Polycom Inc v. directPacket Research Inc

1. Case Identification

• Case #: IPR2019-01235
• Patent #: 8,560,828
• Filed: June 24, 2019
• Petitioner(s): Polycom, Inc.
• Patent Owner(s): directPacket Research, Inc.
• Challenged Claims: 1-23

2. Patent Overview

• Title: Architecture of a Multimedia Communication System
• Brief Description: The ’828 patent discloses network architectures and methods for enabling multimedia communications, such as Voice over IP (VoIP), to traverse firewalls. The core technique involves combining multiport traffic onto a single, commonly open port (a process known as tunneling) to bypass firewall restrictions, and then reconverting the traffic at its destination.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-5, 9-11, 13, 14, 16, 17, 22, and 23 are obvious over Krtolica in view of Rosenberg.

• Prior Art Relied Upon: Krtolica (Patent 7,360,243) and Rosenberg (IETF Task Force SIP Working Group, Nov. 17, 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Krtolica teaches the fundamental system claimed in the ’828 patent. Krtolica discloses a method for traversing firewalls by converting multiport communications (e.g., voice/video) into a single-port communication over a common port like HTTP port 80. Krtolica’s system includes internal controllers behind firewalls (“firewall adapters”) that perform this conversion and external controllers (“media servers”) on the public internet that route the single-port traffic. Rosenberg was argued to supply the teaching of using a specific single-port protocol, HTTPS over port 443, for secure firewall traversal and discloses using security keys for authorization.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Krtolica’s firewall traversal system with Rosenberg’s teachings to enhance security. Krtolica’s stated objective was maintaining security, and HTTPS (as taught by Rosenberg) is a well-known, more secure alternative to the HTTP protocol suggested by Krtolica. This combination represented a simple substitution of one known element for another to obtain the predictable result of more secure firewall traversal.
  • Expectation of Success: Because both HTTP and HTTPS were well-known protocols for firewall traversal at the time, a POSITA would have had a high expectation of success in substituting the more secure HTTPS protocol into Krtolica’s system.

Ground 2: Claims 2, 12, 18, and 19 are obvious over Krtolica in view of Rosenberg and in further view of Eisenberg.

• Prior Art Relied Upon: Krtolica (Patent 7,360,243), Rosenberg (IETF Task Force SIP Working Group, Nov. 17, 2000), and Eisenberg (Patent 7,979,528).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Krtolica and Rosenberg to address dependent claims requiring verification of communication requests. Petitioner asserted that Eisenberg explicitly teaches the process of verifying communication requests at an external controller (e.g., a proxy) through authentication. Eisenberg discloses that proxies may require authentication and/or encryption to achieve secure connections, which Petitioner argued meets the "verifying" limitation.
  • Motivation to Combine: A POSITA would be motivated to add Eisenberg’s authentication teachings to the Krtolica/Rosenberg system to further the goal of network security. Since one of Krtolica's primary objectives was maintaining or increasing security, incorporating a known technique like authentication from Eisenberg would be an obvious way to improve the system's security.
  • Expectation of Success: Adding a well-known security feature (authentication) to a known communication system to increase its security was a predictable and routine design choice, leading to a reasonable expectation of success.

Ground 3: Claims 6-8, 15, and 20 are obvious over Krtolica in view of Rosenberg and in further view of DSDP.

• Prior Art Relied Upon: Krtolica (Patent 7,360,243), Rosenberg (IETF Task Force SIP Working Group, Nov. 17, 2000), and DSDP (Cisco Technology White Paper, Oct. 2001).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground adds DSDP to address claims directed to a "central controller" or "supercontroller" architecture for managing communications between geographically separate communities. Petitioner contended that DSDP, a Cisco white paper on designing large VoIP networks, discloses a hierarchical network architecture using regional external controllers ("Gatekeepers" or GKs) and a central controller ("Directory Gatekeeper" or DGK). The DGK in DSDP handles call routing between the different GKs, functioning identically to the "central controller" of the challenged claims.
  • Motivation to Combine: Krtolica suggests its system could be used in a global internet context. A POSITA seeking to scale the Krtolica/Rosenberg system to connect geographically remote networks would naturally look to known, scalable network architectures. DSDP provided a well-known hierarchical solution for managing large-scale VoIP networks. Therefore, a POSITA would combine DSDP's central controller architecture with the Krtolica/Rosenberg system to achieve efficient routing and predictable firewall traversal across a wide-area network.
  • Expectation of Success: Integrating a known network management architecture (DSDP's central controller) with a known firewall traversal technique (from Krtolica/Rosenberg) was a predictable combination of existing technologies to solve the known problem of scaling a communication system.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claim 21 based on the combination of Krtolica, Rosenberg, Eisenberg, and DSDP. This ground argued for adding the verification/authentication step taught by Eisenberg to the hierarchical central controller architecture taught by DSDP.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-23 of Patent 8,560,828 as unpatentable.