UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LG ELECTRONICS, INC., et al.,
`Petitioners
`
`v.
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE
`COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`
`INTERPARTESREVIEWOFU.S. PATENTNO. 6,108,704
`Case IPR No.: To Be Assigned
`
`DECLARATION OF BRUCE M. MAGGS, PH.D.
`
`Page 1 of75
`
`V erizon Exhibit 1002
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`PERSONAL AND PROFESSIONAL BACKGROUND ............................... 1
`I.
`II. MATERIALS REVIEWED AND CONSIDERED ........................................ 4
`III. THE BASICS OF NETWORK COMMUNICATION ................................... 6
`A.
`Computer Network Hardware Configurations ...................................... 6
`B.
`Network Protocols ................................................................................. 8
`C.
`Assigning Network Addresses to Devices ............................................ 9
`D. Mapping Names to IP Addresses ........................................................ 13
`E.
`Looking Up the IP Address of a Network Device, Including
`Those with Dynamically Assigned Addresses .................................... 13
`Point-to-Point Communications .......................................................... 16
`F.
`User Interfaces ..................................................................................... 17
`G.
`SUMMARYOFTHE'704PATENT ........................................................... 18
`A.
`Summary of the Alleged Invention ..................................................... 18
`1.
`Step 1: Processing Units Obtain Dynamically Assigned IP
`Addresses .................................................................................. 19
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with a Connection Server ........................................ 20
`Steps 3 & 4: First Processing Unit Sends Query to
`Connection Server, Which Returns IP Address of Second
`Processing Unit ........................................................................ .21
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communication with Second
`Processing Unit ........................................................................ .21
`Using a "User Interface" to Control the Process ...................... 22
`5.
`Original Prosecution of the '7 04 Patent .............................................. 23
`B.
`Prior Ex Parte Reexamination of the '704 Patent.. ............................. 23
`C.
`The Sipnet Inter Partes Review for the '704 Patent (Ex. 1008) ......... 24
`D.
`Overview of the Primary Prior Art References ............................................. 25
`A. WINS (Ex. 1003) ................................................................................ .25
`
`IV.
`
`V.
`
`2.
`
`3.
`
`4.
`
`Page 2 of75
`
`

`

`1.
`
`2.
`
`3.
`
`4.
`
`3.
`
`4.
`
`B.
`
`Step 1: Processing Units Obtain Dynamically Assigned IP
`Addresses from DHCP Servers ................................................. 26
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with the WINS Server ............................................. 28
`Steps 3 & 4: First Processing Unit Sends Query to WINS
`Server and Receives the IP Address of the Second
`Processing Unit ......................................................................... 32
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communication with Second
`Processing Unit ......................................................................... 33
`NetBIOS (Ex. 1004) ............................................................................ 34
`1.
`Step 1: Processing Units Have Assigned IP Addresses ............ 35
`2.
`Step 2: Processing Units Register Their IP Addresses and
`Identifiers with the NBNS ........................................................ 36
`Steps 3 & 4: First Processing Unit Sends Query to the
`NBNS and Receives the IP Address of the Second
`Processing Unit ......................................................................... 37
`Step 5: First Processing Unit Uses Received IP Address to
`Establish Point-to-Point Communications with Second
`Processing Unit ......................................................................... 38
`Pinard (Ex. 1013) ................................................................................ 39
`C.
`VI. LEGAL STANDARD .................................................................................. .42
`VII. LEVEL OF ORDINARY SKILL IN THE ART .......................................... .45
`VIII. Specific Grounds for Petition ....................................................................... .46
`A.
`Ground 1: Claim 1 Would Have Been Obvious Over WINS and
`NetBIOS .............................................................................................. 46
`A Person Skilled in the Art Would Have Been Motivated
`1.
`to Combine WINS and NetBIOS .............................................. 46
`Claim 1 (Independent) is Obvious ........................................... .4 7
`2.
`Ground 2: Claims 11-12, 14, 16, 19,22-23,27, and 30-31
`Would Have Been Obvious Over WINS, NetBIOS, and Pinard ........ 55
`One Skilled in the Art Would Have Been Motivated to
`1.
`Combine WINS, NetBIOS, and Pinard .................................... 55
`Claim 11 (Independent) is Obvious .......................................... 57
`
`B.
`
`2.
`
`Page 3 of75
`
`

