PTAB

IPR2019-01234

Polycom Inc v. directPacket Research Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Traversing a Firewall with Multimedia Communication
  • Brief Description: The ’978 patent discloses systems and methods for enabling multimedia communications, such as Voice over Internet Protocol (VoIP), to traverse network firewalls. The core technique involves converting multiport traffic, which is often blocked by firewalls, into a single-port protocol that can pass through a commonly-open port, and then reconverting the traffic at its destination.

3. Grounds for Unpatentability

Ground 1: Obviousness over Krtolica in View of Kirchhoff - Claims 1-3, 5-15, 17-23, and 25-30

  • Prior Art Relied Upon: Krtolica (Patent 7,360,243) and Kirchhoff (Patent 7,206,932).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Krtolica taught the core invention of the ’978 patent. Krtolica disclosed a "firewall adapter" that receives multiport communications (e.g., voice/video over TCP/UDP), converts them into a single stream of packets for transmission over a single network port (e.g., port 80), traverses a firewall, and is then reconverted back to multiport packets at a receiving firewall adapter. This process, which Krtolica called "tunneling," allegedly met the primary limitations of independent claims 1, 14, and 23. Petitioner contended Kirchhoff supplied the remaining limitations, such as using a "commonly-open" secure port. Kirchhoff taught a firewall traversal system for VoIP that preferably used well-known, commonly-open ports like TCP port 80 (HTTP) or port 443 (SSL) because firewalls are typically configured to allow traffic on these ports. Kirchhoff also taught that SSL provides encryption, which mapped to dependent claims requiring encryption.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Krtolica's firewall traversal system with Kirchhoff’s teachings to improve security and reliability. Krtolica’s stated goal was to maintain high security, and Kirchhoff explicitly taught that using port 443 with SSL is a more secure alternative to port 80 for web connections. A POSITA would have been motivated to substitute Krtolica’s suggested port 80 with Kirchhoff’s more secure port 443, or to add Kirchhoff’s encryption concepts, to enhance the security of the overall system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved applying a known security technique (using SSL on port 443) to a known system (Krtolica's firewall traversal) to achieve the predictable result of more secure communication. This was presented as a simple substitution of one known element for another.

Ground 2: Obviousness over Krtolica and Kirchhoff in View of Hosner - Claims 2-4, 15-16, and 23-30

  • Prior Art Relied Upon: Krtolica (Patent 7,360,243), Kirchhoff (Patent 7,206,932), and Hosner ("OpenVPN and the SSL VPN Revolution," SANS Institute, 2004).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Krtolica and Kirchhoff to address dependent claims requiring specific encryption algorithms. While Kirchhoff taught the general use of encryption with SSL, Hosner was cited for explicitly disclosing the use of specific symmetric ciphers for Virtual Private Network (VPN) tunneling, including Triple Data Encryption Standard (TDES) and Advanced Encryption Standard (AES) in 128-bit mode. Petitioner argued that Hosner's description of the OpenVPN protocol—which built an encrypted tunnel by encrypting and encapsulating packets—directly taught the encryption limitations of claims 4, 16, and 24.
    • Motivation to Combine: Petitioner argued that a POSITA seeking to implement the encryption suggested by the Krtolica/Kirchhoff combination would naturally look to well-known, standardized encryption solutions like those described in Hosner. Hosner was in the same field of endeavor (securely tunneling traffic through firewalls) and provided specific, off-the-shelf encryption algorithms (TDES, AES) for achieving the security goals of the primary references. Enhancing the security of Krtolica’s system with well-established encryption algorithms taught by Hosner was argued to be a predictable and desirable improvement.
    • Expectation of Success: A POSITA would have had a high expectation of success in incorporating AES or TDES from Hosner into the Krtolica/Kirchhoff system. These were common encryption schemes from a finite number of identified, predictable solutions for securing network protocols, and implementing them was a routine task for a network engineer at the time.

4. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-30 of the ’978 patent as unpatentable under 35 U.S.C. §103.