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LG Electronics, Inc. v. Straight Path IP Group, Inc.

Docket IPR2015-01015, Patent Trial and Appeal Board (Apr. 6, 2015)
Bart Gerstenblith, Kalyan Deshpande, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner LG Electronics, Inc.
Patent Owner Straight Path IP Group, Inc.
Assignee STRAIGHT PATH COMMUNICATIONS INC.
...
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LG Electronics, Inc. v. Straight Path IP Group, Inc.

Docket IPR2015-00198, Patent Trial and Appeal Board (Oct. 31, 2014)

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57 Final Decision: Final Written Decision

Document IPR2015-00198, No. 57 Final Decision - Final Written Decision (P.T.A.B. May. 9, 2016)
Subsequent to Patent Owner’s Response and Petitioner’s Reply, the United States Court of Appeals for the Federal Circuit issued its decision in Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (“Straight Path”).
The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language ... to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id.
Petitioner specifically argues that the Board has rejected similar arguments as those raised by Patent Owner and held that § 315(b) only covers civil actions brought in federal district court.
WINS 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.
Petitioner further argues that Pinard discloses a telephone application software program for use with a personal computer and a server, and provides a human machine interface (HMI).
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56 Notice: Record of Oral Hearing

Document IPR2015-00198, No. 56 Notice - Record of Oral Hearing (P.T.A.B. Apr. 18, 2016)
MR. RAMANI: And to explain how we're intending to present argument today, I'm going to provide some introductory remarks and then address the import of the Federal Circuit's decision in Sipnet to the proceedings before this Panel.
But what they are focusing on now is what we would describe as edge corner cases that don't disrupt or change the fundamental fact that WINS and NetBIOS in tandem with Pinard render the instituted claims obvious.
JUDGE WARD: What about the earlier disclosure just above that in column 5, of a timestamping methodology for ensuring database accuracy, would you also include that as a relevant embodiment that satisfies the Federal Circuit's claim construction?
So back to paragraph 36: WINS and NetBIOS also disclose a mechanism for determining whether a process is online or connected to the computer network pursuant to Dr. Stubblebine's -- that's Patent Owner's expert -- construction.
MR. RAMANI: To this point that was put before you repeatedly -- and I know I started here and took a little bit of a detour -- about how any name-to- IP address mapping registered with the WINS server can be provided reliably as a response to a name query.
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51 Notice: Order Trial Hearing 37 CFR 4270

Document IPR2015-00198, No. 51 Notice - Order Trial Hearing 37 CFR 4270 (P.T.A.B. Jan. 14, 2016)

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46 Notice: Order Authorization to File Additional Briefing 37 CFR 425

Document IPR2015-00198, No. 46 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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40 Notice: Decision Motion for Joinder

Document IPR2015-00198, No. 40 Notice - Decision Motion for Joinder (P.T.A.B. Nov. 10, 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”).
Patent 6,009,469 C1 (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v Straight Path IP Grp., Inc., Inc., IPR2015-00198, filed by LG Electronics, Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”).
Petitioner filed its Petition and Motion for Joinder on June 15, 2015, within one month after the institution date of IPR2015-00198.
In particular, Petitioner (1) represents that IPR2015- 01400 is identical to IPR2015-00198 in all substantive aspects, including identical grounds, analysis, exhibits, and relies upon the same expert Declaration; (2) agrees to (a) incorporate its filings with LG, (b) not advance any arguments separate from those advanced by LG, and (c) consolidated discovery; (3) represents that joinder will not have any impact on the IPR2015-00198 schedule; and (4) asserts that 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 IPR2015-00198.
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11 Notice: Conduct of the Proceeding

Document IPR2015-01015, No. 11 Notice - Conduct of the Proceeding (P.T.A.B. Aug. 20, 2015)
LG ELECTRONICS, INC., TOSHIBA CORPORATION, and VIZIO, INC., Petitioner,
With each Petition, Petitioner filed a Motion for Joinder (Paper 3, “Mot.”), seeking to join these cases with Samsung Elects.
Petitioner and Patent Owner filed a Joint Motion for Entry of Joint Stipulated Order defining the parameters of joinder.
Petitioner submits that granting its Motion to Withdraw the Motion for Joinder will conserve resources for Petitioner, Patent Owner, and the Board.
The Board’s rules for AIA proceedings “shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012).
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