`

`Claim 12 (Depends from Claim 11) is Obvious ....................... 61
`3.
`Claim 14 (Depends from Claim 11) is Obvious ....................... 62
`4.
`Claim 16 (Depends from Claim 11) is Obvious ....................... 64
`5.
`Claim 19 (Depends from Claim 11) is Obvious ....................... 65
`6.
`Claim 22 (Independent) is Obvious .......................................... 66
`7.
`Claim 23 (Depends from Claim 22) is Obvious ....................... 68
`8.
`Claim 27 (Depends from Claim 22) is Obvious ....................... 68
`9.
`10. Claim 30 (Depends from Claim 22) is Obvious ....................... 69
`11. Claim 31 (Depends from Claim 30) is Obvious ....................... 70
`IX. CONCLUSION .............................................................................................. 71
`
`Page 4 of75
`
`

`

`I, Bruce M. Maggs, Ph.D., declare:
`
`1.
`
`I have been retained by counsel for the Petitioners to submit this
`
`declaration in connection with Petitioners' Petition for Inter Partes Review of
`
`Claims 1, 11-12, 14, 16, 19,22-23,27, and 30-31 ofU.S. Patent No. 6,108,704 ("the
`
`'704 patent") (Ex. 1001). I am being compensated for my time at a rate of$700 per
`
`hour, plus actual expenses. My compensation is not dependent in any way upon the
`
`outcome of this Petition.
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND
`
`1.
`
`I am an expert in the field of computer systems and networking,
`
`including network communication protocols and database design. I have studied,
`
`taught, practiced, and researched in the field of Computer Science for approximately
`
`twenty-five years.
`
`2.
`
`I received a Ph.D. in Computer Science from the Massachusetts
`
`Institute of Technology in 1989, a Master of Science degree in Electrical
`
`Engineering and Computer Science from the Massachusetts Institute of Technology
`
`in 1986, and a Bachelor of Science degree in Computer Science from the
`
`Massachusetts Institute of Technology in 1985.
`
`3.
`
`I have been a Professor of Computer Science at Duke University since
`
`July 2009, where I first served as a Visiting Professor, and then became a tenured
`
`full Professor in January 2010. On July 1, 2011, I became the Pelham Wilder
`
`Page 5 of75
`
`

`

`Professor of Computer Science in the Trinity College of Arts and Sciences at Duke.
`
`Prior to joining Duke, I was a full Professor of Computer Science at Carnegie
`
`Mellon University. I joined Carnegie Mellon as an Assistant Professor in January
`
`1994, was promoted to Associate Professor in July 1997, was given tenure in July
`
`1999, and was promoted to full Professor in 2004. From September 2007 through
`
`August 2008, I was a Visiting Professor in the Department of Computer Science at
`
`Duke University, and from September 1998 through January 1999, I was a Visiting
`
`Associate Professor
`
`in
`
`the Electrical Engineering and Computer Science
`
`Department at the Massachusetts Institute of Technology.
`
`4.
`
`At Carnegie Mellon and Duke, I have taught a variety of courses related
`
`to the '704 patent. For example, at Carnegie Mellon, I taught undergraduate courses
`
`titled "Introduction to Computer Systems" and "Computer Networks." At Duke, I
`
`taught a graduate course on "Computer Networks and Distributed Systems." In
`
`these courses, students are asked to perform programming assignments such as
`
`building a web server, or building a web proxy. I have also taught related courses at
`
`Carnegie Mellon, such as a graduate course on "Basic Computer Systems" and an
`
`undergraduate course on "Operating System Design and Implementation."
`
`5.
`
`I have had extensive experience in both industry and academia as it
`
`relates to the technical fields relevant here. I helped launch Akamai Technologies, a
`
`leading provider of services for accelerating content and business processes on the
`
`Page 6 of75
`
`

