Trials@uspto.gov
`Tel: 571-272-7822
`
`I
`
`Paper 1 1
`Entered:.October 1 1, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIPNET EU S.R.O.
`
`Petitioner,
`
`'
`
`V.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`Case IPR2013-00246
`
`Patent 6,108,704
`
`Before KALYAN K. DESI-IPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`DESI-IPANDE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`Page 1 of 22
`
`Verizon Exhibit 1011
`
`
`Tel: 571-272-7822
`
`I
`
`Paper 1 1
`Entered:.October 1 1, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SIPNET EU S.R.O.
`
`Petitioner,
`
`'
`
`V.
`
`STRAIGHT PATH IP GROUP, INC.
`Patent Owner.
`
`Case IPR2013-00246
`
`Patent 6,108,704
`
`Before KALYAN K. DESI-IPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`DESI-IPANDE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`Page 1 of 22
`
`Verizon Exhibit 1011
`
`
`
`IPR2013-00246
`
`Patent 6,108,704
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Petitioner, Sipnet EU S.R.O. (“Sipnet”), filed a petition to institute an inter -
`
`partes review of claims 1-7 and 32—42 ofU.S. Patent 6,108,704 (the “ ’704
`
`patent”). Paper 1 (“Pet.”). Patent Owner, Straight Path IP Group (“Straight Path”)
`
`(formerly known as Innovative Communications Technologies, Inc.), timely filed a
`
`preliminary response. Paper 8 (“Prelim Resp.”). The standard for instituting an
`inter partes review is set forth in 35 U.S.C. § 314(a) which provides as follows:
`
`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`
`information presented in the petition filed under section 31 1 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and/or 103 on the following specific grounds (Pet. 17—58):
`
` 'R‘éffergncds) '
`
`
`__
`"is-Basis 2f:
`Messenger — Ryan and
`'§ 102,
`
`Messenger — NT Unleashed2
`§ 103
`
`
`
`
`
`
`NetBIOS or WINS in view
`of Messenger — Ryan and
`Messenger — NT Unleashed
`
`§ 103
`
`';Claims'c'halil_enged ”j
`1—7 and 32-42
`
`‘
`
`1-7 and 32-42
`
`
`
`
`
`
`
`
`1 Ralph Ryan, LAN MANAGER 2.0 (Megan E. Sheppard et al. eds. 1990) (Ex. 1011)
`(“Messenger — Ryan”).
`‘
`'
`2 Robert Cowart et al., WINDOWS NT UNLEASHED (Cindy Morrow et al eds., 1994)
`(Ex. 1012) (“Messenger — NT Unleashed”).
`3 THE OPEN GROUP, TECHNICAL STANDARD — PROTOCOLS FOR X/OPEN PC
`INTERNETWORKING/SMB, VERSION 2 (1992) (Ex. 1003) (“NetBIOS”).
`4 WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1004) (“WINS”).
`
`Page 2 of 22
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`Patent 6,108,704
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`
`
`-
`We» -
`NetBIOS in view of WINS
`
`»
`
`., lEegb I (am ehahlenged-
`§ 103
`1-7 and 32-42
`
`NetBIOS
`
`WINS
`
`DNS 1 ,DNS 2, and DNS ‘
`Orig.7
`
`DEC ’652
`
`DNS 1, DNS 2, and DNS
`Orig.
`in view of VocalTec9,
`Taligent ’27810, or ’704”
`
`
`
`§ 102
`
`1-7 and 32-42 '
`
`§ 102
`
`1—7 and 32-42
`
`§ 102',
`§ 103
`
`§ 102
`
`1-7 and 32—42
`
`1, 2, and 4-6
`
`§ 103
`
`L7 and 32—42
`
`For the reasons given below, we grant the petition and institute an inter
`
`partes review of claims 1-7 and 32-42.
