Cisco Systems, Inc.v.AIP Acquisition, LLC

Patent Trial and Appeal Board

May 18, 2016

10941471 (P.T.A.B. May. 18, 2016)

Trials@uspto.gov Paper 28
571-272-7822 Date: May 18, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CISCO SYSTEMS, INC.,
Petitioner,

v.

AIP ACQUISITION LLC,
Patent Owner.
____________

Case IPR2015-00307
Patent 7,269,247 B2
____________

Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
JUSTIN BUSCH, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
On November 26, 2014, Cisco Systems, Inc. (“Petitioner”) filed a
Corrected Petition (Paper 3, “Pet.” or “Petition”) requesting inter partes
review of all claims (claims 1–29) of U.S. Patent No. 7,269,247 B2 (“the
’247 patent”) under 35 U.S.C. §§ 311–319. On May 20, 2015, the Board
instituted an inter partes review of claims 1–9, 11–24, and 26–29 (the
“claims under review”) on asserted grounds of unpatentability. Paper 9
(“Dec. on Inst.”), 33. AIP Acquisition LLC (“Patent Owner”) filed a Patent
Owner Response (“PO Resp.”) on August 10, 2015. Paper 13. On October
31, 2015, Petitioner filed a Reply (“Pet. Reply”) to the Patent Owner
Response. Paper 17. Oral hearing was held on January 27, 2016.1
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown, by a
preponderance of the evidence, that claims 1–9, 11–24, and 26–29 are
unpatentable.
A. Related Proceedings
Petitioner identified the following district court actions in which the
’247 patent is involved: AIP Acquisition LLC v. Verizon Commc’ns Inc.,
Civ. Action No. 14-00516 (D. Del.); AIP Acquisition LLC v. Sprint Corp.,
Civ. Action No. 14-00514 (D. Del.); AIP Acquisition LLC v. AT&T Mobility
LLC, Civ. Action No. 14-00513 (D. Del.); and AIP Acquisition LLC v.
Vonage Holdings Corp., Civ. Action No. 14-00002 (D. Del.). Pet. 1.

1 The record includes a transcript of the oral hearing (“Hr’g Tr.”). Paper 27.
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B. The ’247 Patent (Ex. 1001)
The ’247 patent, which expired on October 11, 2014, relates to
methods and systems for allowing “communication between otherwise
incompatible communication networks in a manner that is transparent to the
calling party.” Ex. 1001, 1:61–63. For example, claimed methods allow the
Internet, or another data network, to function like a telecommunications
network. Id. at 6:35–37. Calling parties may dial remote locations for the
price of a local access and service fee to have voice conversations with
called parties in those locations and to avoid using long distance carriers. Id.
at 6:37–41. In order to make such calls, a local system may be dialed via
computer access or a regular telephone, which prompts the calling party for
the called party’s telephone number or other identification. Id. at 6:41–44.
The calling party then is connected to the called party over the Internet or
another data network, such as by connecting the parties via a node through a
local call or through other networks. Id. at 6:44–46. For example, a calling
party may access a node that converts the telephone transmission (e.g., the
voice transmission) into data supported by the network chosen by the node.
Id. at 6:47–49. In this example, a network may connect to another node
proximate to the called party that then converts the data transmission back
into a voice communication and converts the voice communication into a
local call to the called party with the called party node operated by an
independent service provider located elsewhere, such as in another country.
Id. at 6:49–53.
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A method, as recited in the claims under review, is illustrated by the
conceptual block diagram in Figure 9, reproduced below:

Figure 9 provides an overview of the transmission flow between a calling
party and a called party. See id. at 6:35–55. In Figure 9 of the ’247 patent, a
conceptual block diagram depicts the principles of operation of the method,
as recited in independent claim 1, for transmitting voice communications
between a calling party and a called party over a data network or another
network. Id. at 3:66–67, 14:41–60. The calling party at calling location 48
transmits a call to calling party access device 12 via intercept 16 over link
50A. Id. at 15:9–17. Intercept 16 may be part of central local node 18. Id.
at 15:26–27. Local node 18 receives transmissions from access device 12,
converts those transmissions from a first format (e.g., a telecommunication
protocol) to an internet protocol for transmission over data network 20, and
sends the converted transmissions over data network 20 in order to establish
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and transmit voice communication for a phone call with called party access
device 14. Id. at Fig. 9.
As an alternative to communicating through data network 20,
additional two-way direct link connections 46A–E are depicted. Id. at
14:43–50. Through these connections, calling party access device 12 may
route communications to called party access device 14 via either
communications network 102 or another network 200, such as a cellular,
Asynchronous Transfer Mode (ATM), or frame relay network. Id.; see id. at
7:34–39. Access device 14 may receive the voice communication via
central local node 24 and/or central office 22. Id. at 15:18–22. Central local
node 24 and central office 22 may be separate components. Id. at 15:28–29.
The transmissions are converted from the internet protocol (in the case
where the transmission was transmitted over data network 20) to another
format suitable for reception by access device 14, such as the
telecommunications protocol from which the transmissions were converted
originally. See id. at 4:29–37.
C. Illustrative Claims
Independent claims 1 and 16 are the only independent claims, and are
reproduced below:
1. A method for communication between two access
devices via one or more networks, comprising the steps:
receiving a transmission in a first format through a first
communication network from a first access device, the first
format comprising a telecommunication protocol for
establishing and transmitting voice communication for a phone

2 In Figure 9 of Exhibit 1001, communications network 10 is identified as
“voice network 10.”
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call in one of a digital telephone network, an analog telephone
network, and a cellular network;
performing a first conversion converting the transmission
from the first format to a second format, the second format
being internet protocol;
sending the converted transmission through a second
communication network, the second communication network
being the Internet, for reception by a second access device; and
performing a second conversion further converting the
converted transmission from the second format to a further
format suitable for the second access device, wherein the first
access device and the second access device comprise
telecommunication nodes, and said further format comprises
said first format or another telecommunication protocol.

