PTAB

IPR2015-00307

Cisco Systems Inc v. AIP Acquisition LLC

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1. Case Identification

2. Patent Overview

  • Title: Efficient Communication Through Networks
  • Brief Description: The ’247 patent describes a method for routing telephone calls over a data network, such as the Internet. The system receives a voice transmission in a standard telecommunication format, converts it to an Internet Protocol (IP) format for transmission, and then converts it back at the destination.

3. Grounds for Unpatentability

Ground 1: Obviousness over Weinstein and RFC1190 - Claims 1-8, 12, 15-23, and 27-29 are obvious over Weinstein in view of RFC1190.

  • Prior Art Relied Upon: Weinstein (a 1983 IEEE journal article, “Experience with Speech Communication in Packet Networks”) and RFC1190 (a 1990 Request for Comments, “Experimental Internet Stream Protocol, Version 2 (ST-II)”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Weinstein taught all core elements of the claimed invention, describing a system for transmitting voice over the ARPANET (an early Internet component) using voice/data gateways. Weinstein’s system received voice calls from various networks (digital T1, analog telephone, and packet radio), converted the voice into packets using an Internet Stream Protocol (ST), transmitted them over a data network, and reconstituted the speech at the destination. While Weinstein described the ST protocol, RFC1190, an updated version, explicitly defined the protocol (“ST-II”) as an “internet protocol.” The combination, therefore, taught converting a voice call from a telecommunication format to an internet protocol format for transmission over a data network.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references as a matter of simple, predictable improvement. RFC1190 was created to be a revised and updated version of the ST protocol used in Weinstein's system. A POSITA would have been motivated to upgrade Weinstein’s system with the improved ST-II protocol from RFC1190 to gain its stated advantages, including easier implementation, enhanced robustness, and the ability to run over unmodified IP routers. This combination represented the application of a known technique (ST-II) to a known system (Weinstein) to yield predictable results.
    • Expectation of Success: A POSITA would have had a high expectation of success, as RFC1190 was a direct, documented improvement on the protocol used in the system described by Weinstein.

Ground 2: Obviousness over Weinstein, RFC1190, and Gurrie - Claims 9, 11, 13, 24, and 26 are obvious over the combination of Weinstein, RFC1190, and Gurrie.

  • Prior Art Relied Upon: Weinstein, RFC1190, and Gurrie (a 1986 book, “VOICE/DATA TELECOMMUNICATIONS SYSTEMS”).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Gurrie to the primary combination to address claims related to route selection based on user-defined criteria like cost or quality. Gurrie taught that private branch exchanges (PBXs) were commonly used to perform automatic route selection based on configurable criteria, such as selecting the most economical trunk line for a call.
    • Motivation to Combine: Petitioner contended the motivation was straightforward because Weinstein’s own system diagram showed a PBX connected to the packet voice network. A POSITA would have found it obvious to incorporate the well-known, cost-saving, automatic routing features described by Gurrie into the PBX shown in Weinstein’s network. This would allow the system to function as an alternative, low-cost route for long-distance calls, a strong commercial motivation.

Ground 3: Obviousness over Weinstein, RFC1190, and Kamil - Claims 10 and 25 are obvious over the combination of Weinstein, RFC1190, and Kamil.

  • Prior Art Relied Upon: Weinstein, RFC1190, and Kamil (Patent 4,706,275).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Kamil to the primary combination to address claims requiring route selection based on the credit availability of the calling party. Kamil disclosed a telephone calling card system that validated a user’s identifying code against an associated credit amount before connecting a call and would disconnect the call if the credit was depleted.
    • Motivation to Combine: Petitioner argued that since Weinstein's system was developed for Department of Defense (DoD) subscribers, it would have been obvious to integrate Kamil’s known credit-checking techniques. A POSITA would have been motivated to do so to monitor and prevent waste, fraud, and abuse of the military’s communication systems by limiting user access to their agreed-upon subscription levels, a standard business practice.

Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 14 over Weinstein, RFC1190, and the ISI Report (a 1982 technical report), arguing the report taught applying packet-switching technology to other media like fax, making it obvious to adapt Weinstein's voice system for fax transmissions.

4. Key Claim Construction Positions

  • "an internet protocol": Petitioner argued for adopting the Board's construction from a related case, defining the term as "a set of rules, instructions, or procedures relating to the format and timing of data transmissions between two devices over the Internet, such as TCP/IP." This construction was critical because the Examiner allowed the ’247 patent claims based on the argument that prior art did not teach converting to an "internet protocol," a point Petitioner directly refuted with RFC1190.
  • Means-Plus-Function Terms: For several means-plus-function limitations (e.g., "means for receiving voice communications"), Petitioner identified the corresponding structure in the ’247 patent’s specification as a "digital signal processor" but noted the specification provided no further detail on its operation, implying the disclosure may be inadequate.

5. Key Technical Contentions (Beyond Claim Construction)

  • Disputed Priority Date: Petitioner dedicated significant argument to contending that the ’247 patent was not entitled to its claimed priority date of 1994. It was argued that the priority application failed to disclose key limitations, specifically the terms "internet protocol" or the concept of "converting the transmission from the first format to a second format, the second format being internet protocol." Because the Examiner's allowance hinged on this very limitation, Petitioner asserted the patent's effective filing date was much later, making Weinstein (1983) and RFC1190 (1990) valid prior art.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-29 of the ’247 patent as unpatentable.