`
`B. The ’704 Patent
`
`The ’704 patent (Ex. 1001) is titled “Point-to-Point Internet Protocol” and
`
`generally relates to establishing a point—to-point communication link. Ex. 1001
`
`col. 2, 11. 53—57. The patent explains that a first processing unit automatically
`
`transmits its associated e-mail address, and its dynamically allocated IP address, to
`
`5 Susan Thomson et al., DNS Dynamic Updates, IETF DNSIND WORKING GROUP,
`July 14, 1994 (Ex. 1006) (“DNSI”).
`6 Susan Thomson et al., DNS Dynamic Updates, FO1Ls, July 1994 (Ex. 1007)
`(“DNSZ”).
`7 P. Mockapetris, RFC1034, Domain Names — Concepts and Facilities (Ex. 1013)
`(“DNS Orig.”).
`’
`8 us. 5,483,652 (Ex. 1010) (“DEC ’652”). .
`9 VocalTec ware lets users make voice calls over ’Net, NETWORK WORLD,
`Feb. 13, 1995 (Ex. 1014) (“VocalTec”).
`1° US. 5,566,278 (Ex. 1015) (“Taligent ’27s”)
`“ US. 6,108,704 (Ex. 1001) (“’704”).
`
`Page 3 of 22
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`Patent 6,108,704
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`a connection server. 1d. at col. 5, 11. 25-38. The connection server stores the
`
`addresses in a database and, thus, the first processing unit is established as an
`
`active on-line party available for communication. 1d. The first processing unit
`
`sends a query to the connection server, which searches the database to determine
`whether a second processing unit is active and on-line. Id. at col. 5, 11. 55-60. If
`
`the callee is active and on-line, the connection server sends the IP address of the
`
`callee from the database to the first processing unit, i.e., performs a point—to-point
`
`Internet protocol communication. 1d. at col. 5, 11. 60—64. The first processing unit
`then directly establishes the point-to—point Internet communications with the callee
`
`using the retrieved IP address. 1d. at col. 5, 11. 64-67.
`
`Figure 'l of the ’704 patent is reproduced below:
`
`FIG. 1
`
`SECOND
`' PROCESSING
`UNIT
`
`Figure 1 illustrates the architecture between first processing unit 12, second
`
`processing unit 22, and connection server 26. Id. at col. 5, II. 15—29.
`
`Page 4 of 22
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`Patent 6,108,704
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`Claim 1 illustrates the claimed subject matter and is reproduced below:
`
`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. Claim Construction
`
`Consistent with the statute and the legislative history of the AlA, the Board
`
`will interpret claims of an unexpired patent using the broadest reasonable
`
`construction in light of the specification of the patent. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012); 37 CFR § 42.100(b).
`
`I. “connected to the computer network”
`
`Petitioner, under the broadest reasonable construction, contends that
`
`“connected to a computer network” encompasses merely being “on-line.” Pet. 5-6.
`
`Petitioner further contends that “connected to a computer network” simply requires
`
`being registered with the server based on the usage of this phrase in the ’704 patent
`
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`specification. Id. at 13; see also Ex. 1001 col. 5, 11. 31-38. Although Patent Owner
`
`argues generally that Petitioner has not set forth proper claim constructions, Patent
`
`Owner has not set forth any evidence or rationale to dispute Petitioner’s
`
`construction of “connected to the computer network.” See Prelim. Resp. 5—6, 9.
`
`We agree with Petitioner that “connected to the computer network”
`
`encompasses being “on-line,” which can be done by registering an address with the
`server. The ’704 patent specification and claims do not limit the scope of
`“connected to a computer network.” Furthermore, the ’704 patent specification
`
`discloses “. .
`
`. the second processing unit 22, upon connection to the Internet 24
`
`through a connection service provider, is processed by the connection server 26 to
`
`be established in the database 34 as an active on-line party.” Ex. 1001 col. 5,
`
`11. 35—38. This disclosure provides that the context of“connected to a computer
`
`network” includes storing the processing unit address by the connection server
`
`database establishes the processing unit as active and on-line. Therefore, we agree
`
`with the Petitioner’s construction of “connected to the computer network” because
`
`/
`
`it is both reasonable and consistent with the ’704 patent specification.