16. A system for transmitting communications from a
calling party to a called party, comprising a communication
node accessible by the calling party using a first network, said
node being a telecommunication node configured for receiving
a transmission in a first format from the calling party,
converting the transmission received from the calling party
from the first format to a second format, and transmitting the
converted transmission through the Internet to a further node
capable of connecting to the called party on a further network,
wherein said first format comprises a telecommunication
protocol for establishing and transmitting voice
communications for phone calls in one of a digital telephone
network, an analog telephone network, and a cellular network,
and wherein said second format is Internet protocol.
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D. Asserted Grounds of Unpatentability
We instituted an inter partes review based on Petitioner’s assertion
that claims 1–9, 11–24, and 26–29 are unpatentable on the following
grounds of unpatentability under 35 U.S.C. § 103(a):
References Basis Claim(s) Under
Review
Weinstein3 and RFC11904 § 103(a)
1–8, 12, 15–23, and
27–29
Weinstein, RFC1190, and
Gurrie5
§ 103(a) 9, 11, 13, 24, and 26
Weinstein, RFC1190,
and ISI6
§ 103(a) 14

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms of an expired patent are given
their ordinary and customary meaning, as would be understood by a person
of ordinary skill in the art, at the time of the invention, in light of the
language of the claims, the specification, and the prosecution history of

