Cisco Systems Inc v. 802 Systems Inc

1. Case Identification

• Case #: IPR2021-00620
• Patent #: 7,031,267
• Filed: March 18, 2021
• Petitioner(s): Cisco Systems, Inc.
• Challenged Claims: 1-13, 16-18

2. Patent Overview

• Title: Programmable Logic Device (PLD) Based Packet Filtering System And Method
• Brief Description: The ’267 patent discloses a network device that uses a programmable logic device (PLD) to filter data packets based on a set of rules. The system can be remotely updated with new configuration data, and if a packet fails the filtering rules, it is "junked" by corrupting its data.

3. Grounds for Unpatentability

Ground 1: Obviousness over Salim, Carter, and Pearson - Claims 1, 4-13, 16-18 are obvious over Salim in view of Carter and Pearson.

• Prior Art Relied Upon: Salim (Patent 6,628,653), Carter (Patent 5,161,192), and Pearson (Patent 6,990,591).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Salim taught the core invention: a method for updating the configuration of a PLD-based packet filtering system using electronically programmable hardware like FPGAs. Salim’s system receives packets, filters them according to a defined configuration, and can be reconfigured by downloading a new configuration across a network. Petitioner contended that Carter, which teaches a network repeater that corrupts (i.e., "junks") unauthorized data frames by overwriting them, supplied the claimed "junking" limitation. Finally, Pearson allegedly supplied the limitation of selectively receiving updated configuration data based on version information. Pearson describes a firewall system that reports its current software version to a remote controller, which then transmits updates only if necessary.
  • Motivation to Combine: A POSITA would combine Salim and Carter to create a more flexible and easily reprogrammable version of Carter's packet-corrupting repeater, gaining the benefits of easy upgrades without service interruption. A POSITA would further incorporate Pearson’s version-checking technique into Salim’s system to improve the efficiency of the update mechanism by eliminating unnecessary configuration downloads and to guard against corrupt or improperly installed updates, a known problem for reconfigurable devices.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because Salim’s programmable apparatus was designed for generic network packet processing functions like those in Carter. Furthermore, applying Pearson's well-understood version-checking method to Salim's update process was a predictable improvement, as both systems used a remote manager to control updates for a network device.

Ground 2: Obviousness over Salim, Carter, Pearson, and Moore - Claims 2 and 3 are obvious over Salim in view of Carter, Pearson, and Moore.

• Prior Art Relied Upon: Salim (Patent 6,628,653), Carter (Patent 5,161,192), Pearson (Patent 6,990,591), and Moore (Patent 6,538,468).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the limitations of claims 2 and 3, which require storing the received configuration data in non-volatile memory. Petitioner asserted that Moore taught it was common practice to store configuration data for PLDs in an associated non-volatile memory circuit, such as an EEPROM or Flash memory, so the configuration is available at power-up.
  • Motivation to Combine: A POSITA would have been motivated to add Moore's teaching to the primary combination to produce the commonplace and predictable solution of storing the PLD's configuration data in non-volatile memory. This would allow the system to retain its configuration through power cycles and would enable the implementation of Pearson's technique of maintaining multiple software versions (e.g., current and previous) to protect against failed updates.
  • Expectation of Success: Because storing PLD configuration data in non-volatile memory was a prevalent, if not predominant, method at the time, a POSITA would have had a high expectation of success in employing such memory in the PLD-based system of Salim.

4. Key Claim Construction Positions

• "junked": Petitioner proposed construing this term according to its explicit definition in the ’267 patent specification: "Junking is defined as changing bits or truncating data, depending on the type of link, in a manner such that the packet is corrupted or otherwise will be detected by the receiving computers as invalid or unacceptable, etc." This construction was central to mapping the packet-corrupting teachings of the Carter reference to the claims.

5. Arguments Regarding Discretionary Denial

• §325(d) (Same or Substantially Same Art): Petitioner argued denial was inappropriate because the Examiner’s prior consideration of the Salim reference was materially deficient. During prosecution, Salim was cited only as a secondary reference for the narrow concept of filtering by source/destination address. Petitioner contended the Examiner failed to appreciate Salim's broader teachings on reprogrammable packet processors, which form the core of the asserted grounds. This alleged material error, supported by a new expert declaration, warranted a fresh review.
• §314(a) (Fintiv Factors): Petitioner argued denial was inappropriate because the parallel district court case was in its early stages, with minimal investment from either party. Key events like claim construction and expert discovery had not yet occurred. Petitioner noted the uncertainty of the scheduled trial date, which was nearly a year away, and committed to ceasing assertion of the IPR grounds in the district court if the trial were instituted, thereby avoiding duplicative efforts and conserving judicial resources.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-13 and 16-18 of Patent 7,031,267 as unpatentable.