`
`2. “point-to-point communication link”
`
`Petitioner contends that “point-to-point” communication link, under the
`
`broadest reasonable interpretation, encompasses “communications between two
`
`processes over a computer network that are not intermediated by a connection
`
`server.” Pet. 7. Although Patent Owner argues that Petitioner has not set forth
`
`proper claim constructions to be applied, Patent Owner has not provided any
`
`evidence or rationale to dispute Petitioner’s construction of “point-to-point
`
`communication link.” See Prelim. Resp. 5—6, 9.
`
`We agree with the Petitioner’s construction of “point-to-point
`
`communication link.” The ’704 patent specification and claims do not provide for
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`Patent 6,108,704
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`a specific definitionVof“point-to-point communication link.” The plain and
`
`ordinary meaning of “point-to-point” means a first point directly connected to a
`
`second point. The plain and ordinary meaning of“communication link” includes
`
`any structure or process that allow for communication. Accordingly, for the
`
`purposes of this decision, we construe “point-to-point communications link” to
`
`include direct communications between two processes over a computer network
`
`that are not interrnediated by a server.
`
`II.
`
`ANALYSIS
`
`A. Anticipation ofclaims 1-7 and 32-42 by NetBIOS
`
`I. Overview ofNetBIOS (Ex. 1003)
`
`NetBIOS (“Network Basic Input/Output System”) is a software interface
`
`that allows applications on different computers to communicate within a computer
`
`network, such as a local area network or the Internet, and was originally designed.
`
`for IBM’s PC-Network. While NetBIOS is concerned with X/Open LAN Manager
`
`(“LMX”) architecture and Server Message Block (“SMB”) protocol, NetBIOS also
`
`. discloses NetBIOS services. Ex. 1003, 3, 359. ’2 NetBIOS applications employ
`
`NetBIOS mechanisms to locate resources, establish connections, send and receive
`
`data with an application peer, and terminate connections. Id. at 359. A NetBIOS
`session is the exchange of messages between a pair of NetBIOS applications. Id.
`
`at 361.
`
`The NetBIOS name service is the collection of procedures through which
`
`nodes acquire, defend, and locate the holders of NetBIOS names. Id. at 376. A
`
`12 Ex. 1003 includes page numbers indicated by the publication itself and different
`page numbers provided by Petitioner. Our references are to the page numbers as
`they are printed on the publication itself and not the page numbers provided by
`Petitioner.
`
`Page 7 of 22
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`node registers a name With the NetBIOS Name Server, which stores the registered
`
`name in a database. 1d. at 384—85, 394. A name query transaction can be initiated
`
`by an end-node in an attempt to obtain the IP address associated with a NetBIOS
`
`name. Id. at 388-89. If the NetBIOS Name Server has information regarding a
`
`queried node, the NetBIOS Name Server transmits a positive response. 1d. at
`
`389-90. If the NetBIOS Name Server does not haVe information regarding a
`queried node, the NetBIOS Name Server transmits a negative response. Id. Once
`
`the IP addresses have been found for a target name, a NetBIOS session service
`
`begins. Id. at 397. The NetBIOS session service involves directed (point-to—point)
`
`communications. Id.
`
`2. Analysis
`
`Petitioner contends that claims 1-7 and 32—42 are anticipated by NetBIOS.
`
`Pet. 27. We begin our analysis with independent claim 1.
`
`a. Claim 1
`
`Claim 1, in part, recites:
`
`program code for transmitting to the server a network protocol
`address received by the first process following connection to the
`computer network.
`
`Petitioner argues that NetBIOS discloses a name registration request that is
`
`submitted by an end-node to a NetBIOS Name Server, and the server replies with a
`
`positive response. Id. at 35 (citing Ex. 1003, 385). Claim 1, in part, further recites:
`
`' 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.
