09745746 (P.T.A.B. Jan. 9, 2015)

Cisco Systems, Inc.v.Constellation Technologies LLC

Patent Trial and Appeal BoardJan 9, 2015

09745746 (P.T.A.B. Jan. 9, 2015)

Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: January 09, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CISCO SYSTEMS, INC., Petitioner, v. CONSTELLATION TECHNOLOGIES L.L.C., Patent Owner. Case IPR2014-01085 Patent 6,845,389 B1 Before MICHAEL R. ZECHER, TREVOR M. JEFFERSON, and PETER P. CHEN, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 IPR2 Paten I. an in (Ex. Cons Preli unde not b any r petit the p prese wou Acco revie A in C (PTA ’389 2:13 Cons v. Ci 014-0108 t 6,845,38 INTRODU Cisco Sy ter partes 1001, “the tellation T minary Re r 35 U.S.C e institute esponse . ioner wou etition.” Upon co nted does ld prevail i rdingly, p w as to cl Related . Petitione isco System B). Pet. 3 patent: (1 -CV-0107 ortium US sco System 5 9 B1 CTION stems Inc review of ’389 pate echnologi sponse (“P . § 314(a) d “unless . . shows t ld prevail w nsideratio not show n showing ursuant to aims 26–3 Proceedin r states th s, Inc. v. . The par ) Constell 9 (E.D. Te LP, No. s, Inc., No . (“Petition claims 26– nt”) pursu es L.L.C. relim. Re , which pr . . . the info hat there i ith respe n of the Pe there is a r the unpat 35 U.S.C. 3 of the ’3 gs at the ’389 Constellat ties identi ation Tech x.); (2) Ch 1:14-CV-0 . 1:13-CV 2 er”) filed 33 of U.S ant to 35 U (“Patent O sp.”). Pap ovides tha rmation p s a reasona ct to at lea tition, we easonable entability § 314, we 89 patent. patent wa ion Techs. fy the follo s. LLC v. arter Com 0055 (D. D -02020 (D a Petition . Patent N .S.C. §§ 3 wner”) tim er 7. We t an inter p resented i ble likelih st 1 of the determine likelihood of the chal do not in s the subj LLC, Cas wing mat Time War mc’ns., In el.); (3) B . Del.); an (“Pet.”) re o. 6,845,3 11–319. ely filed have jurisd artes revi n the petiti ood that th claims cha that the in that Petit lenged cla stitute an i ect of a Pe e IPR2014 ters that in ner Cable c. v. Rock ockstar T d (4) In re questing 89 B1 Paper 2. a iction ew may on . . . and e llenged in formation ioner ims. nter partes tition filed -01085 volve the Inc., No. star echs. LLC IPR2 Paten Cons Judic B mult gam “sup routi flow 3:28 Figu whic play 014-0108 t 6,845,38 tellation T ial Panel The ’389. The ’389 i-user com ing applica ports QoS ng gaming Figure 3 diagram o –30. re 3 shows h includes er 50 send 5 9 B1 echs. LLC On Multid Patent patent is municatio tion as the [quality o communi of the ’38 f a session a “session a “QoS p s “session Patent Li istrict Liti directed to n sessions multi-use f service] p cations . . 9 patent, r initiation initiation rovisionin participati 3 tigation, M gation. Pe “a system .” Ex. 100 r commun rovisionin . through eproduced and resou and resou g phase.” on request DL No. 2 t. 3; Paper and meth 1, 1:16–1 ication se g and avo a game ser below, ill rce reserv rce reserv Id. at 4:46 ” message 558, Unit 5, 2. od of broa 9. In refer ssion, the ids the bo ver.” Id. ustrates a ation proce ation proc –67. A us 52, such a ed States dband ence to a ’389 paten ttleneck of at 1:63–65 message ss. Id. at ess,” er or first s an SIP t . IPR2 Paten (Ses 56 an parti end- play path requ respe the s Id. a seco mess the ’ Sess sessi C Claim ’389 014-0108 t 6,845,38 sion Initiat d 60. Id. cipation re to-end pac er 62 respo s 64 and 6 irements o ctive netw econd play t 2:31–42, nd player 6 age, comp 389 patent ion Descri on, and re Illustrat. Claim 26 26 is illu patent: 26 us se 5 9 B1 ion Protoc at 4:48–54 quest may ket delay, nds by sen 6 via game f the secon ork determ er’s QoS 6:23–30. 