DCT
1:18-cv-00309
Meetrix IP LLC v. Cisco Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Meetrix IP, LLC (Texas)
- Defendant: Cisco Systems, Inc. (California)
- Plaintiff’s Counsel: DiNovo Price LLP
- Case Identification: Meetrix IP, LLC v. Cisco Systems, Inc., 1:18-cv-00309, W.D. Tex., 07/19/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains an established place of business in the district and has committed acts of infringement there, including selling and offering to sell the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s WebEx video conferencing products and services infringe four patents related to technology for integrating traditional telephone (PSTN) and internet-based (IP) participants into a single audio-video conference.
- Technical Context: The technology addresses the convergence of legacy public switched telephone networks with modern IP-based networks, a critical function for enterprise collaboration platforms seeking to provide seamless meeting access for all users, regardless of their connection method.
- Key Procedural History: The patents-in-suit share a common ancestry and priority claim. The complaint alleges that Defendant had pre-suit knowledge of the patented technology due to a Meetrix parent patent application being cited during the prosecution of Defendant's own patents. Post-filing Inter Partes Review (IPR) proceedings were initiated against the patents-in-suit, resulting in the cancellation of numerous claims, including the asserted claim 1 of the '332, '525, and '997 patents.
Case Timeline
| Date | Event |
|---|---|
| 2003-03-10 | Priority Date for ’332, ’525, ’997, and '612 Patents |
| 2009-06-25 | Earliest Alleged Knowledge Date (Citation in Cisco Patent Prosecution) |
| 2012-12-25 | U.S. Patent No. 8,339,997 Issued |
| 2015-07-28 | U.S. Patent No. 9,094,525 Issued |
| 2016-02-02 | U.S. Patent No. 9,253,332 Issued |
| 2017-12-12 | U.S. Patent No. 9,843,612 Issued |
| 2018-04-20 | Original Complaint Filed |
| 2018-07-19 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,253,332 - "Voice Conference Call Using PSTN and Internet Networks"
- Patent Identification: U.S. Patent No. 9,253,332, titled "Voice Conference Call Using PSTN and Internet Networks," issued on February 2, 2016. (Compl. ¶2).
The Invention Explained
- Problem Addressed: The patent family addresses the technical challenges of prior art hybrid conferencing systems, which often required expensive, dedicated hardware (e.g., H.323 bridges) and suffered from poor quality like latency and dropped audio when integrating internet and traditional telephone network users. (’997 Patent, col. 1:39-58).
- The Patented Solution: The invention describes a method for a multi-participant conference where audio streams from different networks are mixed and managed. Specifically, it details a process of receiving separate audio streams from a PSTN client, a moderator on an IP network, and a remote client on an IP network (via a VPN), and then performing distinct mixing operations to create tailored audio streams for transmission back to the PSTN and remote clients. (’332 Patent, Abstract; ’997 Patent, Fig. 6).
- Technical Importance: This client-centric mixing approach was designed to improve efficiency and reduce bandwidth consumption compared to systems reliant on centralized servers for all processing, thereby making hybrid conferencing more scalable and cost-effective. (’997 Patent, col. 10:49-61).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims. (Compl. ¶40).
- The essential elements of Claim 1 include:
- receiving first audio data from a Public Switched Telephone Network (PSTN) client;
- receiving second audio data from a moderator;
- receiving third audio data, video data, and collaboration data from a remote client through a Virtual Private Network (VPN) tunnel;
- mixing the PSTN audio and moderator audio into a first mixed audio data;
- transmitting the first mixed audio data to the remote client;
- mixing the moderator audio and remote client audio into a second mixed audio data; and
- transmitting the second mixed audio data to the PSTN client.
U.S. Patent No. 9,094,525 - "Audio-Video Multi-Participant Conference Systems Using PSTN and Internet Networks"
- Patent Identification: U.S. Patent No. 9,094,525, titled "Audio-Video Multi-Participant Conference Systems Using PSTN and Internet Networks," issued on July 28, 2015. (Compl. ¶3).
The Invention Explained
- Problem Addressed: As with its related patents, the ’525 Patent targets the high cost and complexity of integrating traditional telephone users into modern IP-based video conferences. (’525 Patent, col. 1:39-51).
- The Patented Solution: The patent claims a system, located at a participant's client computer, comprising specific components to manage hybrid audio streams. It describes a system with distinct "mixers" and "transport outputs" that combine audio from a PSTN client and a local moderator for remote IP participants, while separately mixing audio from the moderator and remote IP participants for the PSTN client. (’525 Patent, Abstract; Fig. 6).
- Technical Importance: The invention defines a client-side system architecture for performing the complex audio mixing required in a hybrid conference, which can reduce latency and infrastructure costs by processing data at the network edge rather than at a central bridge. (’525 Patent, col. 9:48-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert other claims. (Compl. ¶46).
- The essential elements of Claim 1 include:
- a first mixer that mixes a PSTN client audio stream with a moderator audio-video stream;
- a first transport output to transmit the resulting mixed stream to a remote client;
- a second mixer that mixes the moderator audio-video stream with the remote client's audio-video stream; and
- a second transport output to transmit this second mixed stream to the PSTN client.
