Cisco Systems Inc v. Zilkr Cloud Technologies LLC

1. Case Identification

• Case #: IPR2023-00553
• Patent #: 9,210,254
• Filed: February 2, 2023
• Petitioner(s): Cisco Systems, Inc.
• Challenged Claims: 1, 2, 6-8, and 12-14

2. Patent Overview

• Title: Integrating Communications Services Using Telephone Numbers
• Brief Description: The ’254 patent describes a unified platform for providing third-party telecommunications services (e.g., text messaging, voicemail) to a telephone service subscriber. The system uses the subscriber's telephone number as a common identifier to integrate services from different providers and ecosystems.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bodart, Banister, and Dharmarajan - Claims 1, 2, 6-8, and 12-14 are obvious over Bodart in view of Banister and Dharmarajan.

• Prior Art Relied Upon: Bodart (Application # 2007/0043687), Banister (Patent 6,621,892), and Dharmarajan (Patent 7,089,585).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Bodart discloses the foundational system of the challenged claims: a virtual assistant (a "telephone system" comprising a server and database) that integrates various communication services like email and instant messaging (IM), making them accessible to a user via telephone. Bodart's system receives and directs calls, associating them with a user's telephone number. However, Bodart provides only high-level descriptions of its functionalities. The combination with Banister and Dharmarajan provides the specific implementation details for mapping and activating these services. Banister teaches converting emails to audio for telephone delivery by looking up a phone number associated with an email address in a database. Dharmarajan teaches the specific process of accessing a third-party service like IM, requiring a username and password for login.
  • Motivation to Combine: A POSITA seeking to implement the high-level functionalities described in Bodart would have been motivated to consult references like Banister and Dharmarajan for known implementation details. To enable Bodart's "read email by phone" feature, a POSITA would logically look to Banister's method of mapping email addresses to telephone numbers. To enable Bodart's IM functionality, a POSITA would naturally incorporate Dharmarajan’s standard username/password login procedures. The combination was presented as simply filling in the expected implementation details of a known concept using well-understood techniques from the same field.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved applying known methods (e.g., database lookups, login authentication) to the known system of Bodart to achieve predictable results. Storing associations between phone numbers and electronic IDs (email, IM usernames) in a database was a well-known technique.

Ground 2: Obviousness over de Castro - Claims 1, 2, 6-8, and 12-14 are obvious over de Castro.

• Prior Art Relied Upon: de Castro (Application # 2012/0016932).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that de Castro, standing alone, discloses every element of the challenged claims in a different technical context focused on backend networking. De Castro teaches a "unified framework" for telecommunications, including a network architecture with application servers and a communication API gateway that includes a registry (a "database"). In de Castro’s system, inbound calls from a telephone number ("first telephone number") are offered to a client via an XMPP protocol using a Jabber Identifier or JID ("second identifier"). This process inherently creates a mapping from the telephone number to the JID in response to the request (the incoming call). The JID is then used by the service provider to identify the user and manage the call.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference, so no motivation to combine is required. Petitioner argued de Castro's inherent disclosures render the claims obvious.
  • Expectation of Success (for §103 grounds): As a single-reference ground, this element is not applicable in the same way. The argument is that de Castro's system inherently functions as claimed.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inappropriate because none of the asserted prior art references were cited or considered by the examiner during the prosecution of the ’254 patent.
• Petitioner further argued that discretionary denial under Fintiv is not appropriate because the co-pending district court litigation is in its very early stages with minimal investment. The petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the district court, thus mitigating any concerns of overlapping issues.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 6-8, and 12-14 of Patent 9,210,254 as unpatentable.