3 Clifford J. Weinstein and James W. Forgie, Experience with Speech
Communication in Packet Networks, IEEE JOURNAL ON SELECTED AREAS IN
COMMS., SPECIAL ISSUE ON PACKET SWITCHED VOICE AND DATA COMMS,
vol. SAC-1, no. 6, 963–980 (1983) (Ex. 1010) (“Weinstein”).
4 Request for Comments 1190, “Experimental Internet Stream Protocol,
Version 2 (ST-II),” C. Toplocic ed. (1990) (Ex. 1011) (“RFC1190”).
5 Michael L. Gurrie and Patrick J. O’Connor, Voice/Data
Telecommunications Systems: An Introduction to Technology, PRENTICE-
HALL (1986) (Ex. 1012) (“Gurrie”).
6 University of Southern California Information Sciences Institute, “1982
Annual Technical Report: A Research Program in Computer Technology,”
Report No. ISI/SR-83-23, Chapter 7 (March 1983) (Ex. 1014) (“ISI”).
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record. We review the expired patent claims according to the standard
applied by the district courts. See In re Rambus, 694 F.3d 42, 46 (Fed. Cir.
2012). Specifically, we apply the principles set forth in Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). A “claim term will not receive
its ordinary meaning if the patentee acted as his own lexicographer and
clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). Any special definition for a claim
term must be set forth in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a special definition or other consideration,
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). For purposes of this
decision, we find it necessary to provide an express construction only for
“internet protocol” and “Internet protocol.”
1. Prosecution History and Disclaimer of Scope
Patent Owner argues the patent applicant disclaimed a broader scope
of “internet protocol” and “Internet protocol” that would encompass
anything other than the proper noun “Internet Protocol” that is one of the
two specific protocols that makes up TCP/IP (Transmission Control
Protocol/Internet Protocol). PO Resp. 10–17. Specifically, Patent Owner
contends that, in responses to office actions, the patent applicant amended
the claims to remove the article “an” that originally preceded the recitation
of both “internet protocol” and “Internet protocol,” in the claims that
eventually issued as claims 1 and 16, respectively, of the ’247 patent. Id. In
other words, Patent Owner argues that the deletion of the instances of the
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article “an” that originally preceded “internet protocol” and “Internet
protocol” changed these terms so that they refer “to a specific protocol, not
just any internet protocol.” Id. at 10–11, 14–15 (emphases added). Patent
Owner further argues the protocol referred to by both “Internet protocol” and
“internet protocol” is “the Internet Protocol (IP) of ‘transmission control
protocol/Internet protocol’ TCP/IP shown in Fig. 8 of the ’247 patent
specification.” Id. at 12, 17.
Patent Owner also contends the patent applicant’s arguments,
submitted with its amendments that deleted the article “an,” explain that the
claims were amended to refer to a specific protocol. PO Resp. 11, 15–17.
The patent applicant’s statements accompanying the amendments included
the following:
[(1)] Independent claim 38 [(issued claim 1)] further recites that
the transmission is converted to a second format comprising
Internet protocol and sent via the Internet to a second access
device. Support for this is shown in Fig. 8 which depicts
converters A-F in a central node that sends transmission to a
global network of high capacity data networks including the
Internet TCP/IP[; and
(2)] Claims 38 [(issued claim 1)], 41, 44, 58 [(issued claim 16)],
62, 70, and 71 are directed to aspects of the embodiment of the
present invention . . . as each of these claims requires . . . the
transmission is converted to Internet protocol and sent using
Internet protocol.
Id. at 11 (quoting Ex. 1006, 81), 15 (quoting Ex. 1006, 33) (emphases,
numbering, and formatting added). Patent Owner asserts the amendment
and patent applicant’s accompanying arguments demonstrate a clear
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disavowal of scope, such that no further amendment of the claim text was
required. Id.; Tr. 33:7–18.
In response to Patent Owner’s disclaimer arguments, Petitioner asserts
that the patent applicant’s claim amendments and arguments do not
constitute a clear and unmistakable disavowal or disclaimer. Pet. Reply 4–5
(citing Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67
(Fed. Cir. 2012); 01 Communique Lab. v. LogMeIn, Inc., 687 F.3d 1292,
1297 (Fed. Cir. 2012)). Petitioner argues the patent applicant’s arguments
that accompanied the amendments were merely restatements of the claim
language, which do not represent a clear and unmistakable disclaimer of
scope. Id. at 5. Accordingly, Petitioner contends that there is no basis to
limit the scope of “internet protocol” or “Internet protocol” to the Internet
Protocol that is part of TCP/IP. Id. at 5.
Although it is possible for a patent applicant to disclaim scope of a
recited term, Petitioner is correct that disclaimer requires a clear disavowal
of that allegedly ceded scope. Purdue Pharma L.P. v. Endo Pharm. Inc.,
438 F.3d 1123, 1136 (Fed. Cir. 2006) (“a patentee may limit the meaning of
a claim term by making a clear and unmistakable disavowal of scope during
prosecution”); cf. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d
1366, 1375 (Fed. Cir. 2008) (“Prosecution disclaimer does not apply to an
ambiguous disavowal.”). At oral argument, Patent Owner acknowledged
that “if you just had the deletion of the article ‘an,’ it may – may or may not
leave some confusion,” but asserted the arguments submitted with the
amendments “made clear . . . that either the lower case I, lower case P or the
upper case I, lower case p internet protocol/Internet protocol” refer to the
“Internet Protocol,” which is a part of “TCP/IP.” Tr. 32:1–18. Patent
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Owner further conceded that the patent applicant did not explicitly articulate
that the claim terms “internet protocol” and “Internet protocol” referred to
the specific protocol that was the industry standard “Internet Protocol.” Id.
at 35:14–17. In response to questions about patent applicant’s statements
accompanying the subject amendments that the claims comprise or include
TCP/IP, which indicate a broader scope not limited to only TCP/IP, Patent
Owner argues that an ordinarily skilled artisan would have looked at the
specification and seen that the only protocol the specification mentions is
TCP/IP. Id. at 32:22–33:6.
Based on the facts and argument presented, there is not sufficient
evidence to find a clear and unmistakable disavowal of claim scope. The
only amendment to the claims pointed to by Patent Owner is the removal of
the article “an,” which originally preceded each of the disputed phrases.
Notably, the patent applicant did not elect to amend the claims to recite “the
Internet Protocol.” With respect to the patent applicant’s argument in its
responses to office actions, we agree with Petitioner that the phrasing
appears to merely restate the language recited in the claims. We find
nothing presented by Patent Owner clearly indicates the patent applicant
intended to disavow any scope covered by the plain and ordinary meaning of
the recited terms. Patent Owner has not pointed to any discussion by the
patent applicant that “internet protocol” or “Internet protocol” was intended
to be limited to one particular protocol (specifically the “Internet Protocol”
that is part of TCP/IP). Accordingly, we find Patent Owner failed to
demonstrate that the patent applicant disavowed any scope within the
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ordinary and customary meaning of “internet protocol” or “Internet
protocol.”
2. Construction of “internet protocol” and “Internet protocol”
As discussed above, Patent Owner has not demonstrated, on this
record, that the patent applicant disavowed any scope of the ordinary and
customary meaning of the phrases “internet protocol” and “Internet
protocol” through amendment or argument in the prosecution history of the
’247 patent. Nevertheless, even if not disavowed, we look to the claims and
specification to determine the proper scope of the ordinary and customary
meaning of the recited phrases, as would be understood by a person of