2 an ackn leting the discloses ption Prot serve the n ive Claim is indepe strative o . A loc mean er local to mean ssion with ol) INVIT , 4:36–39 include b or maximu ding a ne servers 5 d player. ines whe requireme If the band owledgem QoS provi using SIP ocols to id ecessary r ndent and f the subje al commun s for receiv the local c s for receiv a second 4 E message , 6:11–12, andwidth m tolerab gotiating m 8 and 54; t Id. at 2:25 ther suffic nts, and re width is r ent messa sioning. I , Sessional entify the esources. claims 27 ct matter o ication sy ing loggin ommunic ing a requ user from , to secon 8:14–16. and QoS r le lag. Id. essage, S he messag –30, 6:14 ient bandw serves the eserved, fi ge, such a d. at 2:42– Announc QoS requi Id. at 4:30 –33 depen f the chall stem, com g in infor ation syste est for a c the first us d player 6 The sessio equiremen at 4:51–5 IP OK me e includes –16. Each idth exist required b rst player s a SIP AC 45, 6:30– ement Pro rements fo –45. d from cla enged clai prising: mation fro m; ommunica er; 2 via paths n ts, such as 5. Second ssage, ove the QoS player’s s to handle andwidth. 50 sends K 41. Thus, tocols, and r the im 26. ms of the m a tion r IPR2 Paten Ex. 1 D unpa 18): RF 232 1 Ha Prot 2 Bra Prot (Ex. 014-0108 t 6,845,38 m as re re th re ac us fir di to 001, 11:4 The Asse. Petitione tentable u Re C 2543,1 R 7,3 and R ndley, M., ocol (Mar. den, R. (e ocol (RSVP 1005, “RF 5 9 B1 mean essage to a sociated w quest mes quirement mean e second l sponsive t mean cess netw er’s QoS r st user’s a mean rectly from receiving 7–67. rted Grou r asserts th nder 35 U ferences FC 2205, osenberg4 et al., Req 1999). (E d.), Reque )—Versio C 2205”). s for sendi second lo ith the sec sage includ s for the co s for receiv ocal comm o the first s for determ ork of the equiremen ccess netw s for sendi the first u the negoti nds at the cha .S.C. § 103 2 RFC uest for C x. 1007, “ st for Com n 1 Funct 5 ng a sessio cal comm ond user, ing the fir mmunica ing a nego unication user’s QoS ining res first user a ts and res ork; and ng an ackn ser to the ation mess llenged cl for the fo Basi § 103(a) omments: RFC 2543 ments 220 ional Spec n particip unication the session st user’s Q tion sessio tiation m system, se requirem ource avai ccording t erving reso owledgem second us age. aims of th llowing sp s Cla 26– 2543, SIP ”). 5, Resour ification ( ation requ system participa oS n; essage from ssion ents; lability in o the seco urces in t ent messa er in respo e ’389 pate ecific gro im(s) Ch 28 and 30– : Session I ce ReSerV Sept. 1997 est tion nd he ge nse nt are unds (Pet. allenged 33 nitiation ation ). IPR2014-01085 Patent 6,845,389 B1 6 References Basis Claim(s) Challenged RFC 2543, RFC 2205, RFC 2327, Rosenberg, and Leigh5 § 103(a) 29 II. DISCUSSION A. Claims 26–33: Obviousness based, in part, on Rosenberg Petitioner argues that each claim of the claims at issue, claims 26–33, is unpatentable as obvious under 35 U.S.C. § 103(a) based on combinations of prior art that each include the Rosenberg reference. Pet. 18. Whether Rosenberg is a printed publication is a dispositive issue in this proceeding. 1. Rosenberg (Ex. 1008) Rosenberg, titled “Establishing QoS and Security Preconditions for SDP Sessions,” is described on its face as an “Internet-Draft[]. . . working document[] of the Internet Engineering Task Force (IETF).” Ex. 1008, 1. Rosenberg “discusses how network QoS and security establishment can be made a precondition to sessions described by SDP.” Id. Rosenberg describes “Internet-Drafts” as documents that are “valid for a maximum of 3 Handley, M. and Jacobson, V., Request for Comments 2327, SDP: Session Description Protocol (Apr. 1998). (Ex. 1006, “RFC 2327”). 4 Rosenberg, J., et al., Internet Engineering Task Force Internet Draft, Establishing QoS and Security Preconditions for SDP Sessions (June 1999). (Ex. 1008, “Rosenberg”). 5 Jason Leigh, et al., Issues in the Design of a Flexible Distributed Architecture for Supporting Persistence and Interoperability in Collaborative Virtual Environments, Proceedings of the ACM/IEEE SC97 Conference (1997). (Ex. 1015, “Leigh”). IPR2014-01085 Patent 6,845,389 B1 7 six months and may be updated, replaced, or obsoleted by other documents at any time.” Id. Furthermore, the Rosenberg reference states that “[i]t is inappropriate to use Internet-Drafts as reference material or to cite them other than as work in progress.” Id. The Petition describes Rosenberg as “a prior art printed publication that extends [the] features of RFC 2327 [Ex. 1006].” Pet. 11. 