Level 3 Communications, LLCv.AIP Acquisition LLC

Patent Trial and Appeal Board

Oct 8, 2014

11895460 (P.T.A.B. Oct. 8, 2014)

Trials@uspto.gov Paper 42
571-272-7822 Date: October 8, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LEVEL 3 COMMUNICATIONS, LLC,
Petitioner,

v.

AIP ACQUISITION LLC,
Patent Owner.
____________

Case IPR2013-00296
Patent 7,724,879 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
Level 3 Communications, LLC (“Petitioner”) filed a Petition1 (Paper
6, “Pet.”) requesting inter partes review of claims 1–15 (all the claims) of
U.S. Patent No. 7,724,879 B2 (“the ’879 patent”) under 35 U.S.C. §§ 311–
319. On October 31, 2013, the Board instituted an inter partes review of
claims 1–15 (“the challenged claims”) on four asserted grounds of
unpatentability (“Dec. on Inst.”). Paper 14. Subsequent to institution, AIP
Acquisition LLC (“Patent Owner”) filed a Patent Owner Response (“PO
Resp.”). Paper 20. Petitioner filed a Reply (“Pet. Reply”) to the Patent
Owner Response. Paper 30. Oral hearing was held on July 15, 2014.2
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 the challenged claims are unpatentable.

A. The ’879 Patent (Ex. 1001)
The ’879 patent relates to methods 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 6:36–38. 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 6:38–42. In order to make such calls, a local system

1 We refer to the corrected Petition filed May 29, 2013.
2 The record includes a transcript of the oral hearing (“Hr’g Tr.”). Paper 41.
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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 4:3–4, 14:27–45. The calling party at calling location 48
transmits a call to calling party access device 12 via intercept 16 over link
50A. Id. at 14:62–15:3. Intercept 16 may be part of central local node 18.
Id.at 15:11–12. 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 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
14:29–36. Through these connections, calling party access device 12 may
route communications to called party access device 14 via either
communications network 103 or another network 200, such as a cellular,
Asynchronous Transfer Mode (ATM), or frame relay network. Id.; see also
id. at 7:34–39. Access device 14 may receive the voice communication via a
central local node 24 and/or a central office 22. Id. at 15:4–8. Central local
node 24 and central office 22 may be separate components. Id. at 15:12–14.
The transmissions are converted from the internet protocol to another format
suitable for reception by access device 14, such as the telecommunications

3 In Figure 9 of Ex. 1001, communications network 10 is identified as “voice
network 10.”
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protocol from which the transmissions were originally converted. See id. at
4:34–42.

B. Illustrative Claim
Independent claim 1, which is the only independent claim and is
illustrative of the subject matter, is 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
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 an internet protocol;
sending the converted transmission through a second
communication network, the second communication network
being a data network, 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.

C. Related Proceedings
On May 17, 2012, Patent Owner filed an action against Petitioner
alleging infringement of the ʼ879 patent, AIP Acquisition LLC v. Level 3
Communications, LLC, Civ. Action No. 12-617 (D. Del.). Pet. 1. The ’879
patent is also involved in the following district court actions: AIP
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Acquisition LLC v. iBasis, Inc., Civ. Action No. 12-616 (D. Del.); AIP
Acquisition LLC v. Time Warner Cable Inc., Civ. Action No. 12-01692 (D.
Del.); AIP Acquisition LLC v. Cox Communications Inc., Civ. Action No.
12-01691 (D. Del.); AIP Acquisition LLC v. Comcast Corp., Civ. Action No.
12-01690 (D. Del.); AIP Acquisition LLC v. Cablevision Systems Corp., Civ.
Action No. 12-01688 (D. Del.); and AIP Acquisition LLC v. Charter
Communications Inc., Civ. Action No. 12-01689 (D. Del.). See Pet. 1–2.
The ’879 patent is also involved in Cisco Sys., Inc. v. AIP Acquisition LLC,
IPR2014-00247 (PTAB), a currently-pending inter partes review.
D. Asserted Grounds of Unpatentability
The Board instituted inter partes review on the following asserted
grounds of unpatentability under 35 U.S.C. § 103(a) (Dec. on Inst. 33):
References Basis Challenged Claim(s)
Kammerl4 and Iwami5 § 103(a) 1–7 and 15
Kammerl, Iwami,
and Kobayashi6
§ 103(a) 8, 9, and 11–13
Kammerl, Iwami,
Kobayashi, and Chau7
§ 103(a) 10
Kammerl, Iwami,
and Gordon8
§ 103(a) 14