ordinary skill in the art, at the time of the invention.
Claim 1 recites converting a transmission from a first format to a
second format, the second format being “internet protocol.” Claim 16
recites a “second format is Internet protocol.” In our Decision to Institute,
we preliminarily construed “internet protocol” as “a specific set of rules,
procedures, or conventions relating to the format and timing of data
transmission between two devices on different networks.” Dec. on Inst. 12.
We preliminarily construed “Internet protocol” as “a specific set of rules,
procedures, or conventions relating to the format and timing of data
transmission over the Internet.” Id. at 14.
Petitioner argues that the Board’s preliminary constructions of
“internet protocol” and “Internet protocol” are the correct constructions, and
should be maintained. Pet. Reply 3. Patent Owner urges the Board to
construe both “internet protocol” and “Internet protocol” to have the same
meaning. PO Resp. 23. Specifically, Patent Owner argues both terms
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should be construed as “the ‘Internet Protocol (IP) of the ‘transmission
control protocol/Internet protocol TCP/IP.’” Id.
Patent Owner’s primary argument for its proposed construction of
both terms is that the deletion of the article “an” and the accompanying
argument presented by the patent applicant during prosecution, as discussed
above with respect to Patent Owner’s disclaimer argument, indicate that both
“internet protocol” and “Internet protocol” are proper nouns referring to a
specific protocol, namely the Internet Protocol that is a part of TCP/IP. PO
Resp. 18–23. Patent Owner also asserts that a person having ordinary skill
in the art would have understood “internet protocol,” recited in claim 1, to
refer to the Internet Protocol (of TCP/IP) because that person “would
understand that TCP/IP includes the Internet protocol (IP).” Id. at 19.
Finally, Patent Owner argues the specification of the ’247 patent discloses
that the Internet uses TCP/IP and, accordingly, supports Patent Owner’s
proposed construction of “internet protocol” and “Internet protocol.” Id. at
19–20, 22.
The relevant portions of the specification of the ’247 patent identified
by the parties state:
The Internet network differs from frame relay switching and
asynchronous transfer mode by using transmission control
protocol/Internet pro[tocol], which is a set of protocols
developed by the Department of Defense to link dissimilar
computers across a variety of other networks and protocols.
. . .
Both servers 60, 62 are networked using transmission control
protocol/Internet pro[tocol] TCP/IP, which is a set of protocols
that link dissimilar computers across a variety of other networks
and protocols as conventionally used on local area networks,
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minicomputers and mainframes, or are networked with a router
in the case of an ATM.
Ex. 1001, 7:34–39, 7:45–51. Those portions of the specification refers
specifically to “transmission control protocol/Internet pro[tocol] TCP/IP.”
Other than the recitation in claim 1, the ’247 patent never references
“internet protocol,” with a lowercase “i” and a lowercase “p.” The above-
quoted sentences explain that TCP and IP, taken together, form a set of
protocols that links dissimilar computers across various networks and
protocols. Those sentences also explain that the Internet’s use of TCP/IP
distinguishes the Internet from frame relay switching and ATM networks.
We find nothing, and neither Patent Owner nor Petitioner has pointed
to anything, in the ’247 patent indicating that the inventor expressed a
definition for “internet protocol” or “Internet protocol.” Additionally, the
parties have not pointed to anything in the specification of the ’247 patent
that adds clarity to the ordinary and customary meaning of “internet
protocol” and “Internet protocol.” Therefore, we look to the extrinsic
evidence submitted by the parties to aid our construction of “internet
protocol” and “Internet protocol” according to their ordinary and customary
meanings as would have been understood by an ordinarily skilled artisan at
the time of invention of the ’247 patent.
According to Patent Owner, in 1996, internetworking was understood
to be the transmission of data through different networks, using either “a
connection-oriented concatenation of virtual circuit subnets [or] a datagram
internet style.” Ex. 2013 ¶ 29 (quoting Ex. 2009, 401–403). Weinstein uses
the terms “internet” and “internetwork” interchangeably. See Ex. 1010
passim. The evidence submitted in this proceeding explains that
internetworking is communicating among dissimilar networks. See, e.g., Ex.
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1010, 1 (“techniques have been developed for internetwork communication,
among dissimilar nets”). Tanenbaum explains that, for internetworks
comprised of concatenated virtual circuit networks, internetworking was
accomplished through the use of multiprotocol routers (or gateways)
between disparate virtual circuit networks. Ex. 2009, 8–9. The gateways
convert the messages between the different protocols used by the disparate
networks. Id. at 8. Datagram networks similarly use gateways between
disparate networks and may translate protocols between networks. Id. at 9–
10. Tanenbaum, however, explains that an alternate approach is to use
“universal ‘internet’ packet[s]” that all routers would recognize and are
“designed to be carried through many networks,” i.e., internet protocols. Id.
at 10.
A “protocol” is “[a] specific set of rules, procedures or conventions
relating to the format and timing of data transmission between two devices.”
NEWTON’S TELECOM DICTIONARY 484 (11th ed. 1996) (Ex. 3001). Patent
Owner argues that “TCP/IP protocols were developed in [the] 1970s to
handle data communication over internetworks as more and more networks
were connected to the ARPANET [Advanced Research Projects Agency
Network].” Ex. 2013 ¶ 38.
The extrinsic evidence of record indicates that the Internet is one
example of internetworking and Internet Protocol is one specific “internet
protocol.” Ex. 2009, 10; Ex. 1001, 7:34–39. Accordingly, we construe
internet protocol to be “a specific set of rules, procedures, or conventions
relating to the format and timing of data transmission between two devices
on different networks.”
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Neither side has pointed to persuasive evidence that the patent
applicant’s use of different capitalization in different claims was merely
oversight or error. Therefore, because there is a meaningful and logical way
to distinguish the constructions of “internet protocol” and “Internet protocol”
based on the selected capitalization of each phrase, we construe “internet
protocol” and “Internet protocol” differently from each other. We have
already discussed our construction of “internet protocol.” Accordingly, we
construe “Internet protocol” to be “a specific set of rules, procedures, or
conventions relating to the format and timing of data transmission between
two devices over the Internet.”
Our constructions of both “Internet protocol” and “internet protocol”
include the Internet Protocol that is part of TCP/IP and, thus, are consistent
with the specification of the ’247 patent. Moreover, those constructions are
the ordinary and customary meaning that a person having ordinary skill in
the art would have attributed to the disputed claim terms, in part because that
person would have understood that “internet protocol,” “Internet protocol,”
and “the Internet Protocol” are distinct phrases of increasingly narrow scope.
B. Submitted Evidence
1. Weinstein (Ex. 1010)
Weinstein is an article published in the December 1983 issue of IEEE
Journal on Selected Areas in Communications. Weinstein describes
research work sponsored by the United States’ Defense Advanced Research
Projects Agency (“DARPA”) which began with experiments conducted over
the Advanced Research Projects Agency Network (“ARPANET”). Ex.
1010, 1. The work continued as the ARPANET was connected to additional
networks, including the wide-band packet satellite network (WB SATNET).
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Id. The relevant structural details of the interconnected networks may be
better understood by referencing Figure 9 of Weinstein, which is reproduced
below.