U.S. Patent No. 8,339,997 - "Media Based-Collaboration Using Mixed-Mode PSTN and Internet Networks"
- Patent Identification: U.S. Patent No. 8,339,997, "Media Based-Collaboration Using Mixed-Mode PSTN and Internet Networks," issued December 25, 2012. (Compl. ¶4).
- Technology Synopsis: This patent discloses a method for adding a PSTN-based telephone user to an existing IP-based video conference. The method involves establishing secure virtual private networks between IP participants and using a VoIP gateway to call, authenticate, and connect the telephone user into the conference. (’997 Patent, Abstract).
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶21, ¶52).
- Accused Features: Plaintiff alleges that WebEx Meeting infringes by facilitating conferences where authenticated, dial-in telephone participants can communicate with online participants who are connected over a secure data network. (Compl. ¶21).
U.S. Patent No. 9,843,612 - "Voice Conference Call Using PSTN and Internet Networks"
- Patent Identification: U.S. Patent No. 9,843,612, "Voice Conference Call Using PSTN and Internet Networks," issued December 12, 2017. (Compl. ¶5).
- Technology Synopsis: This patent claims a method for establishing a secure multi-participant conference call that is initiated by a "dial-out" process. A local moderator on an IP network initiates a call to an external PSTN user, bringing them into an ongoing conference with other remote clients connected via a secure network. (’612 Patent, Abstract, Claim 1).
- Asserted Claims: Independent claim 1 is asserted. (Compl. ¶20, ¶58).
- Accused Features: Plaintiff alleges that WebEx Meeting's functionality to initiate a "dial-out" process to a PSTN client to establish a connection infringes the patent. (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Cisco's WebEx Meeting and all other substantially similar products and services." (Compl. ¶16).
Functionality and Market Context
- The complaint describes WebEx Meeting as a software-as-a-service (SaaS) product that provides multi-participant audio/video conferencing over the internet. (Compl. ¶16-17). The system is designed to allow participants to connect via disparate networks, including by phone over a PSTN connection or by computer over an IP connection, and to mix the audio from these sources. (Compl. ¶18).
- A key technical feature alleged is the ability to share "collaboration data" such as electronic presentations over a "secured private connection," which the complaint contends is implemented using technologies like SSL VPN. (Compl. ¶18, p. 8).
- The complaint includes a screenshot from a WebEx guide that explicitly highlights the accused functionality. This visual, titled "Work together," states as its first point: "Start your audio: VoIP and phone callers can talk together." (Compl. p. 5).
- A technical diagram from a Cisco datasheet is also provided as evidence. This visual, Figure 3, illustrates an "Audio Call Flow in Cisco WebEx Cloud Connect Audio" where PSTN participants connect to the "Cisco WebEx Collaboration Cloud" via a PSTN Gateway. (Compl. p. 6).
IV. Analysis of Infringement Allegations
9,253,332 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving first audio data from a Public Switched Telephone Network (PSTN) client; | WebEx Meetings receives audio data from a PSTN network when a participant dials in via phone. | ¶19 | col. 10:20-24 |
| receiving second audio data from a moderator; | WebEx Meetings receives audio data from a moderator, for example, through a VoIP call. | ¶19 | col. 10:29-32 |
| receiving third audio data, video data, and collaboration data from at least one remote client through a first Virtual Private Network (VPN) tunnel; | WebEx Meetings receives audio, video, and collaboration data (e.g., screen sharing) from a remote client via a VPN tunnel. | ¶19 | col. 9:14-20 |
| mixing the first audio data from the PSTN client with the second audio data from the moderator into a first mixed audio data; | WebEx Meetings mixes the audio from the PSTN participant and the moderator. | ¶19 | col. 10:49-55 |
| transmitting the first mixed audio data to the remote client through the first VPN tunnel; | The resulting audio mix is transmitted to the remote user. | ¶19 | col. 10:5-9 |
| mixing the second audio data from the moderator with the third audio data from the remote client into a second mixed audio data; and | WebEx Meetings mixes the audio data from the moderator and the remote client. | ¶19 | col. 10:5-9 |
| transmitting the second mixed audio data to the PSTN client. | The resulting audio mix is transmitted to the PSTN participant. | ¶19 | col. 10:30-36 |
- Identified Points of Contention:
- Scope Questions: Claim 1 requires receiving data from a remote client "through a first Virtual Private Network (VPN) tunnel." The complaint alleges WebEx uses technologies like "H.264 SSL VPN Client (SVC)" (Compl. p. 8). A potential dispute may arise over whether this implementation meets the technical definition of a "VPN tunnel" as construed from the patent's specification.
- Technical Questions: The asserted method claim recites steps performed by different actors (the WebEx system, the moderator, the remote client, the PSTN user). This raises the question of divided infringement. The analysis will depend on whether the facts support a finding that Cisco "directs or controls" its users' actions sufficiently to attribute all steps to Cisco for direct infringement, or alternatively, if the parties form a joint enterprise. (Compl. ¶42).