4 US 5,051,983, Sept. 24, 1991 (Ex. 1013) (“Kammerl”).
5 US 5,604,737, Feb. 18, 1997 (filed Dec. 13, 1994) (Ex. 1006) (“Iwami”).
6 US 5,337,352, Aug. 9, 1994 (Ex. 1007) (“Kobayashi”).
7 US 5,187,710, Feb. 16, 1993 (Ex. 1008) (“Chau”).
8 US 5,608,786, Mar. 4, 1997 (filed Feb. 13, 1995) (Ex. 1005) (“Gordon”).
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II. ANALYSIS
A. Claim Construction
No terms need to be construed for purposes of this decision and both
parties state that claim construction does not affect the issues in this case.
Hr’g Tr. 5:6, 28:10–11, 28:19–29:13. Therefore, we do not explicitly
construe any term.
B. Submitted Evidence
1. Kammerl (Ex. 1013)
Kammerl is directed to “a method and a circuit for speech
transmission in a broad-band communications network.” Ex. 1013, 1:14–16.
Kammerl discusses the fact that a broad-band communications network that
transmits signals in packets was known and “[t]ransmission of speech
signals following dial connections between subscriber’s sets is provided in
this known system.” Id. at 1:18–26. Kammerl further discloses that the
packet switching network may serve as a transit network when connected
between two public switched telephone networks (PSTNs) via interworking
units. Id. at 5:57–61.
Kammerl explains that lag times occurring in speech transmission
(due to packing and depacking times, processing times, and waiting times)
over fixed length packet networks were known to negatively affect the
quality of speech signal transmissions. Id. at 1:29–37. Kammerl further
identifies a problem in hybrid networks (those networks that “include
analog/digital telephone switching network[s] in addition to broad-band
packet switching networks”) occurring in a transfer between the networks.
Id. at 1:37–43. In particular, Kammerl explains that “the transit time of echo
signals caused by the hybrid sets can assume a size such that the echo
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signals are perceived as interference” due to the “lag times in packet
switching networks.” Id. at 1:43–48.
Kammerl acknowledges that one prior art solution to suppressing the
echo signals was to include echo suppressors or echo compensators on the
transmission lines, but that such circuitry was expensive and, therefore,
undesirable in some instances. Id. at 1:49–52. Kammerl also recognizes
that “there have already been proposals for reducing the lag times in broad-
band packet switching networks by filling packets of a fixed length only
partially with speech signals in speech signal transmission.” Id. at 1:53–56.
Kammerl attempts to overcome the identified problems by reducing
lag times. Id. at 1:57–60. Kammerl’s specific invention is directed to a
method for reducing the degree of packet filling in order to reduce lag times
for telephone connections over the packet exchange network, “whereas the
full packet capacity can be utilized for communication signals to be
transmitted following connections of other services,” reducing or eliminating
the need for the echo suppression systems. Id. at 1:64–2:10. Kammerl
accomplishes this alteration by configuring the network transfer units to
insert control signals into signaling packets when establishing a connection
between a PSTN and a packet network to indicate that packet filling should
be reduced for transmission of speech signal packets in the hybrid
connection. Id. at 2:11–3:5. Kammerl purports to provide a solution that
adds “[o]nly a slight additional control expense” and that requires minimal
transmissions of a control signal to adjust packet filling because “only one
network transfer unit is included in the control of the transmission of speech
signal packets even” in communications networks “in which a packet
switching system is inserted as a transit switching system over network
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transfer units between two telephone exchanges.” Id. at 2:11, 2:51–65; see
also id. at 5:57–6:3 (explaining that only the interworking units that receive
packets from the packet switching network deliver control signals that may
adjust packet filling).
2. Iwami (Ex. 1006)
Iwami is directed to a method and system for establishing a
connection for voice communication between a terminal connected to a data
network and a terminal connected to a PSTN and allowing various
communication functions between the two terminals. Ex. 1006, Abstract,
1:55–2:17. Iwami discloses that the data network may support various
protocols, including Internet Protocol (IP), such that Iwami may send
packets over its network using UDP/IP and TCP/IP. Id. at 17:44–58.
C. Petitioner’s Objections to Alleged New Patent Owner Arguments
at Oral Hearing
Petitioner objects to various arguments made by Patent Owner at the
oral hearing. Specifically, Petitioner’s objections are: (1) Crocs v.
International Trade Commission, 598 F.3d 1294 (Fed. Cir. 2010) was not of
record; (2) Patent Owner’s arguments regarding unpredictable results
constitutes new argument; (3) Patent Owner’s description of Mashinsky
having invented the use of IP for a low cost, low quality network constitutes
new argument; and (4) reference to page 276 of the Peterson reference
constitutes new argument. Hr’g Tr. 40–41, 47, 60–61, 64, 71–72, 74.
Patent Owner relies on Crocs, for the first time at oral hearing, for
having facts similar to the present case. Id. at 60–61. Petitioner has had no
prior opportunity to review and address the facts and, therefore, we sustain
Petitioner’s objection.
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For the first time at oral hearing, Patent Owner argues that the ’879
patent discloses unpredictable results and the ’879 patent was the first to use
IP as a low cost, low quality bridging network between two PSTNs. Parties
are not permitted to raise new arguments or evidence at oral hearing. Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
Patent Owner asserts that the arguments in contention were presented in
response to Petitioner’s new argument in Petitioner’s Reply. Hr’g Tr. 47–
48. According to Patent Owner, Petitioner in its Reply argued that “the ’879
patent, itself, was evidence that somehow the IP quality problems were a
non-issue.” Id. at 47. There is, however, no such exception to the rule
against asserting new argument during oral argument. Petitioner’s objection
to Patent Owner’s arguments relating to unpredictable results and
Mashinsky’s invention of the use of IP as a low cost, low quality bridging
network between two PSTNs is sustained.