Figure 9 of Weinstein depicts a “[w]ide-band internetwork packet voice/data
system, with illustration of primary local area facilities at each site.” Id. at
13.
In the lower left corner, Figure 9 depicts a telephone connected to a
switched telephone network (STN). Figure 9 depicts three other separate
networks (i.e., a packet radio network, an exploratory data network, and a
local cable network), all of which are joined together, along with the STN,
via a wide-band satellite network. Id. at 13–15. Weinstein discloses
“significant benefits” for integrating voice with data including potential cost
savings, enhanced service, voice communications among users on different
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types of networks, control flexibility, and secure voice communications. Id.
at 1.
Weinstein describes an Internet Stream Protocol (“ST”) which allows
the interconnection of these four networks over a packet-based satellite
network. Id. at 12. In the case of the STN, the signals used in the
telecommunications network are converted into the ST protocol by the
internetwork voice/data gateway. Id. at 11. The converted ST signal can
then be transmitted through the wideband satellite network. Id. at 12.
2. RFC 1190 (Ex. 1011)
RFC1190 is a publication describing version two of the Internet
Stream Protocol (“ST-II”), which is a revised version of the ST protocol
used in Weinstein. RFC1190 is intended to be easier to implement and
supports a wider range of applications. Ex. 1011, Abstract. By way of
introduction, RFC1190 explains that the motivation for the original ST
protocol was that internet protocol (“IP”) did not support voice applications.
Id. at 7. RFC1190 states that ST “is an internet protocol at the same layer as
IP” and “proved quite useful in several early experiments that involved voice
conferences in the Internet.” Id.
RFC1190 explains that portions of the Internet support ST-II, and in
areas where ST-II is not supported, the ST-II packets may be encapsulated in
IP packets. Id. at 9. Encapsulating ST-II packets allows connections across
Internet routers that do not support the ST protocol. Id. at 64. When
encapsulating ST-II packets, performance on the Internet cannot be
guaranteed. Id. at 65. However, Type-of-Service may be set to request
specific service (e.g., low delay, high throughput, normal reliability). Id. at
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64–65. Also, the Source Route Option may allow the originator of the data
to pre-specify an explicit path to the target. Id. at 46.
3. Gurrie (Ex. 1012)
Gurrie consists of excerpted pages from a book, which relates to the
technology used for transmitting data and voice in telecommunications
systems, published in 1986. Ex. 1012. Gurrie describes how a private
telephone network may include “a single switch that connects calls from one
station to another within an organization.” Id. at 9. That single switch is
referred to as a private branch exchange, or PBX. Id. The PBX allows “all
the telephones within [an] organization to call one another and to reach the
public network outside the organization.” Id. Gurrie describes various
features and benefits of a PBX, including automatic route selection, in which
the PBX will “automatically select a trunk in the most economical trunk
group” for making a call. Id. at 12.
4. ISI (Ex. 1014)
ISI is a report published in March 1983, a portion of which describes a
wideband communication project that would transmit digitized voice over
ARPANET. Ex. 1014, 9. While the project concentrated on voice
communication, the wideband communication project worked on integrated
communication of several media, such as video. Id. The goal was to
develop real-time multimedia teleconferencing using wideband packet
switched networks. Id. at 10. The report discusses the STN interface to
allow the telephone network to communicate with a packet voice system.
Id. at 14, 16–18. The report also discusses experimentation with other media
including facsimile. Id. at 22.
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C. Patent Owner’s Motion to Exclude Evidence (Paper 20)
Patent Owner moved to exclude certain evidence submitted by
Petitioner in support of its Reply. Paper 20. Petitioner filed an opposition
and Patent Owner filed a reply in support of its Motion to Exclude Evidence.
Papers 22, 24. Patent Owner argued that each of the exhibits it moved to
exclude should have been filed as supplemental evidence, essentially
arguing that the exhibits were not within the proper scope of a reply. Paper
20, 1, passim. We explicitly told the parties that a motion to exclude
evidence “should not include arguments alleging that a reply exceeds the
scope of a proper reply.” Paper 11, 2. At oral argument, we discussed the
impropriety of Patent Owner including those arguments in its Motion to
Exclude Evidence in direct contravention of our directions and order. Tr.
3:16–7:20. At that time, Patent Owner withdrew its Motion to Exclude
Evidence. Id. at 7:13–18. Accordingly, Patent Owner’s Motion to Exclude
Evidence is not before us. We reviewed Petitioner’s Reply and determined
that Petitioner’s arguments were properly responsive to issues raised by
Patent Owner in its Response.
D. Asserted Obviousness of Claims 1–8, 12, 15–23, and 27–29 in
View of Weinstein and RFC1190
Petitioner challenges claims 1–8, 12, 15–23, and 27–29 under
35 U.S.C. § 103(a) as obvious over Weinstein and RFC1190. Pet. 15–48.
Petitioner asserts that Weinstein discloses all of the limitations of claims 1–
8, 12, 15–23, and 27–29. Id. Petitioner relies on RFC1190 for teaching that
Weinstein’s ST is an internet protocol and, further, a second version of ST
(i.e., ST-II), which is an internet protocol. Id. at 17–18. Petitioner also
asserts that it would have been obvious to one of ordinary skill in the art to
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replace Weinstein’s ST protocol with RFC1190’s ST-II protocol because
ST-II was a revision to ST and provided benefits, such as ease of
implementation, support for a wider range of applications, eliminating the
need for an explicit Access Controller, simplifying traffic stream
management, and providing robustness and recovery mechanisms. Pet. 18–
20 (citing Ex. 1011, 1, 8, 57–59, Ex. 1023, 26, Ex. 1031, 20). Upon
reviewing the papers and evidence submitted by both parties, Petitioner has
demonstrated, by a preponderance of the evidence, that the subject matter of
claims 1–8, 12, 15–23, and 27–29 would have been obvious in view of the
combination of Weinstein and RFC1190. Specifically, we find Petitioner
has demonstrated that each limitation of claims 1–8, 12, 15–23, and 27–29 is
taught by a combination of Weinstein and RFC1190. We determine, based
on the entirety of the evidence presented by the parties, including Patent
Owner’s evidence on secondary considerations, that a person having
ordinary skill in the art would have combined the relevant teachings from
the references in a manner that results in the recited system, arranged as
claimed. Accordingly, the subject matter of claims 1–8, 12, 15–23, and 27–
29 would have been obvious in view of Weinstein and RFC1190. We
discuss the contested issues below in more detail.
1. Contested Limitations - “internet protocol,” “Internet
Protocol,” Converting a Transmission From a First
Protocol to Internet/internet protocol, and “the Internet”
Petitioner argues that ST, described in Weinstein, is an internet
protocol because “[t]he ST protocol is ‘designed to be compatible with IP
[Internet Protocol],’ and ‘operates at an internet level.’” Pet. 17 (quoting Ex.
1010, 966, 974). Weinstein explains that “[t]he lower level protocol, which
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has come to be named ‘ST,’ provides an efficient internet transport
mechanism [and] operates at the same level in the protocol hierarchy as IP,
the DoD standard internet protocol for datagram traffic.” Ex. 1010, 4.
Additionally, Petitioner challenges claims 1–8, 12, 15–23, and 27–29 as
obvious in view of the combination of Weinstein and RFC1190, and asserts
that, to the extent Weinstein’s ST is not considered an internet protocol,
