Cisco Systems Inc v. Orckit Corp

1. Case Identification

• Case #: IPR2023-00554
• Patent #: 10,652,111
• Filed: February 21, 2023
• Petitioner(s): Cisco Systems, Inc.
• Patent Owner(s): Orckit IP, LLC
• Challenged Claims: 1-9, 12-24, 27-31

2. Patent Overview

• Title: Deep Packet Inspection in a Software Defined Network
• Brief Description: The ’111 patent discloses methods for performing deep packet inspection (DPI) within a software defined network (SDN). The system uses a central controller to send instructions and packet-matching criteria to network nodes, which then selectively redirect or mirror packets to a component for security inspection.

3. Grounds for Unpatentability

Ground 1: Claims 1-9, 12-24, and 27-31 are obvious over Lin in view of Swenson.

• Prior Art Relied Upon: Lin (Patent 9,264,400) and Swenson (Application # 2013/0322242).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lin taught the core SDN architecture of claim 1, including an external SDN controller that sends "flow rules" (the claimed "instruction" and "packet-applicable criterion") to an SDN switch (the "network node"). In Lin, the switch uses these rules to route certain packets to a separate security component for inspection. Swenson was cited to teach the missing element: a network controller that performs deep packet inspection itself. Petitioner contended that combining Lin’s architecture with Swenson’s controller-based inspection renders the claims obvious.
  • Motivation to Combine: Petitioner asserted that Lin and Swenson are analogous art addressing the same problem of efficient network traffic routing. A person of ordinary skill in the art (POSITA) would combine Swenson's teaching of a controller performing "deep flow inspection" with Lin’s architecture to create a more efficient and manageable system. Specifically, a POSITA would find it an obvious design choice to implement Lin's separate security service as an integrated function of the central controller, as taught by Swenson, to centralize security functions and simplify software updates.
  • Expectation of Success: Given the similar network architectures in both references, where an external controller manages network nodes, Petitioner argued a POSITA would have a reasonable expectation of success in modifying Lin’s system to perform packet inspection within the controller.

Ground 2: Claims 1, 5-9, 12-24, and 27-30 are obvious over Shieh in view of Swenson.

• Prior Art Relied Upon: Shieh (Application # 2013/0291088) and Swenson (Application # 2013/0322242).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Shieh, similar to Lin, disclosed the fundamental architecture of claim 1. Shieh described an external controller that configures network access devices (the "network nodes") with filtering rules. The nodes check incoming packets against these rules and forward matching packets to a separate security device for inspection. The argument relied on Swenson to supply the teaching of performing this inspection within the controller itself.
  • Motivation to Combine: The motivation argument mirrored that of Ground 1. Petitioner argued that because Shieh and Swenson are analogous arts, a POSITA would be motivated to combine Shieh's system with Swenson's teaching of integrated DPI. This combination would centralize the security function, making it more efficient than Shieh's use of a distinct security device. The architectural similarities provided a clear path for this combination.
  • Expectation of Success: Petitioner asserted that the functional similarity between the architectures of Shieh and Swenson would provide a POSITA with a reasonable expectation of success in modifying Shieh to integrate the security inspection function into the main controller.

4. Key Claim Construction Positions

• "controller": Petitioner proposed this term be construed as "an entity configured to perform deep packet inspection on packets." This construction was presented as central to the obviousness arguments, as it frames the combination of a basic SDN controller from Lin or Shieh with the explicit DPI functionality taught by Swenson.
• "instruction": Petitioner proposed construing this term as "a command to determine if a packet requires inspection or not." This construction was argued to align the claim language with the "flow rules" and "filtering rules" disclosed in the prior art references.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the primary prior art references (Lin, Shieh, and Swenson) were new and had not been considered during the original prosecution of the ’111 patent.
• Petitioner also presented arguments against discretionary denial under Fintiv factors, asserting that the parallel district court litigation was in its early stages with minimal investment from the parties and the court. It was further argued that the projected trial date in the litigation is approximately the same time as the expected Final Written Decision from the Board, a factor that weighs against denial.

6. Relief Requested

• Petitioner requests institution of an inter partes review for claims 1-9, 12-24, and 27-31, and that the Director cancel these claims as unpatentable.