PTAB

IPR2015-01001

Cisco Systems Inc v. Spherix Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method for Providing Media Communication Across Firewalls
  • Brief Description: The ’323 patent describes a method and system for enabling communication between a device outside a private network and a device inside the private network, which is protected by a firewall. The system uses a “media proxy router” located outside the private network that is trusted by the firewall to relay information packets by translating addresses and utilizing firewall "pinholes."

3. Grounds for Unpatentability

Ground 1: Obviousness over Rosenberg and Xu - Claims 8 and 12-16 are obvious over Rosenberg in view of Xu.

  • Prior Art Relied Upon: Rosenberg (an Internet Engineering Task Force (IETF) Internet-Draft titled "Traversal Using Relay NAT (TURN)," Nov. 14, 2001) and Xu (Patent 7,050,422).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of Rosenberg and Xu disclosed all limitations of the challenged claims. Rosenberg taught the claimed method and system through its Traversal Using Relay NAT (TURN) protocol, which allows a device behind a firewall (a "TURN Client") to communicate with an external device (a "peer"). Rosenberg’s "TURN Server" functioned as the claimed "media proxy router," located on the public internet to relay packets between the client and peer. The TURN Server performed address translation by storing mappings (the claimed "data element") that correlated an external address with the internal client's address, which was reached through the firewall's pinhole port. While Rosenberg described the protocol, it lacked specific hardware implementation details. Xu allegedly supplied these details, describing a Call and Control Manager (CCM) server that performed the same relay and address translation functions as Rosenberg’s TURN Server. Crucially, Xu taught implementing this relay server with a network interface and a packet processor executing software, filling the hardware implementation gaps in Rosenberg.
    • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine Rosenberg and Xu because both addressed the identical problem of enabling real-time communications when one device is behind a firewall or Network Address Translation (NAT) device. A POSITA implementing the TURN protocol described in Rosenberg, a standard-setting document, would naturally have looked to contemporaneous art like Xu for known hardware solutions to this common problem. Xu provided a detailed network topology and device configuration, teaching the use of a server equipped with a network interface and processor. A POSITA would have been motivated to implement Rosenberg's protocol using Xu's well-known hardware configuration to achieve the predictable result of successful firewall traversal.
    • Expectation of Success: The combination involved applying known hardware components (a server with a processor and network interface from Xu) to implement a known protocol (TURN from Rosenberg) for its intended purpose. Petitioner argued that this would have yielded predictable results, and a POSITA would have had a high expectation of success.

4. Key Claim Construction Positions

  • “media proxy router”: Petitioner proposed this term be construed as “a network entity, such as a server, a workstation, or gateway-type hardware, that performs address translation on information packets.” This construction was based on the specification and was critical for mapping Rosenberg’s “TURN Server” and Xu’s “CCM Server,” both of which perform address translation, to this claim limitation.
  • “pinhole communication port / pinhole”: Petitioner proposed this term be construed as “a communication port designated by a network entity for sending information packets out of the network and for receiving information packets into the network during a communication session.” This construction was key to arguing that the temporary external IP address and port assigned by the firewall/NAT in Rosenberg for the internal client constituted the claimed "pinhole."

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 8 and 12-16 of the ’323 patent as unpatentable.