ST-II, which is the successor protocol to ST disclosed by RFC1190, teaches
an internet protocol. Pet. 17–20. Petitioner argues ST-II is a revised and
updated version of ST, and ST-II is an internet protocol for the same reasons
that ST is an internet protocol. Id. at 17. Petitioner further argues ST-II is
an internet protocol because RFC1190 explicitly “states that the revised ‘ST
is an internet protocol.’” Id. (quoting Ex. 1011, 7).
Petitioner also argues ST and ST-II are Internet protocols because “ST
operates as an extension of IP, the packet arrives at the same network service
access point that IP uses to receive IP datagrams,” and, thus, an ordinarily
skilled artisan would consider ST and ST-II Internet protocols. Pet. 42–43
(quoting Ex. 1011, 75). Petitioner asserts RFC1190 teaches transmitting
voice using internet/Internet protocol because RFC1190 discloses
encapsulating ST-II packets using Internet Protocol. Id. at 17–18 (citing Ex.
1011, 64), 42–43 (citing Ex. 1011, 9, 75).
Patent Owner argues that neither Weinstein nor RFC1190 discloses
“internet protocol,” as recited in claim 1, or “Internet protocol,” as recited in
claim 16, or the conversion of voice transmissions into those protocols. PO
Resp. 26–30. Patent Owner’s argument, however, relies on constructions of
“internet protocol” and “Internet Protocol” that we have not adopted. Patent
Owner acknowledged that ST-II is an internet protocol under our
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preliminary construction provided in the Decision to Institute. Tr. 36:13–17.
Our construction now is the same as our preliminary construction.
Accordingly, after reviewing Petitioner’s arguments and in consideration of
Patent Owner’s acknowledgment that ST-II is an internet protocol, as we
have construed it, we find ST-II meets both the recited “internet protocol”
and “Internet protocol.” We further find that “internet protocol” and
“Internet protocol,” as we have construed them, also read on Weinstein’s ST
protocol. Moreover, even under Patent Owner’s proposed construction, we
find Petitioner has demonstrated that the combination of Weinstein and
RFC1190 teaches using the Internet Protocol of TCP/IP at least because
discloses encapsulating ST-II in IP packets.
Petitioner argues Weinstein discloses converting a signal from any
one of a digital telephone network, an analog telephone network, and a
cellular network to ST format, which is then transmitted over ARPANET
and a wide-band satellite network. Id. at 22–29. Petitioner asserts that a
person of ordinary skill in the art would have understood ARPANET and the
wide-band satellite network to constitute a portion of the Internet. Id. at 16,
17 (citing Ex. 1008, 14–16; Ex. 1019, 57). Thus, Petitioner asserts
Weinstein teaches “sending the converted transmission through . . . the
Internet,” as recited in claim 1 and “a telecommunication node configured
for . . . transmitting the converted transmission through the Internet,” as
recited in claim 16. Id. at 16, 17, 42.
Patent Owner asserts RFC1190’s disclosure of encapsulating ST-II in
IP packets does not meet the recited conversion of voice packets into
internet protocol or Internet protocol. PO Resp. 30–31. Notably, however,
Petitioner does not argue the encapsulation alone meets the recited
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conversion. Rather, Petitioner argues conversion from various
telecommunications transmissions into a packetized format and optional
encapsulation in IP packets meets the recited conversion. Pet. 26–29; Pet.
Reply 9–11. We agree with Petitioner that, under our construction of
“internet protocol” and “Internet protocol,” the conversion from the various
voice protocols to ST meets the recited conversion. Moreover, even under
Patent Owner’s proposed constructions of “internet protocol” and “Internet
protocol,” the steps in Petitioner’s proposed Weinstein-RFC1190
combination of converting the voice protocols to ST-II and encapsulating
those packets into IP packets meets the recited conversion because the
proposed combination converts voice transmissions from various
telecommunication protocols to Internet Protocol (of TCP/IP) packets, using
the two-step process of generating ST packets and encapsulating those
packets in IP packets. Ex. 1010, 4; Ex. 1011, 7, 64.
Patent Owner also argues Weinstein does not disclose “the Internet.”
PO Resp. 33–37. Once again, it is notable that Petitioner’s challenge to the
claims relies on a combination of Weinstein and RFC1190, not Weinstein
alone. Petitioner asserts there is no dispute that RFC1190 discloses
encapsulation of ST-II packets into IP packets, which are sent over the
Internet. Pet. Reply 17. Petitioner further argues Weinstein discloses
sending data over networks that an ordinarily skilled artisan in 1982 would
have understood to be the Internet. Id. at 17–18. Petitioner notes that each
of the networks depicted in Weinstein “used the Internet Protocol [(of
TCP/IP)] and was part of the Internet in the early 1980s.” Id. at 18.
Petitioner also points to RFC1190’s disclosure that “the original ST protocol
supported ‘voice conferences in the Internet,’” and “[t]he IP encapsulation
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feature of ST-II enabled ‘interconnections across Internet routers that might
not support the ST protocol.’” Id. (quoting Ex. 1011, 7; Ex. 1008, 57).
We agree with Patent Owner that, based on the evidence presented,
the ARPANET did not exist at the time of invention of the ’274 patent and,
therefore, did not become the Internet of that time. Nevertheless, a
determination of what an ordinarily skilled artisan would have considered
obvious at the time of invention of the ’274 patent must take into account the
relevant teachings that Petitioner relies upon from Weinstein. The evidence
of record indicates that a skilled artisan would have understood the specific
networks making up the Internet at any particular point in time may change
and that the Internet has evolved over time. Specifically, Weinstein explains
that its networks used the Internet Protocol, and RFC1190 discloses
encapsulating ST-II packets into IP packets. In light of the evolving nature
of the Internet, we are persuaded that ARPANET and the wide-band satellite
network, as disclosed in Weinstein, would have been understood by an
ordinarily skilled artisan at the time of invention of the ’247 patent to be a
part of the Internet. Thus, the evidence as a whole demonstrates that the
combination of Weinstein and RFC1190 teaches sending voice packets over
the Internet to a person having ordinary skill in the art. Accordingly, an
ordinarily skilled artisan would have known to take Weinstein’s teachings of
sending messages over networks, which comprised the Internet at the time
Weinstein was published, and adopt and adapt those teachings as appropriate
based on the networks comprising the Internet at the time of invention of the
’247 patent.
Accordingly, we are persuaded Weinstein discloses converting voice
transmissions into internet/Internet protocol and sending those transmissions
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over the Internet. RFC1190 provides evidence that artisans in the field
understood ST packets were sent over the Internet. Compare Ex. 1011, 7
(“ST proved quite useful in several early experiments that involved voice
conferences in the Internet”) (emphasis added), with id. (“ST incorporates
the concept of streams across an internet”) (emphasis added). Moreover, the
specific combination Petitioner proposes includes encapsulating ST packets
in IP packets. A person having ordinary skill in the art would understand
that the IP packets would then be sent over the Internet, because that is the
stated purpose of encapsulating the data in IP packets. Ex. 1011, 64 (“ST
packets may be encapsulated in IP to allow them to pass through routers that
don’t support the ST Protocol.”).
2. Petitioner’s Rationale for Combining the Teachings From
Weinstein and RFC1190
Petitioner asserts an ordinarily skilled artisan would have combined
RFC1190’s ST-II protocol with the aspect of Weinstein involving