Finally, we overrule Petitioner’s objection to Patent Owner’s
reference to page 276 of the Peterson reference (Ex. 2015). Exhibit 2015
was submitted as evidence with the Patent Owner Response. Page 276 of
Exhibit 2015 states that “one of the biggest challenges [for IP] will be to
provide quality or service guarantees that are suitable for high-quality voice
and video, [which] is likely to be available in ATM networks from the
outset” and that “IP, at present, . . . is best suited to those [applications]
without real-time constraints.” Patent Owner merely refers to a plain
statement on a page of Peterson that was previously provided to Petitioner,
in support of Patent Owner’s pre-existing argument that Kammerl was
concerned with providing high quality voice service, beyond the capability
of IP. See, e.g., PO Resp. 5, 15–19, 29–30, 41–43.
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D. Alleged New Arguments in Petitioner’s Reply
As discussed above, Patent Owner asserts Petitioner presented a new
argument in its Reply regarding whether the ’879 patent’s failure to address
the issues of sending voice data over IP provides support for Petitioner’s
position that IP quality problems were not an issue at the time of invention
of the ’879 patent. Hr’g Tr. 47–48. However, Petitioner’s argument was
raised in response to Patent Owner’s allegations of a teaching away and,
thus, was properly responsive to argument raised in the Patent Owner
Response.
E. Section 103(a) Patentability
First, we address the limitations of each of the claims as set forth in
Petitioner’s challenge in sections 1–4 below. In section 5, we address
Petitioner’s rationale for combining the references and Patent Owner’s
argument that Kammerl cannot be combined with Iwami.
1. Subject Matter of Claims 1–7 and 15
The Board instituted trial on Petitioner’s challenge of obviousness of
claims 1–7 and 15 over Kammerl and Iwami. Dec. on Inst. 21–28.
Petitioner relies on Kammerl as teaching each limitation of independent
claim 1 except for the limitation reciting “the second format being an
internet protocol.” Pet. 47–52. As discussed above, Kammerl discloses a
method and system for transmitting voice signals, including using a packet
network as a transit network between two PSTNs. Ex. 1013, 5:57–61.
Petitioner argues that Kammerl teaches each of the limitations of
independent claim 1 except for using an internet protocol because Kammerl
discloses receiving a transmission from a first device connected to a PSTN
in a format used by an analog or digital phone network, converting the
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transmission to a second format used by Kammerl’s ATM network, sending
the converted transmission across the ATM network, and, in the case where
the packet network serves as a transit network, converting the transmission
back to a format used by an analog or digital phone network. Pet. 47–52.
Petitioner argues Iwami teaches a second format that is an internet
protocol because Iwami discloses, as discussed above, a system that sends
voice transmissions between a network using IP and a phone network. Id. at
49–50. Petitioner provides claim charts and explanations demonstrating
where each of the limitations of claims 1–7 and 15, other than “the second
format being an internet protocol,” is taught by Kammerl. Id. at 47–55.
Petitioner asserts Iwami teaches “the second format being an internet
protocol” and, in addition to Kammerl, teaches “the second conversion is
performed at the second access device,” as recited in claim 6. Id. at 23–24,
41–42, 49, 54.
Patent Owner does not dispute that Kammerl and Iwami teach the
limitations for which Petitioner cites each reference. Having reviewed the
evidence of record, we are persuaded Petitioner has demonstrated that
Kammerl and Iwami teach the limitations recited in claims 1–7 and 15.
2. Subject Matter of Claims 8, 9, and 11–13
The Board instituted trial on Petitioner’s challenge of obviousness of
claims 8, 9, and 11–13 over Kammerl, Iwami, and Kobayashi. Dec. on Inst.
28–30. Petitioner asserts Kobayashi teaches the additional limitations
recited in dependent claims 8, 9, 11, and 13 related to routing based on user
preferences because “Kobayashi teaches a method of improving
transmission quality by routing on the basis of the recorded preferences of
users of the network.” Pet. 56 (citing Ex. 1007, 3:20–25); id. at 25–27, 28–
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29, 56–58. Petitioner further contends Kammerl teaches “the transmission
comprises execution of a call setup procedure,” as recited in dependent
claim 12 because Kammerl discloses “call setup procedures that involve
inserting signaling procedure signals from subscriber[s’] sets into packets
and relaying them between the subscriber[s’] sets.” Pet. 57. Petitioner
provides claim charts demonstrating where each of the additional limitations
of claims 8, 9, and 11–13 is taught by the references. Id. at 25–29, 56–58.
Patent Owner does not dispute that Kammerl, Iwami, and Kobayashi
teach the limitations for which Petitioner cites each reference. Having
reviewed the evidence of record, we are persuaded Petitioner has
demonstrated that Kammerl, Iwami, and Kobayashi teach the limitations
recited in claims 8, 9, and 11–13.
3. Subject Matter of Claim 10
The Board instituted trial on Petitioner’s challenge of obviousness of
claim 10 over Kammerl, Iwami, Kobayashi, and Chau. Dec. on Inst. 30–31.
Petitioner argues Chau teaches “wherein the at least one criteria comprises
credit availability of a calling party,” as recited in dependent claim 10
because Chau discloses performing a credit check on callers. Pet. 29, 58.
Petitioner provides a claim chart demonstrating where the additional
limitation of claim 10 is found in Chau. Id. at 29.
Patent Owner does not dispute that Kammerl, Iwami, Kobayashi, and
Chau teach the limitations for which Petitioner cites each reference. Having
reviewed the evidence of record, we are persuaded Petitioner has
demonstrated that Kammerl, Iwami, Kobayashi, and Chau teach the
limitations recited in claim 10.
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4. Subject Matter of Claim 14
The Board instituted trial on Petitioner’s challenge of obviousness of
claim 14 over Kammerl, Iwami, and Gordon. Dec. on Inst. 31–32.
Petitioner argues Gordon teaches a transmission “related to a fax
transmission,” as recited in dependent claim 14 because Gordon discloses
sending a fax transmission over a data network. Pet. 20–21, 58–59.
Petitioner provides a claim chart demonstrating where the additional
