Grp., Inc.,
`Case IPR2015-01011 (PTAB). Id. at 4–5. The ʼ704 patent was the subject
`of Sipnet EU S.R.O. v. Straight Path IP Grp., Inc., Case IPR2013-00246
`(PTAB) (“Sipnet”). Id. at 4–5.
`Petitioner further indicates that the ʼ704 patent is related to U.S.
`Patent No. 6,131,121 (“the ʼ121 patent”) and U.S. Patent No. 6,009,469
`(“the ʼ469 patent”). Id. at 4. The ʼ121 patent and the ʼ469 patent are the
`subject of Samsung Elecs., Co. v. Straight Path IP Grp., Inc., Case IPR2014-
`
`2
`
`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`01367 (PTAB), and Samsung Elecs., Co. v. Straight Path IP Grp., Inc., Case
`IPR2014-01368 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., Case
`IPR2015-00196 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., Case
`IPR2015-00198 (PTAB), Cisco Sys., Inc. v. Straight Path IP Grp., Inc., Case
`IPR2015-01006 (PTAB), and Cisco Sys., Inc. v. Straight Path IP Grp., Inc.,
`Case IPR2015-01007 (PTAB). Id. at 4.
`B. Illustrative Claim
`Petitioner challenges claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and
`31of the ’704 patent. Pet. 36–60. Independent claim 1 is illustrative of the
`claims at issue and follows:
`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;
`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.
`C. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth Petitioner’s
`contentions of unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30,
`
`3
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`
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`IPR2015-01398
`Patent 6,108,704 C1
`
`and 31 of the ’704 patent under 35 U.S.C. § 103(a), as follows (see Pet. 34–
`60):
`
`References
`WINS1 and NetBIOS2
`WINS, NetBIOS, and
`Pinard3
`
`Claims
`Challenged
`1
`11, 12, 14, 16, 19, 22, 23, 27, 30, and
`31
`
`II. ANALYSIS
`Petitioner argues that claim 1 is unpatentable under 35 U.S.C. §
`103(a) as obvious over WINS and NetBIOS and claims 11, 12, 14, 16, 19,
`22, 23, 27, 30, and 31 are unpatentable under 35 U.S.C. § 103(a) as obvious
`over WINS, NetBIOS, and Pinard. Pet. 34–60. Petitioner submits
`arguments and evidence identical to those submitted in IPR2014-01368.
`Mot. 2. Petitioner proposes the same claim construction and argues the
`same rationale of unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27,
`30, and 31 as presented in IPR2015-00196. Pet. 34–60; LG Elecs., Inc. v
`Straight Path IP Grp., Inc., Case IPR2015-00209, Paper 1, 36–60.
`Petitioner further relies on the same Declaration by Dr. Bruce M. Maggs in
`support of the alleged grounds of unpatentability. Id.; Ex. 1002. Petitioner
`filed a proposed order defining the parameters of joinder. See Mot. 9–10.
`Patent Owner did not file a preliminary response.
`
`
`1 MICROSOFT WINDOWS NT SERVER VERSION 3.5, TCP/IP USER
`GUIDE, © 1994 Microsoft Corporation (Ex. 1003, “WINS”).
`2 TECHNICAL STANDARD PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2, THE OPEN GROUP, © September
`1992, X/Open Company Limited (Ex. 1004, “NetBIOS”).
`3 U.S. Patent No. 5,533,110, issued July 2, 1996 (Ex. 1020, “Pinard”).
`
`4
`
`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`
`We determined that the petitioner in IPR2015-00209, LG Electronics,
`Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”),
`demonstrated a reasonable likelihood of prevailing in establishing the
`unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31of the
`’704 patent. LG Elecs., Inc. v Straight Path IP Grp., Inc., Case IPR2015-
`00209, slip op. at 9–23 (PTAB May 15, 2015) (Paper 20). We granted that
`petition and instituted an inter partes review of claim 1 is unpatentable
`under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS and claims
`11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over WINS, NetBIOS, and Pinard. Id. at 23.
`Accordingly, we incorporate our previous analysis, including our
`claim interpretation analysis (see id. at 9–14) and our analysis regarding this
`asserted ground of unpatentability (see id. at 14–23), from IPR2015-00209,
`and we determine that Petitioner has demonstrated a reasonable likelihood
`that it would prevail in establishing the unpatentability of claims 1, 11, 12,
`14, 16, 19, 22, 23, 27, 30, and 31of the ’704 patent in this Petition for the
`same reasons discussed in our Decision instituting inter partes review in
`IPR2015-00209.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in establishing unpatentability of claims 1, 11, 12,
`14, 16, 19, 22, 23, 27, 30, and 31of the ’704 patent.
`We have not made a final determination on the patentability of any
`challenged claims.
`
`5
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`IPR2015-01398
`Patent 6,108,704 C1
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review
`hereby is instituted as to the following proposed grounds:
`1.
`Obviousness of claim 1 over WINS and NetBIOS; and
`2.
`Obviousness of claims 11, 12, 14, 16, 19, 22, 23, 27, 30,
`and 31 over WINS, NetBIOS, and Pinard;
`FURTHER ORDERED that the trial is limited to the ground
`identified above and no other grounds are authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this Decision.
`
`
`
`
`
`
`6
`
`
`
`IPR2015-01398
`Patent 6,108,704 C1
`
`For PETITIONER:
`
`David Cavanaugh
`Jason Kipnis
`WILMER, CUTLER, PICKERING, HALE AND DORR
`David.cavanaugh@wilmerhale.com
`Jason.kipnis@wilmerhale.com
`
`Dorothy P. Whelan
`Christopher O. Green
`FISH & RICHARDSON P.C.
`whelan@fr.com
`cgreen@fr.com
`
`For PATENT OWNER:
`
`William Meunier
`Michael Renaud
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`mtrenaud@mintz.com
`
`
`7
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