Cisco Systems Inc v. Croga Innovations Ltd

1. Case Identification

• Case #: IPR2024-01282
• Patent #: 7,738,368
• Filed: August 13, 2024
• Petitioner(s): Cisco Systems, Inc.
• Patent Owner(s): Croga Innovations Ltd.
• Challenged Claims: 1-2

2. Patent Overview

• Title: Voice over Internet Protocol Telephone System with Coder-Decoder Adjustment
• Brief Description: The ’368 patent discloses a Voice over Internet Protocol (VoIP) system that monitors call quality during a telephone call. If the quality drops below a predetermined threshold, a call control gatekeeper instructs the VoIP telephones to renegotiate the call and switch to a different, lower-bandwidth audio coder-decoder (codec).

3. Grounds for Unpatentability

Ground 1: Claims 1 and 2 are obvious over Minhazuddin, Hepworth, and Shaffer

• Prior Art Relied Upon: Minhazuddin (Patent 7,643,414), Hepworth (Application # 2004/0073690), and Shaffer (Patent 7,023,839).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Minhazuddin taught the core of the claimed invention: a VoIP system with a gatekeeper that monitors Quality of Service (QoS) metrics (like packet loss and jitter) and, upon crossing a threshold, causes endpoints to renegotiate and change to a lower-bandwidth codec. Hepworth was cited for teaching a suitable and well-known technique for implementing Minhazuddin’s QoS monitoring, wherein VoIP endpoints themselves collect and transmit QoS data (a call quality signal) to a central monitor. Shaffer was cited for teaching the explicit mechanism of a gatekeeper sending an adjustment signal to endpoints, instructing them to renegotiate their codecs for an existing call when a QoS threshold is met.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to implement Minhazuddin’s high-level system with the specific, known techniques from Hepworth and Shaffer. Combining Hepworth’s endpoint-based QoS data collection would predictably free the gatekeeper for other tasks and improve network problem identification. Combining Shaffer’s explicit signaling mechanism would provide a direct and efficient way to implement the codec renegotiation described by Minhazuddin, leading to predictable benefits like improved bandwidth utilization and trunking efficiency.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because all three references address the same field of VoIP technology and propose combining known elements (gatekeepers, endpoints, LAN interfaces) to solve common network performance problems. The use of standardized components and well-understood signaling techniques ensured the combination would be predictable.

Ground 2: Claims 1 and 2 are obvious over Mundra, RFC3435, and RFC3660

• Prior Art Relied Upon: Mundra (Application # 2004/0032860), RFC3435 (IETF Request for Comments 3435), and RFC3660 (IETF Request for Comments 3660).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mundra disclosed a VoIP system where a "Call Agent" (the claimed gatekeeper) receives commands from an IP phone to change codecs in real-time during a call. Mundra explicitly identified the Media Gateway Control Protocol (MGCP) as a protocol for achieving this. Petitioner argued that the combination of Mundra with the official MGCP standard documents—RFC3435 and RFC3660, which were the operative standards at the time of Mundra's publication—rendered the claims obvious. RFC3660 taught generating a "Quality alert" event (the claimed call quality signal) based on metrics like packet loss. RFC3435 taught that a Call Agent can receive such event messages from an endpoint and, in response, send a "modify connection" command (the claimed adjustment signal) instructing the endpoints to change the codec.
  • Motivation to Combine: The motivation was direct and explicit. A POSITA seeking to implement Mundra’s system, which expressly referenced MGCP, would have been immediately motivated to consult the primary defining documents for that protocol, RFC3435 and RFC3660. These documents provided the necessary implementation details for the very functionality Mundra described, such as event reporting and codec modification commands. The combination was merely the application of the official standard to the system that proposed its use.
  • Expectation of Success: Success would have been expected because the combination involved implementing a system using the well-known, standardized signaling protocol it was designed around. The RFCs were created specifically to provide a predictable, interoperable framework for the functions described in Mundra. Claim 2's limitation of basing the quality signal on "dropped voice packets" was met by RFC3660's "packet loss rate" metric for its Quality alert.

4. Arguments Regarding Discretionary Denial

• Discretionary Denial under Fintiv: Petitioner argued that denial would be inappropriate. The parallel district court case was in its early stages, with significant events like the Markman hearing scheduled after the Board's institution decision. Petitioner asserted the trial date was close enough to the Final Written Decision (FWD) date to be neutral, and it provided a stipulation that it would not pursue in district court any ground on which IPR is instituted. Crucially, Petitioner argued the petition presented compelling evidence of unpatentability.
• Discretionary Denial under §325(d): Petitioner argued that denial would be inappropriate because the prior art combinations relied upon in the petition were not considered by the Examiner during prosecution. Furthermore, the newly presented prior art combinations were argued to teach the specific claim limitations that formed the basis for the patent’s allowance, making the challenge non-cumulative.

5. Relief Requested

• Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1 and 2 of the ’368 patent as unpatentable under 35 U.S.C. §103.