limitation of claim 14 is found in Gordon. Id. at 20–21.
Patent Owner does not dispute that Kammerl, Iwami, and Gordon
teach the limitations for which Petitioner cites each reference. Having
reviewed the evidence of record, we are persuaded Petitioner has
demonstrated that Kammerl, Iwami, and Gordon teach the limitations recited
in claim 14.
5. Combinability of Cited Art
Petitioner argues Kammerl teaches the general concept of using a data
network as a transit network between two PSTNs (Pet. Reply 3–6), including
sending, receiving, and converting transmissions in such a hybrid network.
Pet. 47–59. Thus, as discussed above, Petitioner asserts Kammerl teaches
each limitation of independent claim 1 except for the limitation of “the
second format being an internet protocol,” Iwami teaches a second format
that is an internet protocol, and it would have been obvious to a person of
ordinary skill in the art to use the Internet Protocol taught by Iwami in the
network topology taught by Kammerl. Id. at 47–52. Petitioner argues a
person having ordinary skill in the art (“PHOSITA”), at the time of
invention of the ’879 patent, would have combined Kammerl and Iwami to
allow “voice communications to be transmitted on networks other than ATM
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networks[, which] is the reason that internetworking or internet protocols
such as the Internet Protocol were developed—to allow internetworking of
diverse networks.” Id. at 49.
Patent Owner acknowledges that one teaching of Kammerl is a
“generic network topo[logy] that shows a packet switch[ed] network . . .
serving as a bridging network between PSTN to PSTN.” Hr’g Tr. 31:18–21.
However, Patent Owner argues that Kammerl’s purpose is to reduce lag
times when transmitting voice packets over a data network in order to
improve the transmission quality and reduce the need for expensive echo-
cancellation equipment. PO Resp. 30. Patent Owner further argues
Kammerl was designed to meet the high quality of service levels required by
traditional PSTN customers (see, e.g., Hr’g Tr. 32, 35, 37–39) and that IP
“was not capable of providing high quality voice services” in 1996. Id. at 40
(quoting Ex. 2015, 276 (“For IP, one of the biggest challenges will be to
provide quality of service guarantees that are suitable for high quality voice
and video, something that is likely to be available in ATM networks from
the outset”)). Thus, Patent Owner contends that a PHOSITA would not have
used Iwami’s IP over Kammerl’s ATM network, or substituted Iwami’s
packet network using IP for Kammerl’s ATM network, because the
teachings of Kammerl outweigh the asserted benefit of internetworking
provided by Iwami. PO Resp. 28–53. Specifically, Patent Owner argues
that Kammerl teaches away “from implementations that would introduce
lag” and that using IP over an ATM network (or substituting Iwami’s IP
network for Kammerl’s ATM network) necessarily introduces delays
associated with processing (i.e., reassembly and segmentation) the data
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packets at each router the packets encounter, rendering Kammerl inoperable.
Id. at 32–41, 52–53.
Petitioner responds that Patent Owner focuses on one particular
teaching of Kammerl and ignores Kammerl’s broader teaching that a data
network can be used as a transit network between two PSTNs. Pet. Reply 5–
6. Petitioner asserts that, even assuming using IP for voice transmission
with reduced packet filling according to Kammerl’s specific invention would
increase delay, Kammerl’s teachings as a whole must be considered rather
than focusing on one particular teaching. Id. at 12–13 (citing In re Heck,
699 F.2d 1331, 1333 (Fed. Cir. 1983); see also EWP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be
considered for everything it teaches by way of technology and is not limited
to the particular invention it is describing and attempting to protect.”).
Petitioner also argues that Patent Owner’s examples of how the combination
of Iwami and Kammerl would introduce delay actually demonstrates that the
combination does work, refuting Patent Owner’s argument that the
combination would be inoperative or nonfunctional. Pet. Reply 13–14.
As an initial matter, we note that the challenged claims have a broad
scope. For example, independent claim 1 is directed to a method comprising
receiving a transmission in a telecommunication protocol format, converting
the transmission into an internet protocol format, sending the transmission
through a data network, and converting the transmission into a
telecommunication protocol format.
Claims 2–7, 12, 14, and 15 further define details relating to where
certain method steps occur and the types of communications, parties,
networks, and devices involved in a transmission. Claim 8 recites an
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additional step of routing based on criteria defined by user preferences and
claims 9–11 further define the criteria used in routing decisions. Claim 13
recites an additional step of storing information related to the transmission.
As discussed above, independent claim 1 of the ’879 patent differs
from Kammerl only in that the data network disclosed by Kammerl does not
use an internet protocol and, thus, Kammerl does not disclose that the recited
second format is an internet protocol. With respect to Iwami, independent
claim 1 of the ’879 patent differs from Iwami in that Iwami only discloses a
single conversion from a telecommunication protocol to an internet protocol.
Iwami does not disclose performing the recited second conversion.
We are not persuaded by Patent Owner’s argument that Kammerl’s
focus on reducing lag results in a teaching away from any combination that
would increase lag times. See PO Resp. 41–43. Patent Owner does not
point to, nor do we see, anything in Kammerl that “criticize[s], discredit[s],
or otherwise discourage[s] the solution claimed in the” ’879 patent or
otherwise rises to the level of a teaching away. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Moreover, while Kammerl’s purpose was to speed
up transmission of voice data over an ATM network and may have provided
a high quality of service intended to meet standards demanded by traditional
PSTN customers, nothing recited in the broad claims of the ’879 patent
requires a system meeting such quality standards.9
Furthermore, there is nothing in Kammerl stating that a network using
an internet protocol would not function as a transit network between two