`
`Page 8 of 22
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`Petitioner argues that NetBIOS discloses a name query (discovery) that is
`
`initiated by end—nodes to obtain the IP addresses and other attributes. associated
`
`with a NetBIOS name. Id. at 36-37 (citing Ex. 1003, 40, 377, 388, 390). Claim 1,
`
`in part, further recites:
`
`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.
`
`Petitioner argues that NetBIOS discloses a NetBIOS session service that
`
`involves directed (point-to-point) communications between end-nodes. Id. at 38
`
`(citing Ex. 1003, 397).
`
`Patent Owner has not provided any persuasive rationale or evidence to rebut
`Petitioner’s presentation as to the application ofNetBIOS to each claim limitation.
`
`Patent Owner broadly responds that Petitioner’s arguments fail to establish a
`
`likelihood of prevailing on this ground because (1) Petitioner relies on conclusory
`
`assertions and unsubstantiated attorney arguments and fails to demonstrate that the
`
`NetBIOS reference discloses every limitation exactly as arranged or combined in
`
`the challenged claims, and (2) the NetBIOS reference and related arguments were
`
`previously the subject of ex parte reexamination proceedings and were not found
`
`to be persuasive by the Examiner. Prelim. Resp. 29.
`
`We are not persuaded by Patent Owner’s arguments. First, as discussed
`
`above, Petitioner has provided sufficient evidence and has pointed particularly to
`
`where in NetBIOS each claim element is disclosed. Second, we are not required
`
`by statute to reject a petition based upon the fact that certain arguments or art were
`
`previously considered by the Office, and we decline to do so in this case.
`
`Specifically, in the reexamination proceedings, the limitation “connection to the
`
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`computer network” was given the narrow construction to require a dynamic
`
`element. Pet. 3 (citing Ex. 2004, 7). In addition, the “active” limitation in
`
`NetBIOS was not found to be the same as “on-line.” Id. However, our
`
`construction of “connected to the computer network” does not require a dynamic
`
`element and merely registering the processing unit with a connection server
`
`encompasses a processing unit being active and on-line. Thus, we are not
`
`persuaded by the reexamination proceedings.
`
`With respect to the remaining limitations of claim 1, we have reviewed
`
`Petitioner’s supporting evidence and determine that Petitioner has met its burden
`
`under 35 U.S.C. § 314(a). On this record, we are persuaded by Petitioner’s
`
`assertion that there is a reasonable likelihood that it will prevail in shOWing that
`
`claim 1 is anticipated by NetBIOS.
`
`b. Claims 2-7 and 32-42
`
`Independent claims 2, 4, 10, 32,'and 38 recite similar limitations as claim 1
`
`and, therefore, we are persuaded that there is a reasonable likelihood that Petitioner
`
`will prevail in showing that claims 2, 4, 10, 32, and 38 are anticipated by NetBIOS.
`
`With respect to the remaining dependent claims 3, 5-6, and 40-42, we have
`
`reviewed Petitioner’s supporting evidence and determine that Petitioner has met its
`
`burden under 35 U.S.C § 314(a).
`
`For example, claim 3 depends from claim 2 and recites “a timer, operatively
`
`coupled to the processor, for time stamping the network protocol'addresses stored
`
`in the memory.” Petitioner argues that NetBIOS discloses that the NetBIOS Name
`
`Server may impose a “time-to-live” on each name that is registered. Pet. 43 (citing
`
`Ex. 1003, 382). Patent Owner has not argued claim 3 separately, and, therefore,
`
`does not challenge this assertion. Accordingly, we are persuaded that there is a
`
`10
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`reasonable likelihood that Petitioner will prevail in showing that claim 3 is
`
`anticipated by NetBIOS.
`
`Independent claim 33 recites the limitation “[a] method for locating
`
`processes having dynamically assigned network protocol addresses over a
`computer network.” Petitioner directs our attention to the claim chart presented for
`
`claim 32 to identify where in NetBIOS this limitation is disclosed. Id. at 52.
