Cisco Systems Inc v. Huawei Technologies Co Ltd

1. Case Identification

• Case #: IPR2017-02076
• Patent #: 8,531,971
• Filed: September 8, 2017
• Petitioner(s): Cisco Systems, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Method for Controlling Charging of Packet Data Service
• Brief Description: The ’971 patent relates to a method and system for controlling charging for packet data services in a telecommunications network. The system uses a Traffic Plane Function (TPF) to handle data flow and a Charging Rule Function (CRF) to manage charging policies, focusing on the use of "dynamic" event triggers determined by the CRF to control when the TPF should request updated charging rules.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 11 are obvious over Körling in view of 3GPP 23.825

• Prior Art Relied Upon: Körling (Patent 7,450,591) and 3GPP 23.825 (a November 2003 technical report, V1.2.0).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Körling taught the core architecture of the ’971 patent. Körling’s "charging policy decision point" was a CRF that determined charging rules and "validity conditions" (event triggers), and its "serving element" was a TPF that enforced these rules. The CRF sent the validity conditions to the TPF, and the TPF requested new rules when these conditions were no longer met. Petitioner asserted that 3GPP 23.825, as the governing industry standard for this type of architecture, confirmed that Körling’s components were functionally equivalent to a standard CRF and TPF. The 3GPP 23.825 standard explicitly described a TPF sending a request for an updated charging rule after an "event trigger" occurred, directly mapping to the challenged claims.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) seeking to implement or improve Körling’s flexible charging system would have been motivated to consult the 3GPP 23.825 industry standard, which detailed the conventional architecture for flow-based charging. A POSITA would combine the teachings to ensure interoperability and to use the standard, well-understood mechanisms and terminology for event-based triggering. The substitution of 3GPP's "event triggers" for Körling's functionally identical "validity conditions" was presented as a predictable design choice to align with industry norms.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying a well-defined industry standard to a system that already embodied the standard's core principles. The modification was characterized as a simple substitution of known techniques with predictable results.

Ground 2: Claims 9 and 10 are obvious over Körling, 3GPP 23.825, and Duffield

• Prior Art Relied Upon: Körling (Patent 7,450,591), 3GPP 23.825 (a November 2003 technical report, V1.2.0), and Duffield (Application # 2002/0165958).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims 9 and 10, which required the TPF to perform "charging information statistics according to the charging rule." While Körling and 3GPP 23.825 suggested collecting usage data, Petitioner argued Duffield explicitly taught the claimed limitation. Duffield described gathering network usage data by forming "flow statistics" and using these measurements for interpretation according to a "charging policy" for customer billing.
  • Motivation to Combine: The base combination of Körling and 3GPP 23.825 established a system where the TPF enforced charging rules based on user activity. Petitioner argued a POSITA would be motivated to incorporate Duffield’s teachings because gathering statistics is essential for any usage-based charging system. Duffield provided a known and effective method for collecting the necessary statistics at the TPF (the enforcement point) to implement the charging policy provided by the CRF.
  • Expectation of Success: Integrating Duffield's statistical collection methods into the TPF of the Körling/3GPP system would be straightforward and predictable. The TPF is the logical network element to perform this function, as it directly handles the data flows being measured for the charging policy it is tasked with enforcing.

4. Key Claim Construction Positions

• Petitioner did not propose new constructions but stated that, for the purpose of the IPR, it did not dispute constructions for key terms addressed in a dissenting opinion from a prior proceeding (IPR2017-00673). The key terms were construed as:
  • "event triggers": "network events that cause a charging decision to be made."
  • "CRF": "a logical network entity that receives a charging request and responds with a charging rule."
  • "TPF": "a logical network entity that bears IP flows and executes charging rules."

5. Key Technical Contentions (Beyond Claim Construction)

• Denial of Priority Date: A central contention was that the ’971 patent was not entitled to the priority benefit of its April 2004 Chinese applications. Petitioner argued these earlier applications failed to provide adequate written description support for the full scope of the claimed "event triggers." Specifically, the Chinese applications only disclosed triggers related to bearer service modification and QoS changes, while the ’971 patent later introduced new trigger types (e.g., changes in SGSN, PLMN, RAT type) that are explicitly recited in the independent claims. This argument, if successful, would establish an earlier effective date for the asserted prior art references.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the grounds presented were not redundant under 35 U.S.C. § 325(d) with those in two prior, unsuccessful IPRs (IPR2017-00673 and IPR2017-00698). The petition asserted that the primary reference, Körling, was materially different from the art in the prior cases. Specifically, Petitioner contended that Körling, unlike the previously asserted art, explicitly disclosed the key features that the Patent Owner had relied upon to overcome rejections during prosecution: a CRF that determines event triggers and a TPF that receives those triggers from the CRF.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-11 of Patent 8,531,971 as unpatentable.