PTAB

IPR2014-01366

Samsung Electronics Co Ltd v. Straight Path IP Group Inc

Key Events

Petition

petition

Title: Internet Telephony Point-to-Point Protocol
Brief Description: The ’704 patent discloses a "look-up" protocol for establishing point-to-point communications over a network. The system addresses the problem of users having temporary or dynamically assigned IP addresses by using a central server that stores a database mapping user identifiers (e.g., email addresses) to their current IP addresses, allowing other users to query the server to initiate a direct connection.

Prior Art Relied Upon: Microsoft Manual (Windows NT Server 3.5 TCPIP.HLP) and NetBIOS (Technical Standard for X/Open PC Interworking: SMB, Version 2).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the Microsoft Manual’s Windows Internet Name Service (WINS) is a known implementation of NetBIOS that provides a database for registering and querying dynamic computer name-to-IP address mappings. This system, which uses DHCP for dynamic IP assignment and automatically updates the WINS database, allegedly teaches the core limitations of the independent claims: a client process registering its network address with a server, and a second process querying that server to retrieve the address for a direct connection.
- Motivation to Combine: A POSITA would combine these references because the Microsoft Manual explicitly states that its WINS protocol is based on and compatible with the protocols defined for the NetBIOS Name Server (NBNS), making them inherently interoperable.
- Expectation of Success: The Microsoft Manual itself describes the successful implementation of DHCP within a WINS/NetBIOS system, establishing that the combination works for its intended purpose of name and IP address registration and resolution in a dynamic environment.

Prior Art Relied Upon: Microsoft Manual, NetBIOS, and Palmer (Patent 5,375,068).
Core Argument for this Ground:
- Prior Art Mapping: This ground added the teachings of Palmer, which discloses a videoconferencing application for Windows NT with a detailed graphical user interface (GUI). Petitioner asserted that Palmer’s GUI, featuring elements like "connect" toggle buttons, "network host" fields, and "join" buttons for managing connections, directly maps to the limitations in the dependent claims that require specific user interface elements for call establishment, conferencing, and temporary disablement.
- Motivation to Combine: A POSITA would be motivated to implement Palmer's user-friendly videoconferencing application on the standard Windows NT networking infrastructure described in the Microsoft Manual. This would provide an intuitive, graphical front-end for the underlying WINS/NetBIOS network connection functions, a common design goal.

Prior Art Relied Upon: Microsoft Manual, NetBIOS, Palmer, and Pinard (Patent 5,533,110).
Core Argument for this Ground:
- Prior Art Mapping: This ground introduced Pinard as an alternative for satisfying limitations related to user manipulation of GUI elements. Pinard discloses a telephony GUI that uses well-known drag-and-drop functionality to establish calls, create conferences, and place calls on hold. Petitioner contended that if Palmer's button-clicking was deemed insufficient to meet the claims' "associating" or "manipulating" limitations, Pinard's drag-and-drop interface would supply the missing element.
- Motivation to Combine: A POSITA would find it obvious to substitute one known GUI interaction method (Pinard's drag-and-drop) for another (Palmer's button-clicking). This represents a simple substitution of known elements to obtain the predictable result of a simpler and more intuitive user experience for call control.
Additional Grounds: Petitioner asserted an additional obviousness challenge based on the primary combination further in view of Pitkin (Patent 5,341,477). This ground argued that Pitkin’s teaching of a "broker" that polls servers to monitor their dynamic status would render the claims obvious even under a narrow construction of "on-line status" that requires active status verification beyond mere registration.

point-to-point communication link: Petitioner proposed this term be construed as "a connection between two processes over a computer network that is not intermediated by a server." This was based on the specification's emphasis that a direct connection is established after the server provides the IP address.
network protocol address: The proposed construction was "an address assigned according to a network protocol layer (e.g., an IP address)." Petitioner argued this was necessary to distinguish a routable network address from a user-friendly name (e.g., an email address), which is the central function of the patent's look-up protocol.
connected to the computer network / on-line status: Petitioner argued these terms should be construed to mean "on-line, e.g., registered with the server." This construction was based on the patent's disclosure where a user is described as "active and on-line" upon registering their IP address with the connection server.

Petitioner’s arguments centered on the technical position that, within the context of the ’704 patent, a process is considered "on-line" or "connected" when its network address is registered with the central server, thereby making it discoverable. This interpretation countered the potential argument that "on-line" requires active and continuous verification that a process is running, a more stringent condition not explicitly required by the patent’s primary "look-up" protocol.

Petitioner requests institution of an inter partes review and cancellation of claims 1, 11-12, 14, 16, 22-23, 27, and 30-31 of the ’704 patent as unpatentable.