transmission of voice over a data network because it would be merely
applying a known technique (ST-II) to a known system (Weinstein) to yield
predictable results. Pet. 17–19. Alternatively, Petitioner argues its proposed
“combination is merely the simple substitution of one known element (ST
protocol) for another (ST-II taught by RFC1190) to obtain predictable
results (such as the ability to run over an un-modified Internet system).” Id.
at 19.
Patent Owner asserts an ordinarily skilled artisan would not have
combined ST-II with the Internet Protocol because ST-II over IP did not
work. PO Resp. 48–56. Specifically, Patent Owner contends
IP-encapsulated ST-II “packets fail to operate for its intended purpose,
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namely, the transmission of intelligible audio/video communication.” Id. at
48–49. In support, Patent Owner cites testimony, from a witness who tested
IP-encapsulated ST-II, that the quality of audio and video conferencing “was
too poor to carry on a conversation of more than one or two random words
or syllables and the video displayed was not moving frames but frozen
picture images.” Id. at 49 (citing Ex. 2023 ¶¶ 73–75). Patent Owner also
cited a document identifying certain deficiencies of using IP-encapsulated
ST-II. Id. (quoting Ex. 2015, 137–38). Patent Owner further asserts the
proposed combination of Weinstein and RFC1190 does not yield predictable
results because Weinstein, which disclosed ST, was not compatible with
RFC1190’s ST-II. Id. at 51–56. Patent Owner’s incompatibility argument
can be broken down into two concepts: (1) because ST-II is not backward-
compatible (i.e., nodes utilizing the original ST protocol could not
communicate with nodes utilizing the ST-II protocol), the results of
combining ST-II with the teachings from Weinstein are unpredictable (id. at
51–53); and (2) at the time of invention of the ’247 patent, a person having
ordinary skill in the art would not have resurrected the then-defunct
ARPANET hardware to implement ST-II on that hardware and, to the extent
it was attempted, it would yield unpredictable results because of deficiencies
in ST-II, which Patent Owner argues would require undue experimentation.
Id. at 53–56.
To the extent Patent Owner’s arguments could be construed as a non-
enablement argument, Patent Owner was unable to point to any clear
articulation of such an argument in its Patent Owner Response. Tr. 41:3–
43:24. Furthermore, at oral argument, Patent Owner removed any doubt by
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conceding that it had no argument that RFC1190, which discloses ST-II, was
non-enabled. Id. at 44:7–20.
To the extent Patent Owner is arguing that an ordinarily skilled artisan
would have lacked motivation to combine ST-II with the Internet Protocol,
that argument fails at least because the use of ST-II over IP is described
within a single reference, RFC1190. Thus, no combination of references is
required to provide the teaching of using ST-II over IP, and, accordingly,
any argument against combining ST-II with the Internet Protocol is
unfounded. Moreover, Petitioner’s various references describing
implementations of using ST-II over the Internet to transmit voice provide
evidence in favor of a finding that it would have been obvious to transmit
voice over the Internet using ST protocol.
That leaves, at most, an argument by Patent Owner that an ordinarily
skilled artisan would not have combined Weinstein’s asserted teachings (i.e.,
converting a voice transmission from a telecommunication protocol to ST,
transmitting the ST packets over a data network, and converting the voice
transmission back to a telecommunication protocol) with RFC1190’s
asserted teaching (using the ST-II protocol, either alone or encapsulated in
IP packets, to transmit packets across a data network).
As discussed above, Petitioner has submitted evidence that internet
engineers near the time of invention of the ’247 patent were implementing
and considering implementing ST-II in various systems for voice
communication across the Internet. Ex. 1023, 1–4; Ex. 1031, 20–21; Ex.
1032, 20–21. Moreover, RFC1190 clearly indicates that ST-II is a revised
version of ST, notwithstanding ST-II’s lack of backward compatibility with
the original ST protocol. Ex. 1011, 1; see Pet. 17. Petitioner also argues an
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ordinarily skilled artisan would have been motivated to upgrade Weinstein’s
ST with RFC1190’s ST-II because RFC1190 identifies various
improvements and benefits of ST-II over ST. Pet. 18–19 (citing Ex. 1011, 1,
8). Petitioner asserts combining RFC1190 with Weinstein is merely the
application of a known technique to a known system yielding predictable
results. Id. at 19.
We are persuaded by Petitioner’s arguments that an ordinarily skilled
artisan would have considered upgrading ST to ST-II, the version available
at the time of invention of the ’247 patent. The fact that ARPANET no
longer existed at the time of invention of the ’247 patent does not render all
of Weinstein’s teachings unavailable to the hypothetical person of ordinary
skill in the art. One would not have needed to “resurrect” the defunct
ARPANET to take advantage of Weinstein’s teachings regarding combining
voice networks with data networks. Rather, one would have gleaned the
knowledge necessary to create a system using a data network to transport
voice communication as a bridge between conventional telephony networks.
We also agree with Petitioner that the submitted evidence regarding other
systems adopting ST-II supports a conclusion that a person having ordinary
skill would have been capable of making any hardware changes required to
implement ST-II.
3. Secondary Considerations – Long Felt Need and Failure of
Others
Finally, Patent Owner argues the evidence “demonstrates that there
were [sic] widespread efforts of skilled workers having knowledge of the
prior art had failed to find a solution to the problem of transmitting voice
communications in the Internet using an Internet protocol.” PO Resp. 37–
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38. Patent Owner further argues the decommissioning of ARPANET,
Weinstein, and ST-II demonstrates “a long felt need and failure of others to
produce the inventive system of the ’247 Patent.” Id. at 38.
Specifically, Patent Owner contends the failure of any particular
system or user community to adopt ST-II demonstrates that it was a failure.
PO Resp. 38–41. Patent Owner asserts that the ST-II specification was
“difficult to implement” (id. at 42), “IP encapsulated ST2 could not support
intelligible voice call” (id. at 43), and “IP encapsulation of ST2 packets did
not support video conference call because the video displayed was not
moving frames but random frozen images of a participant.” Id. at 44. Patent
Owner argues that ST-II was never deployed over the Internet and that IP-
encapsulated ST-II did not function sufficiently to carry on conversations of
more than a few words or syllables but, notably, Patent Owner
acknowledges that some voice transmissions were successfully transmitted
as IP-encapsulated ST-II packets over the Internet. Id. at 43 (“he could not
carry on a conversation of more than one or two random words or
syllables”) (emphasis added). Thus, notwithstanding the evidence that some
IP-encapsulated ST-II packets were successfully transmitted over the
Internet, Patent Owner essentially argues that not enough packets were
transmitted in sequence to carry on a meaningful conversation.
Patent Owner acknowledges it must demonstrate a long felt need and
failure of others to “find a solution for the problem solved by the appellant”
in order to show the failure of others. See PO Resp. 37 (quoting Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983)). Importantly,
Patent Owner has not shown persuasively that the claims under review
require a certain quality or length of transmission or the ability to “carry on a
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conversation.” Even accepting Patent Owner’s assertion that ST-II never
was widely implemented in commercial systems, that fact does not