9,094,525 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first mixer that mixes a Public Switched Telephone Network (PSTN) client audio data stream with a moderator audio-video data stream into a first mixed data stream; | The WebEx Meeting platform mixes audio from a PSTN phone participant with audio from a moderator, enabling a remote user to hear both. | ¶18 | col. 9:1-8 |
| a first transport output that transmits the first mixed data stream to at least one remote client... | The WebEx system transmits the mixed audio stream (containing PSTN and moderator audio) to remote participants connected via the internet. | ¶18 | col. 9:8-13 |
| a second mixer that mixes the moderator audio-video data stream with the remote client audio-video data stream into a second mixed data stream; and | The WebEx platform mixes audio from the moderator with audio from remote web-conferencing participants. | ¶18 | col. 9:13-17 |
| a second transport output that transmits a mixed audio data stream... to the PSTN client. | The WebEx system transmits the resulting mixed audio (containing moderator and remote participant audio) to the PSTN participant, enabling the phone user to hear the other participants. | ¶18 | col. 9:17-20 |
- Identified Points of Contention:
- Scope Questions: The ’525 Patent claims a system with structural limitations like "a first mixer" and "a second mixer." A central issue for claim construction and infringement will be whether the distributed, cloud-based software architecture of WebEx can be said to contain these specific structural components.
- Technical Questions: The patent's specification and figures emphasize a decentralized architecture where mixing occurs on the local client's computer. (e.g., ’525 Patent, Fig. 6). However, the complaint's own evidence suggests a "Cisco WebEx Collaboration Cloud" plays a central role. (Compl. p. 6, Fig. 3). This creates a factual question as to where the accused mixing actually occurs and whether a cloud-based implementation falls within the scope of the claims.
V. Key Claim Terms for Construction
The Term: "moderator" (’332 Patent, Claim 1)
- Context and Importance: The claims distinguish among a "moderator," a "remote client," and a "PSTN client." The definition of "moderator" is critical because it dictates which user's actions and device can satisfy the specific limitations applied to the moderator, such as providing the "second audio data." Practitioners may focus on this term because its construction could narrow the set of infringing scenarios.
- Intrinsic Evidence for a Broader Interpretation: The specification refers to the moderator as the "call initiator or caller," which could support a construction that encompasses any user who starts the conference or initiates the connection to the PSTN user. (’997 Patent, col. 6:61-62).
- Intrinsic Evidence for a Narrower Interpretation: The patent figures consistently depict the "VoIP Moderator 401" as a distinct entity from other "Audio/Video Client" participants, and as the one operating the client computing device that facilitates the conference. (’997 Patent, Fig. 3). This may support a narrower definition requiring the moderator to be the user who controls the conference infrastructure.
The Term: "mixer" (’525 Patent, Claim 1)
- Context and Importance: As a system claim, the presence and location of "a first mixer" and "a second mixer" are required for a literal infringement finding. How this term is construed will be pivotal in determining whether a cloud-based software service can meet the structural requirements of the claim.
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "mixer," which may allow the term to be given its plain and ordinary meaning in the field of signal processing. This could potentially cover software modules performing mixing functions, regardless of whether they are located on a local client or a remote server.
- Intrinsic Evidence for a Narrower Interpretation: The detailed embodiment in Figure 6 of the patent family shows distinct "Mix" blocks (e.g., "Moderator VoIP Mixer 569," "Audio Mixer 534") located within the "Local Moderator Client" boundary. (’525 Patent, Fig. 6). This evidence may support a narrower construction requiring the mixing hardware or software to be resident on the end-user's client device, potentially placing a fully cloud-based mixing architecture outside the claim's scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Cisco provides instructions, user manuals, and marketing materials that actively encourage customers to use WebEx in an infringing manner, for example by highlighting the ability for phone and VoIP users to talk together. (Compl. ¶31, ¶33-34). The contributory infringement theory alleges that the functionality for bridging PSTN and IP users is a material component of the patented invention for which WebEx is especially adapted and has no substantial non-infringing use. (Compl. ¶43, ¶49).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge dating back to at least June 25, 2009, from instances where a parent application to the patents-in-suit was cited by the USPTO during the prosecution of Cisco's own patents. (Compl. ¶29, ¶63). Post-suit knowledge is based on the filing of the original complaint. (Compl. ¶30, ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be the impact of post-filing IPR proceedings. The provided patent certificates indicate that the asserted claim 1 of the '332, '525, and '997 patents has been cancelled. A primary question for the court will be one of procedural viability: which, if any, of the asserted claims remain valid and enforceable, a determination that could be dispositive for much of the lawsuit.
- A key technical question will be the locus of infringement. The case may turn on whether the accused WebEx systems perform the claimed mixing on the local client device, as emphasized in the patents' embodiments, or primarily within a centralized cloud architecture. This raises a fundamental question of whether there is a technical mismatch between the claimed client-side system and the accused server-side service.
- A central legal question will be one of attribution for divided infringement. As the asserted method claims involve steps performed by Cisco's servers, moderators, and end-users, the court will have to determine if the complaint pleads sufficient facts to establish that Cisco "directs or controls" the actions of its users to the degree required to attribute all claimed steps to Cisco for a finding of direct infringement.