`

`Internet. I retain a part-time role at Akamai as Vice President for Research. I also
`
`worked as a research scientist at the NEC Research Institute, Inc. for approximately
`
`four years, where I conducted research on networking and parallel computing.
`
`6.
`
`I have lectured and published extensively on computer systems and
`
`networking, including lectures and papers relating to content delivery over the
`
`Internet, improved network routing, database scalability and management, server
`
`reliability, the Domain Name System, source location, data management, and
`
`peer-to-peer networks.
`
`7.
`
`Governmental agencies, such as the National Science Foundation and
`
`the Defense Advanced Research Projects Agency, and industrial grants from, for
`
`example, Sun Microsystems and NEC Research Institute, have provided funding for
`
`my research. My federally and corporately funded research has addressed areas
`
`such as computer networking and Internet protocol and system designs.
`
`8.
`
`Additionally, I was elected to the Council of the Association for
`
`Computing Machinery, and have served as a member of the DARPA Information
`
`Science and Technology Study Group.
`
`I have also served three times on the
`
`program committee of the premier conference in computer networking, ACM
`
`SIGCOMM, served on both the Program and Steering Committees of the ACM
`
`Internet Measurement Conference, and chaired the first IEEE Workshop on Hot
`
`Topics in Web Systems and Technologies.
`
`Page 7 of75
`
`

`

`9.
`
`A copy of my curriculum vitae is attached as Exhibit 1017, which
`
`contains further details on my education, experience, publications, patents, and other
`
`qualifications to render an expert opinion in connection with this proceeding.
`
`II. MATERIALS REVIEWED AND CONSIDERED
`
`10.
`
`In connection with my work on this matter, I have reviewed the '704
`
`patent (Ex. 1001) and the following other documents:
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 6,108,704 ("'704 patent")
`
`1002
`
`Declaration of Bruce M. Maggs, Ph.D. ("Maggs Decl. ")
`
`1003
`
`Microsoft Windows NT Server Version 3.5 ("WINS")
`
`1004
`
`Technical Standard: Protocols for X/Open PC Interworking: SMB,
`Version 2 ("NetBIOS")
`
`1005
`
`Intentionally Left Blank
`
`1006 Windows NT Server 3.5 TCP/IP Documentation [TCPIP.HLP]
`
`1007 Windows NT Server Copyright Registration
`
`1008 Windows NT Networking Guide
`
`1009 Windows NT Networking Guide Copyright Registration
`
`1010
`
`1011
`
`Petition for Inter Partes Review ofU.S. Patent No. 6,108,704, Sipnet
`EU S.R.O. v. Straight Path IP Group, Inc. (IPR No. 2013-00246)
`(Aprilll, 2013)
`Institution Decision in Sipnet EU S.R.O. v. Straight Path IP Group,
`Inc. (IPR No. 2013-00246) (Oct. 11, 2013)
`
`Page 8 of75
`
`

`

`1012
`
`1013
`
`1014
`
`1015
`
`Straight Path IP Group, Inc. v. Bandwidth. com, Inc. et al., No.
`1:13-cv-0932 (E.D.V.A. Feb. 25, 2014) (Dkt. 107, Claim
`Construction Order)
`
`IETF RFC 1541, October 1993 ("Dynamic Host Configuration
`Protocol") ("DHCP")
`
`IETF RFC 1034, November 1987 ("Domain Names- Concepts And
`Facilities") ("Domain Names RFC 1034")
`
`IETF RFC 1035, November 1987 ("Domain Names- Implementation
`And Specification") ("Domain Names RFC 1035")
`
`1016
`
`IETF RFC 791, September 1981 ("Internet Protocol")
`
`1017
`
`Curriculum Vitae of Dr. Bruce M. Maggs
`
`1018
`
`Excerpt from File History for U.S. Patent No. No. 6,108,704
`(December 2, 1997 Amendment)
`
`1019
`
`U.S. Patent No. 5,159,592 ("Perkins")
`
`1020
`
`U.S. Patent No. 5,533,110 ("Pinard")
`
`1021
`
`1022
`
`Excerpt from File History for '704 Patent (March 4, 1999
`Amendment)
`
`Excerpt from Reexamination File History for '704 Patent (May 11,
`201 0) Office Action
`
`Page 9 of75
`
`

