Cisco Systems, Inc. v. Bushnell Hawthorne, LLC.

1. Case Identification

• Case #: IPR2019-00909
• Patent #: 7,310,686
• Filed: April 3, 2019
• Petitioner(s): CISCO SYSTEMS, INC.
• Patent Owner(s): BUSHNELL HAWTHORNE, LLC
• Challenged Claims: 17-30

2. Patent Overview

• Title: Method for Selecting Optimum Internet Service Location
• Brief Description: The ’686 patent discloses a method for selecting an optimal network service for a user based on their geographical location. The system achieves this by intercepting and "transparently modifying" Domain Name System (DNS) messages to redirect the user to a geographically proximate server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Cisco NAT Paper and Logan - Claims 17-25 and 27-29 are obvious over the Cisco NAT Paper in view of Logan.

• Prior Art Relied Upon: Cisco NAT Paper (a 1997 white paper titled "Enabling Enterprise Multihoming with Cisco IOS Network Address Translation (NAT)") and Logan (Patent 6,578,066).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the core invention of the ’686 patent—modifying DNS messages based on geo-location—is rendered obvious by the combination. The Cisco NAT Paper taught modifying the question or answer sections of DNS messages using Network Address Translators (NATs) to manage traffic in multi-homed enterprise networks. Logan taught a system that transparently selects a server geographically close to a user by examining the source IP address of a DNS request and responding with the IP address for the optimal server.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references as they address the same problems of load balancing and efficient traffic routing in large, geographically dispersed networks. A POSITA would have been motivated to integrate Logan's geo-location-based server selection into the multi-homed network architecture of the Cisco NAT Paper to improve routing efficiency by directing users to the closest available server, a known goal in the art.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the teachings, as it would involve predictable software modifications to implement Logan's geo-location logic within the NAT-based framework of the Cisco NAT Paper.

Ground 2: Anticipation by Logan (Alternative) - Claims 17-25 and 27-29 are anticipated by Logan.

• Prior Art Relied Upon: Logan (Patent 6,578,066).
• Core Argument for this Ground: This ground was presented as an alternative based on a potentially broad construction of the claim term "modifies." Petitioner argued that if "modifies" is construed to include populating a blank answer section of a DNS message (a position Petitioner asserts Patent Owner takes in co-pending litigation), then Logan alone anticipates the challenged claims.
  • Prior Art Mapping: Logan explicitly teaches a process that determines a user's geo-location from a DNS request and then creates and sends a DNS response, populating the answer section with the IP addresses of the optimal, geographically proximate servers. Petitioner contended that if this act of populating is considered "modifying," then Logan teaches every element of the challenged claims, including transparently altering DNS messages based on geo-location.

Ground 3: Obviousness over Cisco NAT Paper, Logan, and Alteon - Claims 26 and 30 are obvious over the Cisco NAT Paper in combination with Logan and Alteon.

• Prior Art Relied Upon: Cisco NAT Paper (1997 white paper), Logan (Patent 6,578,066), and Alteon (a 1999 white paper titled "Optimizing ISP Networks and Services with DNS Redirection").
• Core Argument for this Ground: This ground adds Alteon to the primary combination to teach the additional limitations of claims 26 and 30. Claim 26 requires the DNS modification to be performed by "operating at the OSI model's second layer," and claim 30 requires forwarding any packet that is not a DNS message.
  • Prior Art Mapping: Petitioner argued that Alteon teaches using a "Web switch" that operates at Layer 2 or Layer 3 to intercept DNS packets for redirection while forwarding non-DNS packets to their ultimate destination. This teaching, when added to the Cisco/Logan combination, supplies the missing elements of claims 26 and 30.
  • Motivation to Combine: A POSITA would be motivated to combine Alteon's teachings because it addresses the same field of network traffic management and was authored by the same entity (Alteon Websystems) to which the Logan patent is assigned. Adding Alteon's efficient packet filtering would be a logical step to prevent the system from wasting resources trying to apply DNS logic to non-DNS packets, thus improving the overall efficiency of the Cisco/Logan system.

4. Key Claim Construction Positions

• "Modifies the Question Section, the Answer Section, or Both, of DNS Messages": Petitioner argued this term means to change information already present in the DNS message sections. This construction is central to distinguishing its primary obviousness argument from its alternative anticipation argument, which relies on the Patent Owner's allegedly broader construction that includes populating a blank section.
• "Transparently Altering": Proposed to mean "modifying in a way that is not known to users or other servers," based on the patent's specification and ordinary meaning.

5. Key Technical Contentions (Beyond Claim Construction)

• Operation at "OSI model's second layer" (Claim 26): Petitioner noted a critical inconsistency, arguing that while the applicant distinguished prior art during prosecution by asserting operation at Layer 2, DNS modification is an application-layer function (Layer 7, or Layer 5 in the OSI model). However, for the purpose of the petition, Petitioner adopted the applicant's "special use" of "at Layer 2" to mean any modification of the DNS question/answer section, and then argued the prior art teaches this functionality.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), stating the primary prior art combination of the Cisco NAT Paper and Logan was never presented to or considered by the USPTO during prosecution.
• Petitioner also argued against discretionary denial under §314(a) and Fintiv, noting that the parallel district court litigation was in its early stages and that an IPR would be an efficient use of resources, as Petitioner intended to seek a stay of the litigation pending the outcome of the IPR.

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 17-30 of the ’686 patent as unpatentable.