`
`However, claim 32 does not recite a similar limitation regarding dynamic
`
`assignment of addresses, and, therefore, Petitioner’s challenge to claim 33 is
`
`unsupported by this citation. we are, therefore, not persuaded that there is a
`
`reasonable likelihood that Petitioner will prevail in showing that claim 33 is
`
`anticipated by NetBIOS. Dependent claims 34—37 incorporate this limitation from
`
`independent claim 33 by reference, and we are, for the same reason, not persuaded
`
`that there is a reasonable likelihood that Petitioner will prevail in showing that
`
`those claims are anticipated by NetBIOS. ’
`
`B. Anticipation ofclaims 1-7 and 32-42 by WINS
`
`1. Overview of WINS (Ex. 1004)
`
`W1NS discloses how to install, configure, and troubleshoot
`
`Microsoft TCP/IP on a computer running the Microsoft Windows NT Workstation
`
`or Windows NT Server operation system. Ex. 1004, xi. '3 WINS further describes
`
`NetBIOS over TCP/IP, a session-layer network service that performs name-to-IP
`
`address mapping for name resolution. Id. at 50. P-node is a NetBIOS over TCP/IP
`
`'3 EX. 1004 includes page numbers indicated by the publication itself and different
`page numbers provided by Petitioner. Our references are to the page numbers as
`they are printed on the publication itself and not the page numbers provided by the
`Petitioner.
`
`11
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`mode that uses point-to—point communications with a name server to resolve
`
`names. Id.
`
`A computer’s name is registered with the Windows Internet Name Service
`(WINS) server, and the WINS server accepts the entry with a timestamp, an
`
`incremental unique version number, and other information. Id. at 56-58. A name
`
`query request is received by the WINS server and allows a client to establish a
`
`session based on the address mapping received‘ from the WINS server. 1d. at
`56-57. For example, in a P-node environment, if a first computer wants to I
`
`communicate with a second computer, the first computer queries the WINS server
`
`for the address of the second computer. 1d. at 51. When the first computer
`
`receives the appropriate address from the WINS server, it connects directly to the
`
`second computer. 1d.
`
`- 2. Analysis
`
`a. Claim 1
`
`Claim 1, in part, recites:
`
`program code for transmitting to the server a network protocol
`.
`address received by the first process following connection to the
`computer network.-
`
`Petitioner argues that WINS discloses a name registration request that is sent
`
`directly'to the WINS server to be added to the database. Pet. 35 (citing Ex. 1004,
`
`58). Claim 1, in part, further recites:
`
`I
`
`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
`
`12
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`link between the first process and the second process over the
`computer network.
`
`Petitioner argues that WINS discloses a Windows Internet Name Service
`
`(WINS) for dynamically registering and querying computer names on a network
`and Dynamic Host Configuration Protocol (DHCP) service for automatically
`configuring TCP/IP on Windows NT computers. Pet. 37—39 (citing Ex. 1004, 3,
`
`51, 57). Petitioner further argues that WINS discloses that a first computer queries
`
`the WINS server for the, address of the second computer and establishes a direct
`
`(point-to-point) connection with the second computer. 1d.
`
`Patent Owner has not provided any persuasive rationale or evidence to rebut
`
`Petitioner’s presentation as to the application of WINS to each claim limitation of
`
`claim 1. Patent Owner generally responds that Petitioner’s arguments fail to
`
`establish a likelihood of prevailing on this ground because Petitioner relies on .
`
`conclusory assertions and unsubstantiated attorney arguments and fails to
`demonstrate that the WINS reference discloses every limitation exactly as arranged
`or combined in the challenged claims. Prelim. Resp. 30.
`
`We are not persuaded by Patent Owner’s argument. Petitioner has provided
`
`claim charts that identify where in WINS each element of each claim is found and,
`
`thus, has provided sufficient evidence particularly as to where in WINS each
`
`element is disclosed. Pet. 33-5 8. Based on the evidence presented, we are
`
`persuaded that Petitioner has established a reasonable likelihood of prevailing on
`
`this ground.