`

`1023
`
`1024
`
`Excerpt from Reexamination File History for '704 Patent (November
`25, 2009) Mayer-Patel Declaration
`
`Final Written Decision in Sipnet EU S.R.O. v. Straight Path IP Group,
`Inc. (IPR No. 2013-00246) (Oct. 9, 2014)
`
`I also have relied on my academic and professional experience in reaching the
`
`opinions expressed in this declaration.
`
`III. THE BASICS OF NETWORK COMMUNICATION
`
`A.
`
`Computer Network Hardware Configurations
`
`11. The '704 patent does not claim to invent a new type of networking
`
`technology or network hardware.
`
`Indeed, networking components such as
`
`computers, servers, routers, and gateways were all well known in the art when the
`
`application for the '704 patent was filed in September 1995.
`
`12. There are many possible network configurations. One example is a
`
`"Local Area Network" or "LAN," which interconnects computers within a limited
`
`geographic area such as a home, school, computer laboratory, or office building.
`
`Another type of network configuration is a "Wide Area Network" or "WAN," which
`
`connects computers over a broad geographic area, such as across a city, a country, or
`
`internationally. The Internet is a widely known example of a WAN. A LAN can be
`
`connected to a WAN, such as the Internet, via a gateway that acts as an interface
`
`between the LAN and the WAN. These types of network configurations were well
`
`Page 10 of75
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`

`

`known before September 1995, and the '704 patent does not claim to invent a new
`
`type of network configuration.
`
`13.
`
`In addition, it also was well known before September 1995 how to
`
`couple one type of network (e.g., a LAN) with one or more other types of networks
`
`(e.g., a WAN or the Internet). For example, as shown below, in October 1990, U.S.
`
`Patent No. 5,159,592 to Perkins ("Perkins") (Ex. 1019) disclosed a communication
`
`area network 1 that includes one or more local area networks (LAN s 3 and 4) that
`
`(via local gateway 16 and global gateway 18) are "coupled to remote network users
`
`who may be dispersed over a wide geographic area":
`
`TO REMOVE
`USERS
`
`LAN 3
`__./
`
`IMUl
`~·
`
`14
`
`LAN 2
`(_
`
`12
`
`(Ex. 1019, 3:56-68,4:21-27, Fig. 2.)
`
`FIG. 2
`
`Page 11 of75
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`

`

`B.
`
`Network Protocols
`
`14. There were many network protocols in existence long before
`
`September 1995. For example, the '704 patent references several prior art protocols,
`
`including the Transmission Control Protocol and Internet Protocol (TCP/IP), the
`
`Serial Line Internet Protocol (SLIP), the Point-to-Point Protocol (PPP), the Post
`
`Office Protocol (POP) and Simple Mail Transfer Protocol (SMTP). (Ex. 1001,
`
`2:5-13 (explaining "devices interfacing to the Internet and other online services may
`
`communicate with each other" using the "Internet Protocol (IP)" or "Serial Line
`
`Internet Protocol or Point-to-Point Protocol (SLIP/PPP)"); id., 5:7-9 (discussing
`
`POP and SMTP).)
`
`15. As of the claimed priority date of the '704 patent, many network
`
`communication protocols had been standardized by the Internet Engineering Task
`
`Force ("IETF"), which codifies protocols in documents called "Requests for
`
`Comments" or "RFCs" that are widely distributed and used by engineers in
`
`designing networks and network products. The IETF first defined the Internet
`
`Protocol ("IP") in RFC 791 (published in September 1981 ), which led to the
`
`"Internet Protocol" standard in 1981. (Ex. 1016.) The Internet Protocol forms the
`
`basis of the modem Internet and other computer networks. As I discuss further
`
`below, among other things, the Internet Protocol Suite provides mechanisms for
`
`network devices to identify themselves on a network (via a network address and/or
`
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`

