Polycom, Inc. v. directPacket Research, Inc.

1. Case Identification

• Case #: IPR2019-01234
• Patent #: 7,710,978
• Filed: June 24, 2019
• Petitioner(s): Polycom, Inc.
• Patent Owner(s): directPacket Research, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: System and Method for Traversing a Firewall with Multimedia Communication
• Brief Description: The ’978 patent discloses methods and systems for enabling multiport multimedia communications, such as Voice over Internet Protocol (VoIP), to traverse network firewalls. The patented solution involves converting multiport traffic into a single-port protocol, transmitting it through a commonly-open firewall port, and subsequently reconverting the traffic back to its original multiport protocol at the destination endpoint.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-15, 17-23, and 25-30 are obvious over Krtolica in view of Kirchhoff.

• 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 method of independent claims 1 and 23. Krtolica’s "firewall adapter" was alleged to be the claimed "intermediate communication device" that receives multiport packets (e.g., from H.323 or SIP protocols) from an endpoint. This adapter then converts (tunnels) the multiport traffic into single-port packets for transmission through a designated firewall port, such as port 80. After traversing the firewall, a second adapter receives the single-port packets, reconverts them back to multiport packets, and delivers them to the destination endpoint. Petitioner asserted that system claim 14 was similarly disclosed, mapping Krtolica’s firewall adapters to the claimed "network devices" and its component library to the "conversion table." To the extent Krtolica did not explicitly teach using a secure, commonly-open port, Petitioner asserted that Kirchhoff supplied this teaching. Kirchhoff disclosed using SSL port 443 for firewall traversal, which was well-known to be secure and commonly open by default on firewalls.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Krtolica's firewall traversal system with Kirchhoff's teachings to improve network security, a stated goal of Krtolica. Kirchhoff explicitly suggested using port 443 as a more secure alternative to port 80, providing a clear teaching and motivation to modify Krtolica's system to enhance security while maintaining functionality. Both references addressed the same problem of firewall traversal.
  • Expectation of Success: The proposed combination involved the simple substitution of one known, commonly-open port (port 80) for another (port 443) to achieve the predictable benefit of enhanced security. A POSITA would have had a reasonable expectation of success in making this modification.

Ground 2: Claims 2-4, 15-16, and 23-30 are obvious over Krtolica and Kirchhoff in view of Hosner.

• Prior Art Relied Upon: Krtolica (Patent 7,360,243), Kirchhoff (Patent 7,206,932), and Hosner ("OpenVPN and the SSL VPN Revolution," SANS Institute, Aug. 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Krtolica and Kirchhoff combination to argue that adding the encryption features required by dependent claims 2, 3, 4, 15, and 16 was also obvious. Hosner, a white paper describing OpenVPN, was cited for its explicit teachings on creating an encrypted tunnel using SSL. Petitioner argued that Hosner taught that a key element of VPNs is to encrypt packets before encapsulating them in IP traffic for transmission, directly mapping to the encryption limitation of claims 2 and 15. Consequently, Hosner also taught that both sides of the tunnel use decryption keys, satisfying the decryption limitation of claim 3. Hosner further disclosed the use of specific "common symmetric ciphers" including AES and TDES ("3DES"), directly teaching the specific encryption algorithms recited in claims 4 and 16.
  • Motivation to Combine: A POSITA looking to implement the firewall traversal system of Krtolica and Kirchhoff would have been motivated to incorporate the encryption techniques taught by Hosner to further enhance security. Since the primary goal of the base combination was secure communication, looking to well-known VPN technologies like OpenVPN for established encryption methods was a logical and obvious step for a POSITA to take.
  • Expectation of Success: Encryption was a ubiquitous and well-understood security feature in network communications at the time. A POSITA would have understood that adding standard, known encryption protocols like AES or TDES to a tunneling system was a predictable solution with a high likelihood of successful implementation.

4. Relief Requested

• Petitioner requested institution of an inter partes review of the ’978 patent and cancellation of claims 1-30 as unpatentable.