`571-272-7822
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` Paper 8
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` Entered: November 24, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VERIZON SERVICES CORP. and VERIZON BUSINESS NETWORK
`SERVICES INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01406
`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
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`I. INTRODUCTION
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`
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`Verizon Services Corp. and Verizon Business Network Services Inc.
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`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
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`of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 of
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`U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the ’704 patent”). Paper 1
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`
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`IPR2015-01406
`Patent 6,108,704 C1
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`(“Pet.”). With the Petition, Petitioner filed a Motion for Joinder (Paper 3,
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`“Mot.”), seeking to join this case with LG Elecs., Inc. v. Straight Path IP
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`Grp., Inc., Case IPR2015-00209. We have jurisdiction under 35 U.S.C.
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`§ 314(a), which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition.” After
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`considering the Petition and associated evidence, we conclude that Petitioner
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`has demonstrated a reasonable likelihood that it would prevail in showing
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`unpatentability of all the challenged claims. Thus, we authorize institution
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`of an inter partes review of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and
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`31 of the ’704 patent.
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`A. Related Proceedings
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`Petitioner indicates that the ’704 patent is the subject of Straight Path
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`IP Grp., Inc. v. Verizon Comm’ns, Inc., No. 1:14-cv-07798 (S.D. N.Y.). Pet.
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`6. Petitioner also indicates that the ʼ704 patent is the subject of Certain
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`Point-to-Point Network Commc’n Devices and Prods. Containing Same, Inv.
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`No. 337-TA-892 (USITC). Id. at 7. Petitioner indicates that the ʼ704 patent
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`is also the subject of Samsung Elecs. Co. v. Straight Path IP Grp., Inc., Case
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`IPR2014-01366 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., and
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`Case IPR2015-00209 (PTAB). Id. at 4–5. The ʼ704 patent was the subject
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`of Sipnet EU S.R.O. v. Straight Path IP Grp., Inc., Case IPR2013-00246
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`(PTAB) (“Sipnet”). Id. at 5.
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`Petitioner further indicates that the ʼ704 patent is related to U.S.
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`Patent No. 6,131,121 (“the ʼ121 patent”) and U.S. Patent No. 6,009,469
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`(“the ʼ469 patent”). Id. at 4–5. The ʼ121 patent and the ʼ469 patent are the
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`subject of Samsung Elecs., Co. v. Straight Path IP Grp., Inc., Case IPR2014-
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`2
`
`
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`IPR2015-01406
`Patent 6,108,704 C1
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`01367 (PTAB), and Samsung Elecs., Co. v. Straight Path IP Grp., Inc., Case
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`IPR2014-01368 (PTAB), LG Elecs., Inc. v. Straight Path IP Grp., Inc., Case
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`IPR2015-00196 (PTAB), and LG Elecs., Inc. v. Straight Path IP Grp., Inc.,
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`Case IPR2015-00198 (PTAB). Id. at 5.
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`B. Illustrative Claim
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`Petitioner challenges claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and
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`31 of the ’704 patent. Pet. 37–60. Independent claim 1 is illustrative of the
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`claims at issue and follows:
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`A computer program product for use with a computer
`1.
`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.
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`3
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`IPR2015-01406
`Patent 6,108,704 C1
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`C. The Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth Petitioner’s
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`contentions of unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30,
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`and 31 of the ’704 patent under 35 U.S.C. § 103(a), as follows (see Pet. 34–
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`60):
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`References
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`WINS1 and NetBIOS2
`WINS, NetBIOS, and
`Pinard3
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`Claims
`Challenged
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`1
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`11, 12, 14, 16, 19, 22, 23, 27, 30, and
`31
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`II. ANALYSIS
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`Petitioner argues that claim 1 is unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over WINS and NetBIOS and claims 11, 12, 14, 16, 19,
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`22, 23, 27, 30, and 31 are unpatentable under 35 U.S.C. § 103(a) as obvious
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`over WINS, NetBIOS, and Pinard. Pet. 34–60. Petitioner submits
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`arguments and evidence identical to those submitted in IPR2015-00209.
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`Mot. 2. Petitioner proposes the same claim construction and argues the
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`same rationale of unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27,
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`30, and 31 as presented in IPR2015-00209. Pet. 34–60; LG Elecs., Inc. v
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`Straight Path IP Grp., Inc., Case IPR2015-00209, Paper 1, 36–60.
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`Petitioner further relies on the same Declaration by Dr. Bruce M. Maggs in
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`
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`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”).
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`4
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`IPR2015-01406
`Patent 6,108,704 C1
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`support of the alleged grounds of unpatentability. Pet. 34–60; Ex. 1002.
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`Petitioner filed a proposed order defining the parameters of joinder. See
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`Mot. 8–9. Patent Owner did not file a Preliminary Response.
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`We determined that the petitioner in IPR2015-00209, LG Electronics,
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`Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”),
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`demonstrated a reasonable likelihood of prevailing in establishing the
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`unpatentability of claims 1, 11, 12, 14, 16, 19, 22, 23, 27, 30, and 31of the
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`’704 patent. LG Elecs., Inc. v Straight Path IP Grp., Inc., Case IPR2015-
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`00209, slip op. at 9–23 (PTAB May 15, 2015) (Paper 20). We granted that
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`petition and instituted an inter partes review of claim 1 as unpatentable
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`under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS and claims
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`11, 12, 14, 16, 19, 22, 23, 27, 30, and 31 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over WINS, NetBIOS, and Pinard. Id. at 23.
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`Accordingly, we incorporate our previous analysis, including our
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`claim interpretation analysis (see id. at 9–14) and our analysis regarding this
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`asserted ground of unpatentability (see id. at 14–23), from IPR2015-00209,
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`and we determine that Petitioner has demonstrated a reasonable likelihood
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`that it would prevail in establishing the unpatentability of claims 1, 11, 12,
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`14, 16, 19, 22, 23, 27, 30, and 31 of the ’704 patent in this Petition for the
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`same reasons discussed in our Decision instituting inter partes review in
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`IPR2015-00209.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition establishes that there is a reasonable likelihood that
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`Petitioner would prevail in establishing unpatentability of claims 1, 11, 12,
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`14, 16, 19, 22, 23, 27, 30, and 31 of the ’704 patent.
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`5
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`IPR2015-01406
`Patent 6,108,704 C1
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`We have not made a final determination on the patentability of any
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`challenged claims.
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`IV. ORDER
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`Accordingly, it is
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review
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`hereby is instituted as to the following proposed grounds:
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`1.
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`2.
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`Obviousness of claim 1 over WINS and NetBIOS; and
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`Obviousness of claims 11, 12, 14, 16, 19, 22, 23, 27, 30,
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`and 31 over WINS, NetBIOS, and Pinard;
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`FURTHER ORDERED that the trial is limited to the ground
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`identified above and no other grounds are authorized; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`commences on the entry date of this Decision.
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`6
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`IPR2015-01406
`Patent 6,108,704 C1
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`For PETITIONER:
`
`Rajeev Gupta
`Darren M. Jiron
`Finnegan, LLP
`raj.gupta@finnegan.com
`darren.jiron@finnegan.com
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`
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`For PATENT OWNER:
`
`William Meunier
`Michael Renaud
`MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
`WAMeunier@mintz.com
`mtrenaud@mintz.com
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`7