`

`name), and to locate and communicate with other devices also participating on the
`
`network.
`
`C.
`
`Assigning Network Addresses to Devices
`
`16. As the '704 patent explains, the prior art Internet Protocol identifies
`
`devices participating on the network using a unique series of numbers, commonly
`
`represented as four values ranging from 0 to 255, separated by periods (e.g.,
`
`151.207.247.130). (Ex. 1001, 1:35-41 ("Devices such as a host computer or server
`
`of a company may include multiple modems for connection of users to the Internet,
`
`with a temporary IP address allocated to each user. For example, the host computer
`
`may have a general IP address XXX.XXX.XXX.1 0, and each user may be allocated
`
`a successive IP address ofXXX.XXX.XXX.11, XXX.XXX.XXX.12, etc.").) As I
`
`discuss further below, the Internet Protocol provided a way for a networked device
`
`having one IP address to direct data to another networked device with a different IP
`
`address.
`
`17.
`
`Some IP addresses are "static." Assigning static addresses typically
`
`requires a user or network administrator to configure the device manually with the
`
`static address. The idea of assigning static network addresses was known before
`
`September 1995, and the '704 patent does not claim to invent a new way to assign
`
`static network addresses.
`
`(Ex. 1001, 1:48-50 (discussing prior art use of
`
`Page 13 of75
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`

`

`"[p ]ermanent IP addresses of users and devices accessmg the Internet" and
`
`"dedicated IP addresses").)
`
`18. As the number of networked computers increased significantly during
`
`the 1980s, concerns increased about a shortage of available IP addresses. One way
`
`that network engineers addressed this issue was to assign "dynamic" IP addresses to
`
`devices - a process in which a host or server assigns an IP address to a first device,
`
`can re-assign that address to another device (e.g., after a certain period of time, or
`
`when the first device is turned off or moves outside of the network), and assigns a
`
`new IP address to the first device if the first device later seeks to resume
`
`participation on the network.
`
`19. The idea of assigning IP addresses dynamically was well known before
`
`September 1995, and the '704 patent does not claim to invent a new way to assign
`
`addresses.
`
`(Ex. 1001, 1 :41-4 7 (explaining that, in the prior art, "temporary IP
`
`addresses may be reassigned or recycled to the users, for example, as each user is
`
`successively connected to an outside party" and that "a host computer of a company
`
`may support a maximum of 254 IP addresses which are pooled and shared between
`
`devices connected to the host computer"); id., 1:5 3-54 (discussing "the dynamic
`
`nature of temporary IP addresses of some [prior art] devices accessing the Internet".)
`
`One prior art example is the Dynamic Host Configuration Protocol (DHCP), which
`
`provided a framework for dynamically assigning IP addresses. (Ex. 1013.) Under
`
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`

`

`DHCP, a device within a computer network acts as a DHCP server, and assigns IP
`
`addresses to devices joining the network. A device leaving the network releases its
`
`assigned IP address back to the DHCP server so that the server can reassign that
`
`address to another device that later joins the network. In some cases, a device
`
`periodically renews its address with the DHCP server (after a set period of time) so
`
`the DHCP server can distinguish between those devices still using their assigned
`
`addresses and those that are not. The DHCP server thus tracks which devices remain
`
`online, and reassigns addresses not in use to other devices. (Ex. 1013 at 11, 16, 35.)
`
`20.
`
`Prior to September 1995, the computer network industry also
`
`developed other mechanisms that enabled devices, such as computers, to update a
`
`name resolution database as new network addresses were assigned to devices.
`
`21.
`
`For example, in October 1990, Perkins disclosed a network that
`
`dynamically assigned addresses to devices when they joined a network- by having
`
`the device transmit "a unique identifier, such as its serial number" to a global
`
`gateway, and having the global gateway dynamically assign the device a
`
`"pseudo-IP" network address "either on a temporary basis (one network session) or
`
`on a permanent, extended basis (several network sessions)." (Ex. 1019, 4:49-60,
`
`4:63-64, 5:52-65 ("[A] permanent assignment is preferably not permanent in the
`
`sense that the mobile unit 10 would own the address for all time .... Preferably, the
`
`permanent assignment is only sufficiently long so as to accomplish a specific task
`
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`