9 Claim 9 broadly recites that a route for transmission is selected based on a
user-specified level of transmission quality, but does not recite any
limitation that would preclude a PHOSITA from considering the use of IP.
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PSTNs. In fact, Kammerl’s invention is directed specifically to an
improvement on ATM or fixed-length packet networks. Kammerl never
mentions, and thus, never criticizes, discredits, or otherwise discourages,
using a network with messages formatted in an internet protocol as a transit
network between two PSTNs.
Patent Owner focuses on what Kammerl’s goals and considerations
were at the time of Kammerl’s invention. However, for purposes of an
obviousness analysis, we look to what a PHOSITA would have considered
obvious when looking to the relevant art, including Kammerl and Iwami,
and whether that PHOSITA would have found it obvious to combine the
teachings found in the art to result in the claimed invention at the time of
invention of the ’879 patent.
Regarding Patent Owner’s teaching away argument, we look to
whether the references teach away from the broad challenged claims. See In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“a reference will teach away if
it suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant”)
(emphasis added). Patent Owner admits that the ’879 patent uses IP for
applications where it is acceptable to have low quality. Hr’g Tr. 45:17–46:3,
46:20–47:16.
Regardless of whether a transit network using IP would have met the
high quality of service expected by PSTN to PSTN customers, a PHOSITA
would have at least considered an internet protocol, such as the IP network
disclosed in Iwami, as an obvious choice for a protocol to transmit voice
data between two PSTNs. The PHOSITA would have considered it obvious
to use such a design for applications where a lower quality of service was
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acceptable. Even if the PHOSITA would have concluded that such a design
would not suffice for certain applications10 or would not have been
commercially successful, it would have been an obvious to that PHOSITA
that combining Kammerl and Iwami would result in an operable system.
Patent Owner points to evidence indicating that “one of the biggest
challenges” for IP around the time of the invention would be “to provide
quality of service guarantees that are suitable for high-quality voice and
video.” Id. at 40 (quoting Ex. 2015, 276). Although Patent Owner’s
evidence indicates that the IP community faced challenges to provide
Quality of Service guarantees for high-quality voice and video, that
evidence indicates those skilled in the art were considering using IP for
high-quality voice applications. Moreover, that evidence provides little
insight as to whether a PHOSITA would have considered it obvious to use
IP in a bridging network between two PSTNs in applications where Quality
of Service guarantees were not important.
Furthermore, we do not find Patent Owner’s argument that Petitioner
was unable to identify a single “patent or reference that disclosed . . . IP as a
bridging network between PSTN-to-PSTN calls” persuasive. Hr’g Tr. 39.
Petitioner’s challenges to the claims of the ’879 patent are not based on
anticipation under 35 U.S.C. § 102, but obviousness under 35 U.S.C.
§ 103(a).
In light of the scope of the claims, the differences between the recited
claims and the cited references, and the state of the art at the time of