`
`With respect to the remaining limitations ofclaim 1, we have reviewed
`
`Petitioner’s supporting evidence and determine that Petitioner has met its burden
`
`under 35 U.S.C § 314(a). On this record, we are persuaded that there is a
`
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`reasonable likelihood that Petitioner will prevail in showing that claim 1
`
`is
`
`anticipated‘by WINS.
`
`b. Claims 2-7 and 32-42
`
`With respect to the remaining dependent claims 2-7 and 32-42, we have
`
`I
`
`reviewed Petitioner’s supporting evidence and determine that Petitioner has met its
`burden under 35 U.S.C § 314(a).
`'
`
`For example, claim 3 depends from claim 2 and recites “a timer, operatively
`
`coupled to the processor, for time stamping the network protocol addresses stored
`
`in the memory.” Petitioner argues that WINS discloses that each address
`
`registration record includes a timestamp, where the timestamp shows when the
`
`record was registered or updated. Pet. 43 (citing Ex. 1004, 135). Patent Owner
`has not argued claim 3 separately and, therefore, does not challenge this assertion.
`
`Accordingly, we are persuaded that there is a reasonable likelihood that Petitioner
`will prevail in showing that claim 3 is anticipated by NetBIOS.
`
`C. Obviousness of claims 1—7 and 32-42 over NetBIOS and WINS
`
`As discussed above, we are persuaded that the Petitioner is reasonably likely
`
`to prevail on the challenge that claims 1-7, 32, and 38-42 are anticipated by
`
`NetBIOS. Accordingly, we determine that Petitioner’s proposed ground of
`
`obviousness over NetBIOS and WINS for these same claims is redundant to the
`
`ground of unpatentability on which we initiate an inter parties review, namely,
`
`anticipation by NetBIOS. See Liberty Mutual Ins. Co. v. Progressive Casualty Ins.
`
`Co., CBM2012-00003 (Paper No. 7), at *2 (PTAB Oct. 25, 2012) (not proceeding
`
`on redundant grounds in absence of meaningful distinction).
`
`However, as stated above, we are not persuaded Petitioner is reasonably
`
`likelyto prevail on the challenge that claims 33-37 are anticipated by NetBIOS,
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`because Petitioner did not provide sufficient evidence that NetBIOS discloses that
`the processes of having “dynamically assigned network protocol addresses.”
`
`With respect to Petitioner’s challenge to claims 33-37 as obvious over
`
`NetBIOS and WINS, Petitioner argues that WINS discloses the dynamic
`
`assignment of protocol addresses missing from NetBIOS. Pet. 36-37 (citing Ex.
`
`1004, 3, 51, 57). Specifically, Petitioner argues that WINS discloses that
`
`Microsoft TCP/IP includes NetBIOS for establishing logical names, a Windows
`Internet Name Service (WINS) for dynamically registering and querying computer
`
`names on a network, and Dynamic Host Configuration Protocol (DHCP) service
`for automatically configuring TCP/IP on Windows NT computers. Id. Petitioner
`
`further argues that “it is clearly-obvious to combine the dynamic addressing of
`
`WINS with NetBIOS to produce the invention, and this was in fact done.” Pet. 21.
`
`Patent Owner has not provided any persuasive rationale or evidence to rebut
`
`Petitioner’s presentation as to the application of a combination of NetBIOS and
`WINS to each claim limitation. Furthermore, Patent Owner has not provided any
`evidence or rationale to rebut Petitioner’s reasoning supporting the conclusion of
`
`obviousness. Patent Owner generally responds that Petitioner’s arguments fail to
`establish a likelihood of prevailing on this ground because Petitioner relies on
`
`conclusory assertions and unsubstantiated attorney arguments and fails to
`demonstrate that the NetBIOS and WINS references render obvious the challenged
`claims. Prelim. Resp. 27-29.
