PTAB

IPR2013-00296

Level 3 Communications LLC v. AIP Acquisition LLC

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1. Case Identification

2. Patent Overview

  • Title: Efficient Communication Through Networks
  • Brief Description: The ’879 patent describes methods for carrying voice calls over data networks. The core technology involves receiving a voice communication from a public switched telephone network (PSTN), converting it into an internet protocol format, transmitting it over a data network, and converting it back into a telecommunication protocol format for delivery to a receiving party on another PSTN.

3. Grounds for Unpatentability

Ground 1: Anticipation over Gordon - Claims 1-9 and 11-15 are anticipated by Gordon under 35 U.S.C. §102

  • Prior Art Relied Upon: Gordon (Patent 5,608,786).
  • Core Argument:
    • Prior Art Mapping: Petitioner argued that Gordon discloses every element of the challenged claims. Gordon describes a "unified messaging system" that connects a PSTN with a high-speed data communication network, explicitly mentioning the Internet. The system receives telephone calls, digitizes them, and transmits them over the data network to a destination node, which then delivers the message via the local PSTN. Petitioner asserted this directly maps to the claimed method of receiving a transmission in a first format (PSTN protocol), performing a first conversion to a second format (an internet protocol used by Gordon's "Global Internet System"), sending it over a data network, and performing a second conversion back to a telecommunication protocol for delivery. Gordon also discloses route selection based on user preference (e.g., cost savings) and storing subscriber information.

Ground 2: Obviousness over Merritt et al. - Claims 1-8, 12, 14, and 15 are obvious over the combination of Merritt, Casner, O'Leary, and Weinstein

  • Prior Art Relied Upon: Merritt (a 1983 technical report), Casner (a 1983 technical report), O'Leary (a 1981 conference proceeding), and Weinstein (a 1983 IEEE journal article).
  • Core Argument:
    • Prior Art Mapping: Petitioner contended that this collection of prior art, describing early research in voice-over-packet networks, teaches all limitations of the claims. Merritt discloses a Switched Telephone Network Interface (STNI) card to "allow interconnection between the packet network and the commercial telephone system." The STNI card receives calls in a telephone format, performs analog/digital conversions, and interfaces with a Packet Voice Terminal (PVT) that handles the "packet network protocol." O'Leary, cited by Merritt for describing the PVT, explicitly discloses that PVT functions include the application and interpretation of "voice, internet, and local network protocols." The combination, therefore, teaches receiving a call from a PSTN, converting it to an internet protocol, sending it across a data network, and converting it back for delivery to a distant phone.
    • Motivation to Combine: A POSITA would combine these references as they all describe the same underlying research and systems from the same institution. Petitioner noted that the authors collaborated and cross-referenced each other's work, making it logical and obvious to consider them together for a complete understanding of the system.
    • Expectation of Success: The references document a functioning, tested system, providing a clear expectation of success in combining their teachings to achieve communication between a PSTN and a packet data network.

Ground 3: Obviousness over Kammerl and Iwami - Claims 1-7 and 15 are obvious over Kammerl in view of Iwami

  • Prior Art Relied Upon: Kammerl (Patent 5,051,983) and Iwami (Patent 5,604,737).

  • Core Argument:

    • Prior Art Mapping: Petitioner argued that Kammerl discloses a system for transmitting speech signals between a telephone switching network and a broadband packet-switching network using an interworking unit that performs "signal and procedure conversions." This meets the core steps of the claimed method. However, Kammerl's packet network uses the ATM method. Iwami was introduced to supply the explicit teaching of using a standard "internet protocol." Iwami discloses a voice communication system that uses TCP/IP and UDP/IP to transmit voice packets from a public telephone network across a LAN to a terminal.
    • Motivation to Combine: A POSITA would combine Kammerl with Iwami to improve Kammerl's system. Using a standard internet protocol like TCP/IP, as taught by Iwami, instead of Kammerl's more specific ATM protocol would have been an obvious modification to allow for internetworking between diverse networks, a well-known goal of internet protocols. This modification would predictably allow Kammerl's system to operate on networks other than ATM.
    • Expectation of Success: Applying a standard, well-understood protocol (TCP/IP) from Iwami to a known network gateway architecture (Kammerl) was a straightforward application of known principles to achieve the predictable result of network interoperability.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, primarily by adding Kobayashi (Patent 5,337,352) to the Gordon and Merritt combinations to teach explicit user-preference-based routing, and by adding Chau (Patent 5,187,710) to teach routing based on credit availability.

4. Key Claim Construction Positions

  • "internet protocol": Petitioner argued this term should be construed broadly as "a set of rules, procedures or conventions relating to format and timing of data that allows communications between networks." This construction is broader than just the specific "Internet Protocol" (TCP/IP). Petitioner contended this broader interpretation is supported by the patent's disclosure and prosecution history, where the patentee broadened the claim language from the parent application's more specific recitation. This construction is critical to applying prior art like O'Leary, which discloses "internet protocols" generally for packet voice.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’879 patent as unpatentable.