Cisco Systems Inc v. WSOU Investments LLC

1. Case Identification

• Case #: IPR2021-01117
• Patent #: 8,191,106
• Filed: June 17, 2021
• Petitioner(s): Cisco Systems, Inc.
• Patent Owner(s): WSOU Investments LLC d/b/a Brazos Licensing and Development
• Challenged Claims: 1-18

2. Patent Overview

• Title: Network Access Security Policy Management
• Brief Description: The ’106 patent discloses a system for managing security and access policies for a multi-network device. The system dynamically applies different policies as the device moves between various network types, such as from a cellular network to a Wireless Local Area Network (WLAN).

3. Grounds for Unpatentability

Ground 1: Obviousness over Hurtta - Claims 1-3, 5, 8-12, 14, 17-18 are obvious over Hurtta.

• Prior Art Relied Upon: Hurtta (Application # 2005/0135375).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hurtta disclosed all elements of the challenged claims. Hurtta described a system for applying policies to communications based on the access network type (e.g., 2G, 3G, WLAN). Its gateway functions as the claimed "inter-technology change-off monitoring entity (ICME)" by detecting device handovers between networks. This gateway sends a message about the network change to a "policy control entity," which maps to the claimed "policy manager." The policy manager then uses information from a database (the claimed "policy database") to determine the correct policy and sends it to the gateway, which serves as the "policy enforcement point (PEF)."
  • Motivation to Combine (for §103 grounds): The ground relied on a single reference, but Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings from Hurtta's various disclosed embodiments. Hurtta itself suggested such combinations by cross-referencing concepts between different embodiments, such as applying methods for deriving network types from one embodiment to a handover scenario described in another.
  • Expectation of Success: A POSITA would have had a high expectation of success in combining Hurtta's disclosed features because networking is a predictable art and Hurtta provided a clear framework for its system's operation across multiple network types.

Ground 2: Obviousness over Hurtta and Mizell - Claims 4 and 13 are obvious over Hurtta in view of Mizell.

• Prior Art Relied Upon: Hurtta (Application # 2005/0135375) and Mizell (Application # 2004/0208153).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring policy distribution after a layer 2 connection is established but before a layer 3 connection is complete. Hurtta provided the base policy management system. Mizell taught a mobile IP registration process where a device establishes layer 2 connectivity with a foreign network to receive broadcast packets before it is assigned an IP address, which completes layer 3 connectivity. Mizell disclosed that subscriber profile information, including policies, is provided to the foreign network's agent during this intermediate stage. Combining these teachings, Hurtta’s policy manager would distribute policies during the window taught by Mizell.
  • Motivation to Combine: A POSITA would combine Mizell with Hurtta to add standard, well-understood mobile IP roaming capabilities to Hurtta's system. Because Hurtta expressly contemplated the use of mobile IP, Mizell was presented as a natural and obvious source for implementation details.
  • Expectation of Success: The combination would predictably yield a system with enhanced roaming capabilities. Success was expected because both references operate in similar mobile communication environments, making the integration of Mizell's standard techniques into Hurtta's framework straightforward.

Ground 3: Obviousness over Hurtta, Rimoni, and Wilhoite - Claims 6 and 15 are obvious over Hurtta in view of Rimoni and Wilhoite.

• Prior Art Relied Upon: Hurtta (Application # 2005/0135375), Rimoni (Application # 2007/0049276), and Wilhoite (Application # 2006/0116127).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground targeted claims specifying that the ICME is a layer 2 entity and that the handover between UMTS and WLAN is detected when an "association occurs." Petitioner argued that Hurtta’s user equipment, which can signal a handover, functions as a layer 2 ICME. Rimoni was cited for its specific teachings on handovers between WLAN and UMTS (a 3G technology encompassed by Hurtta). Wilhoite was cited for teaching that a handover from a cellular network to a WiFi network is initiated precisely when the device successfully creates an "association" with a WiFi access point.
  • Motivation to Combine: A POSITA would combine Rimoni with Hurtta to implement a specific and widely used 3G technology (UMTS) within Hurtta's more general framework. Wilhoite would be added to provide a known, reliable, and efficient trigger for the handover process—the successful association with the target network—thereby improving the functionality of the combined Hurtta/Rimoni system.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved substituting a specific network technology (UMTS from Rimoni) and adding a conventional handover trigger (association from Wilhoite) into a compatible base system (Hurtta), all for their intended and well-understood purposes.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 7 and 16 based on Hurtta in view of Rimoni.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the primary prior art references (Hurtta, Mizell, Rimoni, and Wilhoite) were not before the examiner during original prosecution.
• Petitioner also argued against discretionary denial under Fintiv, contending that the parallel district court litigation was in its earliest stages, with no trial date set and minimal investment by the court and parties. The Petitioner asserted that the Board’s Final Written Decision would issue well before any potential trial, and that the merits of the Petition were strong, weighing in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of the ’106 patent as unpatentable.