`I
`
`We are not persuaded by Patent Owner’s argument. As discussed above,
`Petitioner has provided sufficient evidence and particularly has pointed to where in
`
`NetBIOS and WINS each element is disclosed. Pet. 36-39. Furthermore,
`
`Petitioner argues that
`
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`it is clearly obvious to combine the dynamic addressing of WINS with
`NetBIOS to produce the invention, and this was in fact done [in Microsoft -
`TCP/IP] .
`.
`. Microsoft .TCP/JP includes .
`. .NetBIOS for establishing logical
`names and sessions on the network .
`.
`. [and] Windows Internet Name
`Service (WINS) for dynamically registering and querying computer names
`on an intemetwork .
`. .”
`
`Pet. 21 (citing Ex. 1004, 3). Petitioner has provided an articulated reasoning with a
`rational underpinning to support the conclusion of obviousness. Id. We are
`
`persuaded by Petitioner that the conclusion is reasonable because WINS
`
`demonstrates that Microsoft TCP/JP has combined the elements of NetBIOS and
`
`WINS in the same manner that Petitioner proposes to combine NetBIOS and
`
`WINS. Ex. 1004, 3. Because Microsoft TCP/IP includes this combination, we are
`
`persuaded by Petitioner’s argument that it would have been obvious to a person
`
`with ordinary skill in the art to have combined these elements in the same way.
`
`With respect to the remaining limitations ofclaims 33-37, we have reviewed
`Petitioner’s supporting evidence and determine that Petitioner has met its burden
`
`under 35 U.S.C § 314(a). On this record, we are persuaded by Petitioner’s
`
`assertion that there is a reasonable likelihood that it will prevail in showing that
`
`claims 33-37 are obvious over NetBIOS and WINS.
`
`D. Anticipation ofclaims 1, 2, and 4-6 by DEC ”652
`
`1. Overview ofDEC ’652 (Ex. 1010)
`
`DEC ’652 discloses a method and apparatus facilitating the processing of a
`
`request from a client application for a service, or for access to a resource, in a
`
`distributed computing envirOnment. Ex. 1010, Abstr. DEC ’652 describes in a
`
`client—server connection, the server application exports binding information to a
`
`shared repository. 1d. at col. 7, 11. 45—52. Binding information contains the
`
`location of servers. 1d. at col 6, 1]. 18-19. A client application imports the
`
`16
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`exported binding information and establishes a logical connection with the server
`
`application based on the binding information. 1d. at col. 7, 11. 52-56.
`
`2. Analysis
`
`Petitioner contends that claims 1, 2, and 4-6 are anticipated by DEC ’652.
`
`Pet. 28-29. We begin our analysis with independent claim 1.
`I
`a. Claim 1
`
`Claim 1 recites, in part, a “first process,” a “second process,” and “a point-
`
`to-point communication link between the first process and the second process.”
`Petitioner argues that “a network entity accepting communication requests”
`
`corresponds to the first process and a “network entity initiating communications”
`
`corresponds to the second process. Pet. 28. Petitioner further argues that
`
`DEC ’652 discloses the “client application 18 establishes a logical connection with
`the server application 10.” Pet. 39 (citingiEx. 1010, col. 7, 11. 54-57). However,
`Petitioner has not provided any explanation as to how this “IOgical connection” is
`
`the same as “a point-to-point communication link between the first process and the
`
`second process,” as required by claim 1. Thus, we are not persuaded that the
`Petitioner is reasonably likely to prevail on this challenge.
`'
`
`b. Claims 2 and 4-6
`
`As to the challenge of claims 2 and 4-6 based on DEC ’652, we are not
`
`persuaded that the Petitioner is reasonably likely to prevail on this challenge for the
`
`same reasons discussed above with respect to claim 1. Furthermore, the petition
`
`must identify with particularity, for each claim challenged, the grounds on which
`
`the challenge to the claim is based, and the evidence that supports the grounds for
`
`the challenge to each claim. See 35 U.S.C. § 312(a)(3). Under 37 C.F.R.