10 We find Patent Owner’s argument that, in 1996, it was known that IP
“was ill-suited for real[-]time applications like voice” supports a finding that
using IP as a transit network, even if less than ideal, would have been
obvious.
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invention of the’879 patent11, we find the rationale provided by Petitioner for
combining Kammerl and Iwami to be persuasive. The Petitioner has
established that a PHOSITA, at the time of invention of the ’879 patent,
would have been aware of both Kammerl’s disclosure of transmitting voice
between two PSTNs using an ATM network as a transit network and
Iwami’s disclosure of transmitting voice between an IP network and a phone
network.
We find a PHOSITA would have considered using an IP network as a
transit network between two PSTNs in order to provide the benefits of
simpler internetworking of diverse networks, even at the expense of
potentially slower transit speeds. Ex. 1002 ¶ 227. Additionally, we also
find persuasive Petitioner’s contention that “an internet protocol network
[was] one of a finite number of identified communications mechanisms that
were well-known at the time.” Id. ¶ 229. Thus, even if a PHOSITA would
have considered the benefits of using IP as a protocol for a transit network
between two PSTNs to not be worth the tradeoff in transit time, the Petition
establishes that modifying Kammerl to use an internet protocol as taught by
Iwami would have been obvious to that PHOSITA. Therefore, we find
Petitioner has demonstrated by a preponderance of the evidence that one of
ordinary skill in the art would have combined Kammerl and Iwami and that
the combination of Kammerl and Iwami teaches the subject matter recited in
claims 1–7 and 15.