`which may require a plurality of separate network sessions."); id., 5: 12-18; Fig. 3
`
`(showing assignment of pseudo-IP addresses transmitted from global gateway to
`
`mobile unit and local gateway).)
`
`22.
`
`Perkins also disclosed that the local and global gateways could track
`
`which devices were currently "active" and "inactive" on the network. (I d., 5:34-42
`
`(explaining that if a registered mobile unit 10 goes inactive, "the mobile unit's local
`
`gateway 16 [] notif[ies] the global gateway 18, via LAN 14, that the mobile unit 10 is
`
`no longer a member of the group of mobile units associated with the local gateway
`
`16"); id., 6:8-18, 6:60-64 ("If a mobile unit 10 intends to terminate incoming
`
`network service in an orderly manner it notifies the local gateway 16 via a header
`
`station 12. The local gateway 16 notifies the global gateway 18 that the mobile
`
`unit's pseudo-IP address may be deallocated."); id., 5:5-9 ("A mobile unit 10
`
`typically maintains its assigned pseudo-IP address until it is turned off, or until the
`
`network session is actively terminated."); id., claim 3 (de-assigning network
`
`addresses for mobile units that are "no longer active"); id., claim 6 (re-assigning
`
`network addresses for a mobile unit that "is once more actively coupled to the
`
`wireless network"); id., claim 11 (involving, for inactive devices, "deassigning the
`
`assigned network address at the network gateway").)
`
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`

`

`D. Mapping Names to IP Addresses
`
`23. Most users cannot easily remember, and prefer not to use, the lengthy
`
`numeric IP addresses associated with network devices. Therefore, since the 1980s,
`
`almost all network services have allowed users to map the text name of a particular
`
`device to the network address. For example, users can send an email by using the
`
`recipient's email address, rather than the numeric network address of the recipient's
`
`mail server. Likewise, the "Domain Name System" (DNS), which was developed in
`
`the 1980s, allows users to input an Internet domain name for a website rather than
`
`the numeric IP address of the website. (Ex. 1014-15.)
`
`24.
`
`Systems that allow mapping names to IP addresses must include a
`
`mechanism to track which address is currently assigned to a specific name. N arne
`
`servers that store names and corresponding IP addresses existed long before
`
`September 1995. For example, Perkins explained that a global gateway (that
`
`assigned IP addresses to devices) could forward name/addressing information for
`
`devices to a "nameserver." (Ex. 1019, 7:7-20, Fig. 6, claim 12.)
`
`E.
`
`Looking Up the IP Address of a Network Device, Including Those
`with Dynamically Assigned Addresses
`
`25.
`
`In situations where the user of a first device knows the current address
`
`of a second device, the user of the first device can establish "point-to-point"
`
`communications with the second device by addressing communications directly to
`
`the network address of the second device. (Ex. 1019, 6:35-38,7:5-7 (explaining that
`
`Page 17 of75
`
`