`§ 4222(a), each petition must include a statement of the precise relief requested
`
`and a full statement of the reasons fOr the relief requested, including-a detailed
`
`17
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`explanation ofthe significance of the evidence including material facts, the
`
`governing law, rules, and precedent. Under 37 CPR. § 42.-104(b)(4), the petition
`
`must specify where each element ofa challenged claim is found in the prior art
`
`patents or printed publications. Furthermore, in accordance with 37 C.F.R.
`
`§ 42.104(b)(5), the relevance of the evidence supporting the challenge must be
`
`provided, including identification of specific portions ofthe evidence that support
`
`the challenge.
`
`The Petitioner has not identified where each element of claims 2 and 4-6 is
`
`found in DEC ’652. Petitioner provided'a claim chart attempting to illustrate
`
`where in some ofthe references the elements of claims 2 and 4-6 can be found.
`
`Pet. 40-50. Petitioner has not included DEC ’652, however, in the submitted claim
`
`chart for claims 2 and 4-6. Thus, Petitioner has failed to demonstrate where in
`
`DEC ’652 each element of claims 2 and 4-6 is found. We are, therefore, not
`
`persuaded that the Petitioner is reasonably likely to prevail on this challenge.
`
`E. Remaining Anticipation Grounds
`
`Petitioner contends that claims 1-7 and 32-42 are anticipated by Messenger,
`
`DNS], DNS2, and DNS Orig. Pet. 38-55. We determine not to proceed on these
`grounds because they are redundant to the grounds of anticipation of claims 1-7,
`
`32, and 38-42 by NetBIOS and anticipation of claims 1-7 and 32-42 by WINS. See
`
`Liberty Mutual Ins. Co. v. Progressive Casually Ins. Co., CBM2012-00003 (Paper
`No. 7), at *2 (PTAB Oct. 25, 2012) (not proceeding on redundant grounds in
`
`absence of meaningful distinction).
`
`Petitioner describes Messenger as enabled with the NetBIOS Name Server
`
`and the NetBIOS name registration request service. Id. at 19. Similarly, DNSl,
`
`DNSZ, and DNS Orig. describe the same name registration features of NetBIOS.
`
`18
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`NetBIOS describes that a single NetBIOS Name Server can be implemented as a
`
`distribution entity, such as a Domain Name Service. Ex. 1003, 367. Thus, because
`
`they are redundant of NetBIOS, we do not proceed on the proposed grounds of
`anticipation by Messenger, DNS], DNSZ, and DNS Orig.
`
`F. Remaining grounds obviousness ofclaims 1-7 and 32-42
`
`Petitioner contends that claims 1-7 and 32—42 are obvious over
`(1) Messenger, (2) WINS or NetBIOS in view of Messenger, (3) DNS 1, DNS2,
`
`and DNS Org., and (4) DNS], DNSZ, and DNS Orig. in view of VocalTec,
`
`Taligent, or Admitted Prior Art. Pet. 10-30. However, we are not persuaded that
`
`there is a reasonable likelihood that Petitioner will prevail in these challenges.
`A petition must identify with particularity each claim challenged, the
`
`grounds on which the challenge to each claim is based, and the evidence that
`supports the grounds for the challenge to each claim. See 35 U.S.C. § 312(a)(3). As-
`
`noted, under 37 CPR. § 42.22(a), each petition must include a statement of the
`
`precise relief requested and a full statement of the reasons for the relief requested,
`including a detailed explanation of the significance of the evidence including
`
`material facts, the governing law, rules, and precedent. As discussed in the KSR
`
`Int ’1 Co. v. Teleflex Inc., 550 US. 398, 418 (2007),
`
`[o]flen, it will be necessary for a court to look to interrelated teachings Of
`multiple patents; the effects of demands known to the design community or
`present in the marketplace; and the background knowledge possessed by a
`person having ordinary skill in the art, all in order to determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue. To facilitate review, this analysis should be
`made explicit. See In re Kahn, 441 F. 3d 977, 988 (CA Fed. 2006)
`(‘[R]ejections on obviousness grounds cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the’legal
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