2. Analysis of Whether Rosenberg is a Printed Publication “Where no facts are in dispute, the question of whether a reference represents a ‘printed publication’ is a question of law.” In re Klopfenstein, 380 F.3d 1345, 1347 (Fed. Cir. 2004) (citing In re Cronyn, 890 F.2d 1158, 1159 (Fed. Cir. 1989)). We look to the underlying facts to make the legal determination of whether a reference is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d at 1350. The Federal Circuit informs us that public accessibility is a key question in determining whether a document is a printed publication, and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. Patent Owner contends that Petitioner fails to provide any evidence supporting the assertion that Rosenberg is a prior art printed publication that was published in June 1999. Prelim. Resp. 11–13 (citing Pet. 11). Section 311(b) limits the scope of an inter partes review to “only . . . a ground that IPR2014-01085 Patent 6,845,389 B1 8 could be raised under section 102 or 103 and only on the basis of prior art consisting of patents and printed publications.” We agree with Patent Owner (Prelim. Resp. 11–13) that Petitioner’s lack of evidence supporting its contention that Rosenberg was accessible publicly to those interested in the art is fatal to its Petition. Petitioner fails to present sufficient argument, declaration testimony, or evidence that indicates that Rosenberg, an Internet-Draft, which was “valid” for only a limited time and was deemed inappropriate for citation (Ex. 1008, 1), was accessible to the interested public. See Pet. 11–12. Indeed, the Petition is silent on the manner in which Rosenberg was purportedly “published as an Internet-Draft in June 1999.” Id. at 11 (emphasis added). To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). In the present case, Petitioner provides insufficient evidence by declaration or document to establish the public accessibility of Rosenberg. Cf. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (examining affidavit in support of public availability of thesis); Samsung Elecs. Co. v. Rembrandt IPR2014-01085 Patent 6,845,389 B1 9 Wireless Techs., Case IPR2014-00514, slip op. at 5–10 (PTAB Sept. 9, 2014) (Paper 18) (determining whether the declaration of an editor of an IEEE draft standard sufficiently showed public accessibility of the proposed draft standard). Petitioner’s naked assertion that Rosenberg was published (Pet. 11–12) is not supported by the record, which fails to identify the circumstances and manner in which persons interested and ordinarily skilled in the subject matter could locate the reference. In light of Patent Owner’s challenge, and based on Petitioner’s insufficient supporting evidence, we find that Petitioner has not shown that Rosenberg was sufficiently accessible to the public interested in the art. Accordingly, Petitioner has not made a sufficient showing that Rosenberg qualifies as a printed publication under 35 U.S.C. § 102(b) and, thus, falls within the proper scope of an inter partes review. Because each of Petitioner’s asserted grounds of unpatentability is based, in part, on Rosenberg (Pet. 18), and Petitioner has not met its burden of establishing that Rosenberg is a “printed publication” and, thus, satisfies the statutory requirement of 35 U.S.C. § 311(b), Petitioner has not shown a reasonable likelihood of prevailing on the asserted grounds. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of: (1) claims 26–28 and 30–33 of the ’389 patent as obvious over Rosenberg, RFC 2543, IPR2014-01085 Patent 6,845,389 B1 10 RFC 2205, and RFC 2327; and (2) claim 29 of the ’389 patent as obvious over Rosenberg, RFC 2543, RFC 2205, RFC 2327, and Leigh. IV. ORDER Accordingly, it is ORDERED that the Petition is denied and no trial is instituted. FOR PETITIONER: David E. Wang Lowell Jacobson Peter Chassman WINSTON & STRAWN LLP dewang@winston.com ljacobson@winston.com Pchassman@winston.com FOR PATENT OWNER: Hong Zhong IRELL & MANELLA LLP hzhong@irell.com

Cisco Systems, Inc. v. Constellation Technologies LLC