`

`"[a ]11 communication from a remote user to a mobile unit 10 employs the pseudo-IP
`
`address of the mobile unit 10 ," and that if a remote user already knows the pseudo-IP
`
`address of a desired mobile unit, the remote user can establish point-to-point
`
`communications directly with the mobile unit by "employing known IP protocols").)
`
`However, if the user of the first device only knows the name of the second device,
`
`the user needs a way to look up the IP address of the second device by using its
`
`known name. This type of lookup system- including for dynamically assigned IP
`
`addresses - was well known in the prior art.
`
`26.
`
`For example, in a DNS system, when a user enters a domain name (e.g.,
`
`www.cnn.com) into their web browser, the browser sends a request to the DNS
`
`server, asking it to "resolve" that domain name to an IP address (sometimes referred
`
`to as "name resolution"). Using its stored list of name/IP address mappings, the
`
`DNS server looks up the IP address (e.g., 156.166.226.25) assigned to the queried
`
`domain name, and provides that numeric address to the browser (which the browser
`
`then uses to connect directly with the web site). (Ex. 1015 [RFC 1035, November
`
`1987 ("Domain Names- Implementation And Specification")].)
`
`27.
`
`In a system involving the dynamic assignment of IP addresses, a look
`
`up mechanism must account for the fact that the address mapped to a device may
`
`change over time and must provide a means for keeping track of such changes.
`
`Page 18 of75
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`

