Trials@uspto.gov
`571-272-7822
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` Paper 10
`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 IPR2015-01400
`Patent 6,009,469 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 1–3, 5, 6, 9, 10, 14, 17,
`and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469 patent”).
`Paper 5 (“Pet.”). With the Petition, Petitioner filed a Motion for Joinder
`(Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v. Straight
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 10
`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 IPR2015-01400
`Patent 6,009,469 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 1–3, 5, 6, 9, 10, 14, 17,
`and 18 of U.S. Patent No. 6,009,469 C1 (Ex. 1001, “the ’469 patent”).
`Paper 5 (“Pet.”). With the Petition, Petitioner filed a Motion for Joinder
`(Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v. Straight
`
`
`
`IPR2015-01400
`Patent 6,009,469 C1
`
`Path IP Grp., Inc., Case IPR2015-00198. 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 1–3, 5, 6, 9, 10,
`14, 17, and 18 of the ’469 patent.
`A. Related Proceedings
`Petitioner indicates that the ’469 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. 4–5.
`Petitioner also indicates that the ʼ469 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 6. Petitioner indicates that the ʼ121 patent is
`also the subject of Samsung Elecs. Co. v. Straight Path IP Grp., Inc., Case
`IPR2014-01367 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., Case
`IPR2015-00198 (PTAB), and Cisco Sys., Inc. v. Straight Path IP Grp., Inc.,
`Case IPR2015-01007 (PTAB). Id. at 4.
`Petitioner further indicates that the ʼ121 patent is related to U.S.
`Patent No. 6,108,704 (“the ʼ704 patent”) and U.S. Patent No. 6,131,121
`(“the ʼ232 patent”). Id. at 4. 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. The ʼ704 patent and the ʼ121 patent are the subject of
`Samsung Elecs., Co. v. Straight Path IP Grp., Inc., Case IPR2014-01366
`
`2
`
`
`
`IPR2015-01400
`Patent 6,009,469 C1
`
`(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
`IPR2015-00209 (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 IPR2015-01011 (PTAB). Id. at 4.
`B. Illustrative Claim
`Petitioner challenges claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the
`’469 patent. Pet. 37–60. Independent claim 1 is illustrative of the claims at
`issue and follows:
`1.
`A computer program product for use with a computer
`system having a display, the computer system capable of
`executing a first process 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;
`the currently
`program code for determining
`assigned network protocol address of the first
`process upon connection to the computer network;
`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 of the first process and a
`unique identifier of the first process to the server
`process upon establishing a communication
`connection with the server process; and
`program code, responsive to user input commands,
`for establishing a point-to-point communications
`with another process over the computer network.
`
`b.
`
`c.
`
`d.
`
`3
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`
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`IPR2015-01400
`Patent 6,009,469 C1
`
`
`C. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth Petitioner’s
`contentions of unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of
`the ’469 patent under 35 U.S.C. § 103(a), as follows (see Pet. 37–60):
`Claims
`Challenged
`1–3, 9, 10, 14, 17, and 18
`
`References
`WINS,1 NetBIOS,2 and
`Pinard3
`WINS and NetBIOS
`
`5 and 6
`
`II. ANALYSIS
`Petitioner argues that claims 1–3, 9, 10, 14, 17, and 18 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over WINS, NetBIOS,
`and Pinard and claims 5 and 6 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over WINS and NetBIOS. Pet. 37–60. Petitioner submits
`arguments and evidence identical to those submitted in IPR2015-00198.
`Mot. 2. Petitioner proposes the same claim construction and argues the
`same rationale of unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 as
`presented in IPR2015-00198. Pet. 37–604; LG Elecs., Inc. v Straight Path
`IP Grp., Inc., Case IPR2015-00196, Paper 1, 37–60. 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
`
`
`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
`
`
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`IPR2015-01400
`Patent 6,009,469 C1
`
`defining the parameters of joinder. See Mot. 9–10. Patent Owner did not
`file a preliminary response.
`We determined that the petitioner in IPR2015-00198, LG Electronics,
`Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”),
`demonstrated a reasonable likelihood of prevailing in establishing the
`unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent.
`LG Elecs., Inc. v Straight Path IP Grp., Inc., Case IPR2015-00198, slip op.
`at 9–23 (PTAB May 15, 2015) (Paper 24). We granted that petition and
`instituted an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 as
`unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
`Id. at 24.
`Accordingly, we incorporate our previous analysis, including our
`claim interpretation analysis (see id. at 9–15) and our analysis regarding this
`asserted ground of unpatentability (see id. at 15–23), from IPR2015-00198,
`and we determine that Petitioner has demonstrated a reasonable likelihood
`that it would prevail in establishing the unpatentability of claims 1–3, 5, 6, 9,
`10, 14, 17, and 18 of the ’469 patent in this Petition for the same reasons
`discussed in our Decision instituting inter partes review in IPR2015-00198.
`
`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 1–3, 5, 6,
`9, 10, 14, 17, and 18 of the ’469 patent.
`We have not made a final determination on the patentability of any
`challenged claims.
`
`5
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`IPR2015-01400
`Patent 6,009,469 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:
`Obviousness of claims 1–3, 9, 10, 14, 17, and 18 over
`1.
`WINS, NetBIOS, and Pinard; and
`Obviousness of claims 5 and 6 over WINS and NetBIOS;
`2.
`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
`
`
`
`IPR2015-01400
`Patent 6,009,469 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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