Cisco Systems Inc v. Qprivacy USA LLC

1. Case Identification

• Case #: IPR2025-00837
• Patent #: 11,106,824
• Filed: April 10, 2025
• Petitioner(s): Cisco Systems, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Dynamic Management of Private Data During Communication
• Brief Description: The ’824 patent describes systems and methods for managing private data communicated between a user's device and a remote server. The technology allows a user to define privacy preferences, and a remote device then analyzes data packets based on their type or pattern, modifying or blocking packets that are not compliant with the user-defined preferences.

3. Grounds for Unpatentability

Ground 1: Obviousness over Burns and Yang - Claims 17-20 are obvious over Burns in view of Yang.

• Prior Art Relied Upon: Burns (Patent 8,341,724) and Yang (Patent 8,291,495).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Burns, which discloses a configurable Intrusion Detection System (IDS), provides the claimed remote server and processor. Burns's IDS can be configured by an administrator to block or throttle communications based on specified rules, such as blocking all fully encrypted packets. This configurability, Petitioner contended, constitutes the claimed privacy preference database. Yang was argued to disclose the communication data type database through its teaching of a static port mapping table that associates TCP port numbers with specific applications and protocols (e.g., HTTP, SSH). The combination allegedly teaches a system where a processor (from Burns) uses a data type database (from Yang) to identify an application and then consults a preference database (from Burns's configuration) to determine whether to permit or modify the communication.
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine these references because Burns expressly incorporates Yang by reference for its "exemplary techniques for identifying specific applications and protocols." This direct reference provided a clear reason for a POSITA to consult Yang to implement the application-identification functionality of Burns's IDS.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved using the teachings of Yang for the exact purpose for which Burns cited it—to improve the identification capabilities of a network security system.

Ground 2: Obviousness over Burns, Yang, and Wittenberg - Claims 1-16 are obvious over Burns and Yang in view of Wittenberg.

• Prior Art Relied Upon: Burns (Patent 8,341,724), Yang (Patent 8,291,495), and Wittenberg (Application # 2005/0078668).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Burns and Yang from Ground 1 to argue the obviousness of the method claims. Petitioner asserted that Wittenberg, which describes a network security device with a built-in web server for user authentication, supplied the missing elements of independent claim 1. Specifically, Wittenberg’s web-based login page was argued to be the claimed request for retrieval of at least one data packet received by the user's device. The user submitting their credentials via the webpage constituted the response corresponding to the received request. The remote server (Burns's IDS) would then analyze this response traffic using the combined techniques of Burns and Yang to determine the communication data type and apply privacy preferences.
  • Motivation to Combine: Petitioner argued that a POSITA would combine Wittenberg's teachings with the Burns/Yang system to improve its security. Since the IDS in Burns is configurable, a POSITA would have been motivated to add a well-known authentication mechanism, like Wittenberg's web login, to ensure that only authorized administrators could access and modify the system's security rules. This would prevent unauthorized changes that could compromise network security.
  • Expectation of Success: A POSITA would have expected this combination to succeed because using a web-based interface for configuring network devices was a common and well-established practice in the art. Applying this known technique to a configurable IDS to restrict access was a predictable design choice.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• §325(d) Denial: Denial under §325(d) was argued to be improper because the primary prior art references (Burns, Yang, and Wittenberg) were not cited or considered during the original prosecution of the ’824 patent.
• Fintiv Denial: Petitioner contended that denial under the Fintiv factors was not warranted. It was argued that the co-pending district court litigation was in its early stages, with significant events like the Markman hearing and discovery deadlines scheduled for well after the Patent Trial and Appeal Board's institution decision. Further, Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court any invalidity ground that was raised or reasonably could have been raised in the IPR. Petitioner asserted these factors, combined with the strength of the invalidity case, weighed strongly in favor of institution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-20 of the ’824 patent as unpatentable under 35 U.S.C. §103.