`

`Perkins explained in 1990 that if a user did not know the dynamically assigned
`
`("pseudo-IP") address of a device, the user could request the address by sending a
`
`name query to a "nameserver," as depicted below:
`
`FIG.6
`
`INQUIRY
`FAILS
`
`REMOTE USER SENDS DATA
`RETURN PSEUOO-IP
`ADDRESS TO REMOTE 1-------..1 TO PSEUDO-IP ADDRESS
`USER
`VIA GLOBAL GW 18 AND
`LOCAL GW 16
`
`(Ex. 1019, Fig. 6; id., 7:7-17 ("When a remote user initiates a conversation with a
`
`mobile unit 10 the remote user typically consults a network nameserver configured
`
`to send requests for specified mobile unit 10 names to a specified mobile unit 10
`
`global gateway 18.").) If the nameserver determined that the queried name was
`
`associated with a registered dynamically assigned address, it returned that address to
`
`the user. (I d., 7:17-20, Fig. 6, claim 12 (discussing steps involved "in response to a
`
`name inquiry to determine a network address that is associated with a name").) In
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`contrast to the "permanently stored" serial number, the pseudo-IP address of a
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`mobile unit may be "permanently assigned to that mobile unit" or "dynamically
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`allocated." (Jd. , 5:57-65.)
`
`F.
`
`Point-to-Point Communications
`
`28. Once a user obtains the IP address of another device in response to a
`
`name query, the user can communicate to that device directly using the received IP
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`address - what the '704 patent calls "point-to-point" communications.
`
`This
`
`concept also was well known before September 1995.
`
`29.
`
`For example, Perkins explained in 1990 that a remote user could
`
`establish point-to-point communications with the mobile unit 10 by using the
`
`pseudo-IP address received from the nameserver. (Ex. 1019, 7:37-39 ("If a remote
`
`user obtains the pseudo-IP address of a registered mobile unit 10, the remote user is
`
`enabled to send messages, such as mail, to the mobile unit 10 .... "); id. , 7:44-46
`
`(describing "TCP session requests for the mobile unit 10 from the remote user"); id.,
`
`8:15-19 (noting that, for point-to-point communications, "the remote user is enabled
`
`to deliver the mobile unit 10 packets directly to the mobile unit's local gateway 16,
`
`without requiring the intervention of the global gateway 18"); id., Fig. 6 (showing
`
`"Remote User Sends Data to Pseudo-IP Address Via Global GW 18 and Local GW
`
`16"); id., claims 1, 13, 19); id., 7:54-56 ("A mobile unit 10 delivering a packet to a
`
`remote user employs conventional methods of network transmission and uses the IP
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`address of the remote user.").)
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`G. User Interfaces
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`30. A user interface provides a mechanism through which humans can
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`interact with machines. One example is a graphical user interface, or GUI, which
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`allows a user to interact with a device through visual indicators, such as images,
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`icons, and other graphic representations. The use of a mouse or other pointing device
`
`to drag and drop icons or other graphical elements on a computer display is a type of
`
`graphical user interface that has been known for many decades, and has been
`
`included in mainstream computers (such as the Apple Macintosh) since at least the
`
`1980s. A graphical user interface necessarily requires some form of a display (e.g., a
`
`computer monitor or display screen). Otherwise, the user will not be able to view
`
`and interact with the graphical elements of the interface.
`
`31. The concept of using a graphical user interface to simulate a telephone
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`also was known by September 1995, including the ability to drag and drop elements
`
`on the telephone interface to control the operations of calls. Indeed, the '704 patent
`
`itself refers to this type of prior art "standard" drag-and-drop technology: "The
`
`WebPhone drag and drop functionality uses the standard Windows® drag and drop
`
`interface." (Ex. 1001, 31:6-7.) Similarly, as discussed more fully in Section V(C)
`
`below, U.S. Patent No. 5,533,110 ("Pinard") (Ex. 1020) (filed Nov. 29, 1994)
`
`teaches a graphical user interface that mimics a traditional telephone, and that
`
`includes icons representing "communication lines" that users can drag and drop to
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`Page 21 of75
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`initiate calls and place them on hold. (Ex. 1020, 1:55-61,2:47-54,2:63-65,3:15-17,
`
`4:10-51,5:5-61, 6:6-10,6:36-53, Figs. 2-16.) Pinard itself acknowledges that such
`
`drag-and-drop functionality has "long been known" since at least the "early 1980s"
`
`(id., 3:15-35), and states that implementing such drag-and-drop operations in a
`
`telephony user interface would have been "within the expected skill of a person
`
`skilled in the art" as ofNovember 1994. (Jd. 1020, 3:35.) This is consistent with my
`
`understanding of the prior art.
`
`IV. SUMMARY OF THE '704 PATENT
`
`A.
`
`Summary of the Alleged Invention
`
`32. The '704 patent concedes that, in the prior art, a first process could
`
`establish "point-to-point communications" with a second process using the network
`
`address of the second process, "in a manner known in the art." (Ex. 1001, 1 :21-23
`
`("[D]evices interfacing to the Internet and other online services may communicate
`
`with each other upon establishing respective device addresses."); id., 1 :48-50,
`
`7:60-64 ("Permanent IP addresses of users and devices accessing the Internet readily
`
`support point-to-point communications of voice and video signals over the Internet"
`
`"may be established as shown in FIGS. 3-4 in a manner known in the art"); id.,
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`8:20-22 (point-to-point communications "may be conducted in a manner known in
`
`the art between the first and second users through the Internet 24").)
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`Page 22 of75
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`33. According to the '704 patent, however, point-to-point communication
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`was "difficult to attain" between devices with "temporary IP addresses" (i.e.,
`
`dynamically assigned IP addresses) that "may be reassigned or recycled" over time.
`
`(Ex. 1001, 1:35-56.) The '704 patent represented that a need therefore existed for a
`
`way to establish point-to-point communications between computers with dynamic
`
`IP addresses. (Jd.; see also Ex. 1021 [3/4/99 Amendment] at 14 ("The problem is:
`
`How can a global network user be located if he/she has no permanent network
`
`address?
`
`. . .. Applicants have disclosed a solution to
`
`the above-described
`
`problem."))
`
`34. The '704 patent claimed to solve that supposed "problem" through the
`
`basic lookup feature described in Figure 8:
`
`64
`
`66
`
`68
`
`70
`
`72
`
`START THE PRIMARY
`POINT-TO-POINT INTERNET
`PROTOCOL
`
`TIMESTAMP AND STORE E-MAIL
`ADRESSES AND IP AORESSES OF
`LOGGED-IN UNITS IN A DATABASE
`
`RECEIVE QUERY FROM FIRST UNIT
`WHETHER A SPECIFIED SECOND
`UNIT IS LOGGED-IN
`
`RETRIEVE IP ADDRESS FROM
`DATABASE IF THE SECOND UNIT IS
`LOGGED-IN
`
`SEND RETRIEVED IP ADRESS TO
`FIRST UNIT TO ESTABLISH POINT(cid:173)
`TO-POINT CONNECTION
`
`FIG. 8
`
`(Ex. 1001,Fig. 8.)
`
`1. Step 1: Processing Units Obta