PTAB

IPR2019-01233

Polycom Inc v. directPacket Research Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Cross Protocol Communication
  • Brief Description: The ’588 patent discloses methods and systems for converting multimedia communications between a first protocol and a second protocol by using a universal intermediate protocol. The claimed invention is intended to solve incompatibilities between different Voice-over-IP (VoIP) protocols, such as H.323 and SIP, by translating each protocol into a common format for transmission before translating it to the target protocol at the destination.

3. Grounds for Unpatentability

Ground 1: Claims 1-23 are obvious over Ress

  • Prior Art Relied Upon: Ress (Patent 6,885,658).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ress discloses all limitations of the challenged claims. Ress teaches a method and apparatus for interworking between different Internet Protocol (IP) telephony protocols using a call server. This system employs a third, intermediate protocol—termed an "agent interworking protocol" (AIP)—that acts as a common language between devices using incompatible first and second protocols. Petitioner asserted that Ress explicitly discloses using this architecture to convert between H.323 (a binary protocol) and SIP (a text-based protocol), thus meeting the key limitation of claim 1 regarding converting between binary and text-based protocols. Petitioner further mapped Ress's "interworking agent" to the ’588 patent’s "communication controller" and Ress's "connection information parameter data structures" to the claimed "protocol tables."
    • Motivation to Combine (for §103 grounds): This ground relied on a single reference. For any claim elements arguably not explicitly disclosed, Petitioner contended it would have been obvious for a person of ordinary skill in the art (POSITA) to modify Ress's system to include them. For example, Petitioner argued that detecting the type of the first protocol is an inherent and necessary prerequisite for any protocol conversion system like that of Ress, making its inclusion an obvious design choice.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in making any such modifications, as they would involve routine tasks like analyzing packet headers to identify a known protocol type.

Ground 2: Claims 1-23 are obvious over Ress in view of Doyle

  • Prior Art Relied Upon: Ress (Patent 6,885,658) and Doyle (Application # 2002/0133588).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground leveraged Ress as the primary reference for the core protocol conversion architecture and supplemented it with teachings from Doyle. Petitioner argued that to the extent Ress was found not to teach certain limitations, Doyle supplied them. Specifically, Doyle was cited for its explicit disclosure of a multi-protocol communication analysis system that uses "network/protocol monitors" to perform the claimed step of "detecting a type of said first protocol." Doyle’s system analyzes communications to identify the specific protocols in use (e.g., SIP, H.323). Furthermore, Petitioner contended that Doyle’s teaching of collecting and storing protocol information on a computer-readable medium for analysis disclosed the "device information base containing compatibility information" recited in dependent claims such as claim 5.
    • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine Ress and Doyle to improve the functionality of Ress’s system with known techniques. Both references are in the same field of VoIP protocol analysis and conversion. A POSITA implementing the conversion system of Ress would have recognized the need to first detect the incoming protocol and store device compatibility information to perform the conversion accurately. Doyle provided an express, well-understood solution for these necessary functions. The combination was presented as the application of a known technique (Doyle's protocol monitoring) to improve a similar device (Ress's protocol converter), yielding only predictable results.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because incorporating protocol detection and a compatibility database into a conversion gateway was a routine and necessary step in network engineering at the time.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of the ’588 patent as unpatentable.