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

Docket IPR2015-01400, Patent Trial and Appeal Board (June 15, 2015)
Bart Gerstenblith, Kalyan Deshpande, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Cisco Systems, Inc.
Patent Owner Straight Path IP Group, Inc.
Petitioner Vizio
...
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LG Electronics, Inc. v. Straight Path IP Group, Inc.

Docket IPR2015-00198, Patent Trial and Appeal Board (Oct. 31, 2014)
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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12 Final Decision: Final Written Decision

Document IPR2015-01400, No. 12 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 ’469 patent is titled “Graphic User Interface for Internet Telephony Application” and generally relates to facilitating audio communications over computer networks.
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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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)
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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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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10 Institution Decision: Decision Instition of Inter Partes Review

Document IPR2015-01400, No. 10 Institution Decision - Decision Instition of Inter Partes Review (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”).
With the Petition, Petitioner filed a Motion for Joinder (Paper 3, “Mot.”), seeking to join this case with LG Elecs., Inc. v. Straight
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless ... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and associated evidence, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of all the challenged claims.
We determined that the petitioner in IPR2015-00198, LG Electronics, Inc., Toshiba Corp., VIZIO, Inc., and Hulu, LLC (collectively, “LG”), demonstrated a reasonable likelihood of prevailing in establishing the unpatentability of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 of the ’469 patent.
We granted that petition and instituted an inter partes review of claims 1–3, 5, 6, 9, 10, 14, 17, and 18 as unpatentable under 35 U.S.C. § 103(a) as obvious over WINS and NetBIOS.
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