PTAB

IPR2013-00246

SipNet Eu SRO v. Straight Path IP Group Inc

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: POINT-TO-POINT INTERNET PROTOCOL
  • Brief Description: The ’704 patent describes a system for enabling point-to-point communication over a network like the Internet. The system involves processes registering their dynamically assigned network protocol addresses with a server, which allows other processes to query the server to determine a target process's online status and current address to establish a connection.

3. Grounds for Unpatentability

Ground 1: Obviousness over NetBIOS and WINS, optionally in view of Messenger

  • Prior Art Relied Upon: NetBIOS (a technical standard), WINS (a user guide for Windows NT 3.5), and Messenger (software included with Windows NT).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of NetBIOS, WINS, and the Messenger application taught every limitation of the challenged claims. NetBIOS disclosed the fundamental system of a process registering a name with a name server, querying for another process’s address, and establishing point-to-point communication. The Patent Owner had previously distinguished NetBIOS by arguing it did not teach dynamic addressing. However, Petitioner asserted that WINS (Windows Internet Name Service) was explicitly designed as a NetBIOS name server to solve this exact problem, providing dynamic registration and querying in a DHCP environment. Messenger was presented as a concrete example of an application (a "process") that used WINS and NetBIOS to detect when it was online, register its presence, and send point-to-point messages to other users.
    • Motivation to Combine: A POSITA would combine these references because WINS was explicitly created to add dynamic addressing capabilities to NetBIOS systems, and Messenger was an application designed to run on a Windows NT operating system that utilized both NetBIOS and WINS. The combination represented the natural and intended evolution of the technology to function in modern, dynamic networks.
    • Expectation of Success: The combination was not only expected to succeed but had already been successfully implemented by Microsoft in its Windows NT operating system, as evidenced by the WINS and Messenger prior art.

Ground 2: Obviousness over Dynamic DNS in view of an enabling application

  • Prior Art Relied Upon: DNS1 (IETF Draft, July 1994), DNS2 (IETF Foils, July 1994), DNS Orig. (RFC1034), and one of VocalTec (a 1995 article) or Taligent ’278 (Patent 5,566,278).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that the Dynamic DNS references (DNS1, DNS2) teach the core invention but for the standard Internet Domain Name System rather than NetBIOS. DNS1 explicitly stated it "addresses the problem of registering a host’s dynamically acquired address in DNS automatically." These references disclosed a client system connecting to a DNS server to update its records, linking an identifier (domain name) with its current, dynamically assigned IP address. The server could then be queried to retrieve that address. References like VocalTec (for voice calls) and Taligent (for network printing) were cited as examples of applications that would use such a dynamic DNS system to locate other devices or services on the network for point-to-point communication.
    • Motivation to Combine: A POSITA would be motivated to use the teachings of the Dynamic DNS references in an application like VocalTec because that was the entire purpose of Dynamic DNS—to enable applications and services to find and communicate with each other in an environment with non-static IP addresses.
    • Expectation of Success: There was a high expectation of success, as the Dynamic DNS drafts were created by the IETF, the primary standards body for the Internet, to solve a well-known problem. The functionality was a straightforward extension of the existing, highly reliable DNS protocol.

  • Additional Grounds: Petitioner asserted numerous other grounds, including that claims were anticipated under 35 U.S.C. §102 by Messenger, WINS, NetBIOS, and DEC ’652 individually, arguing each reference taught every element of the claimed invention.

4. Key Claim Construction Positions

  • Petitioner argued for a straightforward interpretation of key claim terms, asserting that the Patent Owner had previously attempted to create complexity where none existed.
  • "Online" / "Connected to the computer network": Petitioner argued this phrase should be construed to mean that a process has successfully registered its network address with the name server. According to the petition, the ’704 patent discloses no other method for determining online status. This construction means that any prior art showing dynamic registration inherently shows the determination of online status, as the presence of a valid, unexpired registration in the server's database signifies the process is "online."

5. Key Technical Contentions (Beyond Claim Construction)

  • Protocol vs. Application: Petitioner preemptively refuted the Patent Owner’s anticipated argument that prior art like NetBIOS and Dynamic DNS are merely protocols, not the claimed "computer program product" or "process." Petitioner contended that these protocols are explicitly designed to be used by applications and their documentation describes how applications interact with them, thus enabling the claimed invention. Furthermore, the Messenger reference was cited as a concrete example of such an application.
  • Registering a Computer vs. a Process: Petitioner also addressed the argument that the prior art only registers a computer (host), not a specific process running on it. Petitioner argued that the ’704 patent itself does not teach anything more than registering the host's network address. Moreover, it asserted that NetBIOS and WINS were capable of registering unique names corresponding to specific services or applications (like the "Messenger service"), not just the computer's hostname.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-7 and 32-42 of the ’704 patent as unpatentable.