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Inter Partes Review of U.S. Pat. 6,009,469

Docket IPR2014-01367, Patent Trial and Appeal Board (Aug. 22, 2014)
Bart Gerstenblith, Kalyan Deshpande, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Samsung Electronics Co., Ltd.
Patent Owner Straight Path IP Group, Inc.
Assignee STRAIGHT PATH COMMUNICATIONS INC.
...
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Vonage Holdings Corporation, et al. v. Straight Path IP Group, Inc.

Docket IPR2014-01225, Patent Trial and Appeal Board (Aug. 1, 2014)
Bart Gerstenblith, Kalyan Deshpande, Thomas Giannetti, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Vonage Holdings Corporation, et al.
Patent Owner Straight Path IP Group, Inc.
Assignee STRAIGHT PATH COMMUNICATIONS INC.
...
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46 Order: Order Reconsideration of Dependent Claim 10 of the Final Decision

Document IPR2014-01367, No. 46 Order - Order Reconsideration of Dependent Claim 10 of the Final Decision (P.T.A.B. Apr. 29, 2016)
After institution of inter partes review, Cisco Systems, Inc. (“Cisco”) and AVAYA, Inc. (“AVAYA”) filed a Petition and Motion to Join the IPR2014-01367 proceeding.
We granted this motion and joined Samsung, Cisco, and AVAYA (collectively, “Petitioner”) to this inter partes review.
We also determined that these limitations are construed to mean “is connected to the computer network at the time the query is transmitted to the server.” Id. at 12.
Accordingly, we also determine that Microsoft Manual and NetBIOS fail to disclose the limitations of claim 10 for the same reasons discussed in our Final Decision.
We are not persuaded that Petitioner has demonstrated by a preponderance of the evidence that claim 10 of the ʼ469 patent is unpatentable.
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45 Final Decision: Final Written Decision

Document IPR2014-01367, No. 45 Final Decision - Final Written Decision (P.T.A.B. Mar. 4, 2016)
The ’469 patent is titled “Graphic User Interface for Internet Telephony Application” and generally relates to facilitating audio communications over computer networks.
11 Petitioner argues that the relevant specifications do not include an embodiment that “‘guarantees’ or ‘ensures’ the availability of the second process at any given point in time” and the file histories of the challenged patents “expressly reject[] the notion that the claims contain any guarantee of perfect accuracy.” Addʼl Br.
Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68.
However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server.
However, as discussed above in our claim construction, “process” includes a “processing unit” that is running a program (operating system) or application, and we further note that the ʼ469 patent specification interchangeably uses the terms “process” and “processing unit.” See Section I.E.2.
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41 Notice: Record of Oral Hearing

Document IPR2014-01367, No. 41 Notice - Record of Oral Hearing (P.T.A.B. Jan. 19, 2016)
JUDGE WARD: Patent Owner does set forth at page 21 of their response a proposed construction of the claim phrase "is connected to the computer network", correct?
I asked Petitioner about a specific claim limitation, this one, program code for receiving a network protocol address of the second process from the server.
But again, we are under the District Court standard right now which is you -- the claim term is supposed to get its ordinary meaning -- JUDGE DESHPANDE: But the spec also says the callee has an e-mail address.
MR. MEUNIER: Are you saying that in the specification -- I'm sorry -- JUDGE DESHPANDE: Does it contemplate, is that scenario possible that a query is going to come in for a second callee and the information returned by the connection server is not true?
JUDGE WARD: Counsel, do you agree with the Petitioner's position that no system can give you an accurate answer to the query in claim 1 every single time?
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38 Notice: Order Authorization to File Additional Briefing 37 CFR 425

Document IPR2014-01367, No. 38 Notice - Order Authorization to File Additional Briefing 37 CFR 425 (P.T.A.B. Jan. 5, 2016)
Patent Owner opposes Petitioner’s request to file additional briefing, asserting that arguments regarding the claim construction of “is connected” were advocated throughout these proceedings and have already been addressed fully.
Patent Owner requests that if additional briefing is authorized, citations should be provided to where in the record these arguments have been originally raised.
We grant Petitioner’s request to file additional briefing in order to assist the Board in determining the impact of the Federal Circuit’s decision on these proceedings.
We further require Petitioner to provide citations in this additional briefing to those portions of the previously existing record where the argument or evidence was originally introduced.
We also require Patent Owner to provide citations in the reply to those portions of the previously existing record where the arguments or evidence were originally introduced.
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33 Order: Order Trial Hearing 37 CFR 4270

Document IPR2014-01367, No. 33 Order - Order Trial Hearing 37 CFR 4270 (P.T.A.B. Nov. 5, 2015)
Patent Owner will respond to Petitioner’s initial presentation, having available to it the entirety of its allotted argument time.
The oral argument will be open to the public for in-person attendance, on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia 22314.
The parties must initiate a conference call with the Board by two business days prior to the hearing to resolve any dispute over the propriety of each party’s demonstrative exhibits.
Any dispute over the propriety of demonstrative exhibits that is not timely presented two business days prior to the hearing will be considered waived.
The parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
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23 Order: Decision Motion for Joinder 37 CFR 42122b

Document IPR2014-01367, No. 23 Order - Decision Motion for Joinder 37 CFR 42122b (P.T.A.B. Jun. 5, 2015)
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”).
With the Petition, Petitioner filed a Motion for Joinder (Paper 4, “Mot.”), seeking to join this case with Samsung Elecs.
During the conference call, Patent Owner indicated that all of the parties intended to file a stipulated proposed order defining the parameters of joinder.
In its Motion for Joinder, Petitioner contends that joinder is appropriate because “it is the most expedient way to secure the just, speedy, and inexpensive resolution of the related proceedings” because (1) Petitioner represents that IPR2015-01007 is identical to IPR2014-01367 in all substantive aspects, including identical grounds, analysis, exhibits, and relies upon the same expert Declaration; (2) Petitioner agrees to (a) incorporate its filings with Samsung, (b) not advance any separate arguments from those advanced by Samsung, and (c) to consolidated discovery; (3) joinder will not have any impact on the IPR2014-01367 schedule; and (4) there will be no prejudice to Patent Owner.
Regarding procedural matters, Petitioner argues that joinder would not require any change to the trial schedule in IPR2014-01367.
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