Trials@uspto.gov Paper 42
`571-272-7822
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`Date: October 8, 2014
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`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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`
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`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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`IPR2013-00296
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`I. BACKGROUND
`Level 3 Communications, LLC (“Petitioner”) filed a Petition1 (Paper
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`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
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`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.
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`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that the challenged claims are unpatentable.
`
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`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
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`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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`be dialed via compuuter access or a regulaar telephonne, which pprompts thhe
`may
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`callinng party foor the calleed party’s ttelephone nnumber or
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`other idenntification.
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`Id. aat 6:42–44. The callinng party thhen is connnected to thhe called p
`arty over
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`the IInternet or another daata networkk, such as bby connectting the paarties via a
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`nodee through aa local call or throughh other nettworks. Idd. at 6:44–447. For
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`exammple, a callling party mmay access a node thhat convertts the telepphone
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`transsmission (ee.g., the vooice transmmission) intto data suppported by
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`netwwork chosenn by the noode. Id. att 6:47–49.
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`In this exaample, a neetwork
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`may connect too another nnode proximmate to thee called paarty that theen convert
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`the ddata transmmission bacck into a vooice commmunication
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`and conveerts the
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`voice communnication intto a local call to the ccalled partyy with the
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`partyy node opeerated by ann independdent servicce providerr located ellsewhere,
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`suchh as in anotther countrry. Id. at 66:49–54.
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`hallenged
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`A methood, as recited in the c
`claims, is
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`concceptual block diagramm in Figuree 9, reproduduced beloww:
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`by the
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`Figuure 9 providdes an overview of thhe transmisssion floww between aa calling
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`See id. at 6:36–56. IIn Figure 99 of the ’8779 patent,
`led party.
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`partyy and a cal
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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
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`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.
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`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
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`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.
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`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
`Kammerl, Iwami,
`Kobayashi, and Chau7
`Kammerl, Iwami,
`and Gordon8
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`8, 9, and 11–13
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`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`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
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`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.
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`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
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`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
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