Samsung Electronics Co., Ltd. v. Straight Path Ip Group, Inc.
696 F. App'x 1008
| Fed. Cir. | 2017Background
- Three related patents (ʼ704, ʼ469, ʼ121) claim a system where a connection server returns a callee's IP when the callee "is connected to the computer network," enabling point-to-point communications.
- Appellants (Samsung, Cisco, LG, Toshiba, VIZIO, Verizon, Hulu, Avaya) petitioned IPRs challenging multiple claims as obvious over WINS (Windows Internet Name Service) and NetBIOS references that implement name-server/address lookup functionality.
- This Court previously construed "is connected to the computer network" in Sipnet to mean "is connected to the computer network at the time that the query is transmitted to the server," rejecting a reading that relies only on prior registration status.
- The PTAB applied that construction, found WINS and NetBIOS disclose only stored/registered name-to-address information (which may be stale), and concluded the references do not meet the claimed limitation requiring real-time determination of online status.
- The Board therefore sustained the challenged claims; appellants appealed arguing the Board improperly added a "perfect accuracy" requirement and ignored prior-art teachings that maintain database accuracy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether WINS/NetBIOS anticipate or render obvious claims requiring that the callee "is connected to the computer network" at the time the query is sent | Appellants: prior art's name-server mechanisms that maintain "active and on-line" registration satisfy the limitation; Board improperly required "perfect accuracy" | Straight Path/Board: prior art returns registration data that may be stale and does not determine online status at query time; thus it does not meet the claim | Affirmed: substantial evidence supports Board's finding that WINS/NetBIOS do not determine online status at query time and thus do not teach the limitation |
| Whether the Board imported an extra "perfect accuracy" limitation when applying this Court's Sipnet construction | Appellants: Board effectively required perfect accuracy to satisfy the claim and thus added an improper limitation | Straight Path: Board applied Sipnet correctly; the issue is absence of any mechanism to check live online status, not perfection | Affirmed: Court concludes Board did not add a perfection requirement and correctly followed Sipnet |
Key Cases Cited
- Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356 (Fed. Cir. 2015) (construed "is connected" to require connection at time query is sent)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (ultimate obviousness is a legal determination with factual underpinnings)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (review standards: Board's factual findings for substantial evidence, legal determinations de novo)