11 Mr. Stephen B. Weinstein (declarant for Patent Owner) and Dr. Vincent C.
Jones (declarant for Petitioner) both indicated that the Internet and IP were
“coming to prominence from 1994 through 2001.” Ex. 1022. 18:15–21; see
also Ex. 1002 ¶¶ 30–32.
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Petitioner argues that incorporating each of Kobayashi, Chau, or
Gordon with Kammerl’s teachings is merely applying well-known
techniques to Kammerl in a known way to achieve predictable results.
Pet. 56, 58, 59. We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that one of ordinary skill in the art would
have combined Kobayashi with Kammerl and Iwami and that such a
combination teaches the subject matter recited in claims 8, 9, and 11–13.
We are persuaded that Petitioner has demonstrated by a preponderance of
the evidence that one of ordinary skill in the art would have combined Chau
with Kammerl, Iwami, and Kobayashi and that such a combination teaches
the subject matter recited in claim 10. We are persuaded that Petitioner has
demonstrated by a preponderance of the evidence that one of ordinary skill
in the art would have combined Gordon with Kammerl and Iwami and that
such a combination teaches the subject matter recited in claim 14.
III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that:
claims 1–7 and 15 are unpatentable over Kammerl and Iwami; claims 8, 9,
and 11–13 are unpatentable over Kammerl, Iwami, and Kobayashi; claim 10
is unpatentable over Kammerl, Iwami, Kobayashi, and Chau; and claim 14 is
unpatentable over Kammerl, Iwami, and Gordon.

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IV. ORDER
In consideration of the foregoing, it is:
ORDERED that claims 1–15 of the ’067 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:
Michael Ray
Jon Wright
David Clonts
mray-ptab@skgf.com
jwright-ptab@skgf.com
dclonts@akingump.com

For Petitioner:

Robert Devoto
John Phillips
Karl Renner
Jason Wolffe
Dan Smith
devote@fr.com
phillips@fr.com
axf@fr.com
wolff@fr.com
dcs@fr.com