demonstrate ST-II failed as a technological solution to the identified
problem. Moreover, assuming the efforts regarding development of ST-II
failed, such a failure represents only a single failed attempt and not wide-
spread failure in the industry. Patent Owner has not submitted evidence of
attempts, other than attempts using ST-II protocol, that allegedly failed.
Accordingly, Patent Owner fails to persuasively explain how either
the poor quality or the asserted distinction between implementation, testing,
and deployment phases of software development and, particularly, the
asserted failure of ST-II to be deployed over the Internet, demonstrates the
failure of others to find a solution for the problem the ’247 patent allegedly
solved—i.e., converting a voice transmission from a telecommunications
protocol to internet/Internet protocol, sending the transmission over the
Internet, and converting the transmission back to a telecommunications
protocol.
Having reviewed the entirety of the evidence before us, including
Patent Owner’s evidence on secondary considerations, we are persuaded
Petitioner has demonstrated, by a preponderance of the evidence, that the
combination of Weinstein and RFC1190 renders the subject matter of claims
1–8, 12, 15–23, and 27–29 obvious.
E. Asserted Obviousness of Claims 9, 11, 13, 24, and 26 in View of
Weinstein, RFC1190, and Gurrie
Petitioner challenges claims 9, 11, 13, 24, and 26 under
35 U.S.C. § 103(a) as obvious over Weinstein, RFC1190, and Gurrie. Pet.
48–54. Claims 9 and 24 depend from claims 1 (via claim 8) and 16 (via
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claim 23), respectively, and further recite that the “at least one criteria
[recited in claims 8 and 23] comprises a specified level of transmission
quality.” Claims 11 and 26 depend from claims 1 (via claim 8) and 16 (via
claim 23), respectively, and further recite “wherein the at least one user
criteria [recited in claims 8 and 23] comprises cost of routing.” Claim 13
depends from claim 1 and recites the method “further comprising the step of
storing at least one of subscriber information, rate schedules, and call
details.” Petitioner relies on the same combination of Weinstein and
RFC1190 for teaching the limitations common between claim 1 and claims
9, 11, and 13 as well as the limitations common between claim 16 and
claims 24 and 26.
Petitioner asserts that Gurrie discloses automatic route selection for a
private branch exchange. Id. at 49. Petitioner further asserts that it would
have been obvious to combine Gurrie with the Weinstein-RFC1190 system
or method because Weinstein “suggests connecting its packet network to
other voice communication systems, such as a PBX” and “illustrates in Fig.
9 that a PBX is part of the packet voice/data system deployed at USC-ISI.”
Id. (citing Ex. 1008, 105, Ex. 1010, Figs. 5, 9). Petitioner contends that,
because Weinstein describes users connecting to the system through a PBX,
it would have been obvious to use Weinstein’s system as one potential route
available for the PBX to direct a call to its destination. Id. at 50–51.
Petitioner further argues that both Gurrie and Weinstein discuss connecting
respective communication systems to T1 connections, and, thus, it would
have been within the knowledge of an ordinarily skilled artisan to
incorporate a PBX into Weinstein’s system. Id. at 51. Finally, Petitioner
contends that a skilled artisan would have been motivated to combine
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Weinstein and Gurrie to reduce long-distance calling costs. Id. (citing Ex.
1010, 15, Ex. 1012, 15).
With regard to dependent claims 9, 11, 13, 24, and 26, we similarly
are persuaded by the arguments and evidence presented by Petitioner.
Patent Owner does not present any argument apart from those it presents for
independent claims 1 and 16. PO Resp. 56. We consider Patent Owner to
have admitted those aspects of the ground of unpatentability that are
uncontested by Patent Owner and are material facts. See 37 C.F.R.
§ 42.23(a); see also Paper 10, 3 (“The patent owner is cautioned that any
arguments for patentability not raised in the response will be deemed
waived.”). Based on the evidence and arguments submitted, Petitioner has
shown that the combination of Weinstein, RFC1190, and Gurrie teaches the
limitations recited in claims 9, 11, 13, 24, and 26. Pet. 48–54; PO Resp. 37–
48. Thus, having reviewed the entirety of the evidence before us, including
Patent Owner’s evidence on secondary considerations, we are persuaded
Petitioner has demonstrated, by a preponderance of the evidence, that the
combination of Weinstein, RFC1190, and Gurrie renders the subject matter
of claims 9, 11, 13, 24, and 26 obvious.
F. Asserted Obviousness of Claim 14 in View of Weinstein, RFC1190,
and ISI
Petitioner challenges claim 14 under 35 U.S.C. § 103(a) as obvious
over Weinstein, RFC1190, and ISI. Pet. 57–60. Claim 14 depends from
claim 1 and further recites that the “transmission is related to a fax
transmission.” Petitioner relies on the same combination of Weinstein and
RFC1190 for teaching the limitations common between claims 1 and 14.
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Petitioner further asserts that it would have been obvious to combine
Weinstein’s network to send facsimiles as suggested by ISI, because ISI
“further describes the same packet-voice communication project as
Weinstein,” “Weinstein cites to an earlier report produced by ISI,” and an
ordinarily skilled artisan “would have been led to review all of the reports
submitted by ISI for further details regarding the systems described in
Weinstein.” Id. at 57–58. Petitioner also points to ISI’s statement that
packet switching “must also expand to support media which have not been
accommodated in the past.” Id. at 58 (quoting Ex. 1014, 13) (internal
quotation marks omitted). Finally, Petitioner points to ISI, which describes
“experimentation not only with several voice channels but also with other
media, such as . . . facsimile.” Id. (quoting Ex. 1014, 22) (internal
quotations marks omitted). In addition, Petitioner asserts that Weinstein
describes channel capacity savings when using a packet-based system for
transmitting voice and that one of ordinary skill in the art would have
recognized that similar savings would occur when sending a facsimile
because it is largely a one-sided communication. Id. at 59.
With regard to dependent claim 14, we similarly are persuaded by the
arguments and evidence presented by Petitioner. Patent Owner does not
present any argument apart from those it presents for independent claim 1.
PO Resp. 56. We consider Patent Owner to have admitted those aspects of
the ground of unpatentability that are uncontested by Patent Owner and are
material facts. See 37 C.F.R. § 42.23(a); see also Paper 10, 3 (“The patent
owner is cautioned that any arguments for patentability not raised in the
response will be deemed waived.”). Based on the evidence and arguments
submitted, Petitioner has shown that the combination of Weinstein,
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RFC1190, and ISI teaches the limitations recited in claim 14. Thus, having
reviewed the entirety of the evidence before us, including Patent Owner’s
evidence on secondary considerations, we are persuaded Petitioner has
demonstrated, by a preponderance of the evidence, that the combination of
Weinstein, RFC1190, and ISI renders the subject matter of claim 14
obvious.
III. CONCLUSION
Petitioner has demonstrated, by a preponderance of the evidence, that
claims 1–8, 12, 15, 16–23, and 27–29 are unpatentable over Weinstein and
RFC1190; claims 9, 11, 13, 24, and 26 are unpatentable over Weinstein,
RFC1190, and Gurrie; and claim 14 is unpatentable over Weinstein,
RFC1190, and ISI.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–9, 11–24, and 26–29 of the ’247 patent are
held unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For Patent Owner:
David McCombs
David.mccombs.ipr@haynesboone.com

Thomas King
ipr.thomas.king@haynesboone.com

Theo Foster
ipr.theo.foster@haynesboone.com

For Petitioner:

Chi Eng
chi@englawfirm.com

Alfred Froebrich
afroebrich@lmiplaw.com