In a nonprecedential decision, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board in inter partes review proceedings which upheld the patentability of claims due to construction of the claim term "is connected to the computer nework".  Namely, Samsung Electronics as well as a number of other companies (Cisco Systems, Avaya, LG Electronics, Toshiba Corp., VIZIO, Hulu, and Verizon) appealed from final written decisions of the Patent Trial and Appeal Board in inter partes review proceedings of U.S. Patent Nos. 6,108,704 ('704 patent); 6,009,469 ('469 patent); and 6,131,121 ('121 patent).  In its final written decisions, the Board upheld the validity of all instituted claims, and the Federal Circuit affirmed the Board's decision.

The '704 Patent

The '704 patent, entitled "Point-to-Point Internet Protocol," generally relates to establishing a point-to-point communication link.  The '469 patent and the '121 patent are continuations-in-part of the '704 patent.  The specifications for the three challenged patents are largely identical.  The '469 patent, entitled "Graphic User Interface for Internet Telephony Application," and the '121 patent, entitled "Point-to-Point Computer Network Communication Utility Utilizing Dynamically Assigned Network Protocol Addresses," both relate to facilitating audio communications over computer networks.  Each patent explains that a first processing unit automatically transmits its associated e-mail address and IP address to a connection server.  The connection server stores the addresses in a database and, in so doing, establishes the first processing unit as an active on-line party available for communication.  The first processing unit sends a query to the connection server, which searches the database to determine whether a second processing unit (e.g., callee) is active and on-line.  If the callee is active and online, the connection server sends the IP address of the callee from the database to the first processing unit, i.e., performs a point-to-point Internet protocol communication.  The first processing unit then directly establishes the point-to-point Internet communication with the callee using the retrieved IP address.  Claim 1 of the '704 patent, which is representative of the claims at issue in this appeal, recites:

1.  A computer program product for use with a computer system, the computer system executing a first process and operatively connectable to a second process and a server over a computer network, the computer program product comprising:
    a computer usable medium having program code embodied in the medium, the program code comprising:
        program code for transmitting to the server a network protocol address received by the first process following connection to the computer network;
        program code for transmitting, to the server, a query as to whether the second process is connected to the computer network;
        program code for receiving a network protocol address of the second process from the server, when the second process is connected to the computer network; and
        program code, responsive to the network protocol address of the second process, for establishing a point-to-point communication link between the first process and the second process over the computer network.

First Inter Partes Review

In an earlier-filed petition for inter partes review, another petitioner, Sipnet EU S.R.O., challenged claims of the '704 patent over the same prior art references that were at issue in this appeal.  In the Sipnet IPR, the Board concluded that claim 1 of the '704 patent, among others, was unpatentable as anticipated by each of the prior art references.  Straight Path appealed that decision on the grounds that the Sipnet Board misconstrued the claim term "is connected to the computer network" to mean "active and on-line at registration."  Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1360 (Fed. Cir. 2015).  The Federal Circuit rejected the Board's claim construction and construed "is connected to the computer network" to mean "is connected to the computer network at the time that the query is transmitted to the server."

In construing the disputed claim limitation, the Federal Circuit first looked to the plain meaning of the claim language and concluded that the present tense "is" in "is connected to the computer network" plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.  The query does not seek to determine whether the device was connected or whether it is still registered as being connected even if that registration information is no longer accurate.  Thus, the Federal Circuit concluded that the claim language is not satisfied by a query that asks only for registration information, regardless of its current accuracy.

The Federal Circuit concluded that the specification does not provide a basis for adopting a construction that contradicts the plain meaning of the claim language.

Second Inter Partes Review

Returning to the present case, Samsung et. al. requested inter partes review of claims of the '704 patent, as well as claims of the '469 patent and the '121 patent, and challenged the claims at issue under 35 U.S.C. § 103(a) over a combination of references.  The two references at issue are the Microsoft Windows NT 3.5, TCP/IP User Guide (1994) ("WINS") and The Open Group, Technical Standard, Protocols For X/Open PC Interworking: SMB, Version 2.0 (1992) ("NetBIOS").

The Board found that WINS and NetBIOS both describe name server technology.  In particular, NetBIOS is a software interface that allows applications on different computers to communicate within a computer network, such as a local area network or the Internet.  The NetBIOS name service stores registered names in a database, and a name query transaction can be initiated by an end-node in an attempt to obtain the IP address associated with a NetBIOS name.  If the NetBIOS Name Server has information regarding a queried node, the NetBIOS Name Server transmits a positive response.  If the NetBIOS Name Server does not have information regarding a queried node, the NetBIOS Name Server transmits a negative response.  Once the IP addresses have been found for a target name, a NetBIOS session service begins.  The NetBIOS session service involves directed (point-to-point) communications.

WINS is an implementation of NetBIOS.  When a computer's name is registered with the WINS server, the server accepts the entry with a timestamp, an incremental unique version number, and other information.  Once a computer is registered with the WINS server as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly, and (2) requiring a renewal time period in which a computer must reregister.

In its final decision, the Board adopted the Federal Circuit's prior claim construction of the phrase "is connected to the computer network" and construed it to mean "is connected to the computer network at the time that the query is transmitted to the server."  The Board determined that neither the WINS reference nor the NetBIOS reference discloses the claimed "is connected to the computer network" limitation.  Accordingly, the Board concluded that Appellants failed to show by a preponderance of the evidence that any of the instituted claims reciting the limitation "connected to the network" (or the counterpart claim phrases) are unpatentable.

Samsung Appeal

On appeal, Samsung argued that the Board's application of the prior claim construction was impermissible as a matter of law because the Board added a limitation not found in the claim when it purportedly required that the prior art references demonstrate "perfect accuracy" when querying whether a process is connected to the computer network.

In particular, Samsung contended that the Board found that the prior art did not satisfy the disputed limitation only because of a possible circumstance in which the WINS database may no longer be accurate, and in which the name server may be incorrect.

But Straight Path argued that not only is the prior art not designed to keep track of current online status, it is not designed to check online status when responding to a query for a user's IP address.

The Federal Circuit agreed with Straight Path and found that the Board did not import an additional "perfect accuracy" limitation.  The Federal Circuit found that neither reference tracks a user's online status.  The Board determined that neither WINS nor NetBIOS will determine whether the second process is connected to the computer network at the time the query is transmitted to the server, i.e., whether a user is on-line at the relevant time.

This conclusion was considered to be supported by substantial evidence.  The Board determined that the references disclose that the name servers have information that a process "was" connected to the computer network.  But this does not meet the claim limitation.  WINS and NetBIOS both disclose querying a name server for the registered address of the callee computer.  This is not sufficient though.  The Federal Circuit noted that a query that asks only for registration information, regardless of its current accuracy, will not satisfy the claim limitation.

The outcome here is somewhat surprising.  The prior art appears to be very close, and one would imagine that during prosecution, such a rejection under 35 U.S.C. § 103 would most certainly be upheld by a patent examiner.  Here, the subtle difference of when the status check is performed was enough to distinguish over the prior art, however.

Samsung Electronics Co. v. Straight Path IP Group, Inc. (Fed. Cir. 2017)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges O'Malley and Wallach
Opinion by Chief Judge Prost