directPacket Research, Inc

Patent Trials and Appeals Board

Jan 11, 2021

IPR2019-01233 (P.T.A.B. Jan. 11, 2021)

Trials@uspto.gov Paper 66
571-272-7822 Date: January 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

POLYCOM, INC.,
Petitioner

v.

DIRECTPACKET RESEARCH, INC.,
Patent Owner
____________

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____________

Before BRYAN F. MOORE, SHEILA F. McSHANE, and
RUSSELL E. CASS, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting Patent Owner’s Motion to Seal
35 U.S.C. § 318(a)

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I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
For the reasons discussed herein, we determine that Petitioner has shown by
a preponderance of the evidence that all of the challenged claims of U.S.
Patent No. 7,773,588 B2 (Ex. 1001, “the ’588 patent”) are unpatentable.
A. Procedural Background
Polycom, Inc. (“Petitioner”)1 filed a Petition requesting inter partes
review of claims 1–23 (“the challenged claims”) of the ’588 patent pursuant
to 35 U.S.C. §§ 311–319, along with the supporting Declaration of Dr. Tal
Lavian. Paper 1 (“Pet.”); Ex. 1002. directPacket Research, Inc. (“Patent
Owner”) filed a Preliminary Response to the Petition, along with the
supporting Declaration of Dr. Kevin Jeffay. Paper 8; Ex. 2001. With
authorization (Paper 14), Petitioner filed a pre-institution Reply to Patent
Owner’s Preliminary Response (Paper 15), with Patent Owner filing a pre-
institution Sur-Reply (Paper 17). Pursuant to 35 U.S.C. § 314(a), on January
13, 2020, we instituted inter partes review on the grounds of:

1 Petitioner identifies Plantronics, Inc., as another real party-in-interest. Pet.
2.
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Claims
Challenged
35 U.S.C. § Reference(s)/Basis
1–23 103(a)2 Ress3
1–23 103(a) Ress, Doyle4
Pet. 5; Paper 21 (“Inst. Dec.”).
Patent Owner filed a Patent Owner Response (“PO Resp.”), along
with the Declaration of Dr. Kevin Jeffay in Support of the Response. Paper
30; Ex. 2009. Petitioner filed a Reply (“Pet. Reply”) to the Patent Owner
Response, with the supporting Reply Declaration of Dr. Tal Lavian. Paper
46; Ex. 1017. Patent Owner filed a Sur-Reply (“PO Resp. Sur-Reply”).
Paper 54.
With the Board’s leave (Paper 60), Petitioner filed a supplemental
brief on claim construction (Paper 62, “Pet. Suppl. Br.”), and Patent Owner
filed a supplemental brief on the same (Paper 61, “PO Suppl. Br.”).
Petitioner filed a responsive supplemental brief on claim construction (Paper
63, “Pet. Suppl. Resp. Br.”), and Patent Owner filed a supplemental
responsive brief (Paper 64, “PO Suppl. Br.”).
An oral hearing was held on October 20, 2020. A transcript of the
hearing is included in the record. Paper 65 (“Tr.”).

2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
of the ’588 patent have an effective filing date before the effective date of
the applicable AIA amendment, we refer to the pre-AIA version of
35 U.S.C. § 103.
3 US 6,885,658 B1, filed on February 18, 2000, issued April 26, 2005,
claiming priority to Provisional Application No. 60/137,867, filed on June 7,
1999. Ex. 1004.
4 US Pub. No. 2002/0133588 A1, published September 19, 2002. Ex. 1005.
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B. Related Proceedings
At the time of the Petition filing, Petitioner identified directPacket
Research, Inc. v. Polycom, Inc., 2:18-cv-00331-AWA-RJK (E.D. Va.) as a
related matter. Pet. 2–3. At the time of the filing of Mandatory Notices,
Patent Owner indicated that directPacket Research, Inc. v. Polycom, Inc.,
C.A. No. 5:19-cv-03918-VKD (N.D. Cal.) involved the ’588 patent. Paper
4, 2 (Mandatory Notices). The parties both refer to a single litigation that
was originally filed in the Eastern District of Virginia and was then
transferred to the Northern District of California in July, 2019.
C. The ’588 Patent
The ’588 patent is entitled “System and Method for Cross Protocol
Communication” and issued on August 10, 2010 from an application filed
on April 13, 2006. Ex. 1001, codes (22), (45), (54).
The ’588 patent is directed to facilitating multimedia communication
with multiple communication protocols. Ex. 1001, 2:3–5. The system can
handle different types of traffic including forms of Internet communications,
such as voice over Internet Protocol (VoIP), and differing types of protocols,
such as H.323 and Session Initiation Protocol (SIP), which can
accommodate multimedia communication including voice, video, and data
communications in real time. Id. at 1:18–30. The differing protocols may
have different structures and formats and may be incompatible. Id. at 1:41–
48, 1:58–61. In order to address incompatibility issues, the invention
includes a communication controller, which receives a multimedia data
stream in a first protocol and converts it to an intermediate protocol. Id. at
2:5–10. The multimedia data stream in the intermediate protocol is
transmitted to a second communication controller which converts the data
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stream to a second protocol that is compatible with the destination
communication device. Id. at 2:15–18.
Figure 2, reproduced below, is a block diagram illustrating component
blocks of communication controller 100. Ex. 1001, 4:20–21.

Figure 2, above, shows communication controller 100 receiving data streams
from an endpoint at message interface 200, which sends the data stream to
protocol converter 201. Ex. 1001, 4:21–27. Protocol converter 201
examines the data stream and determines what protocol the data stream has
been configured for and examines the data stream packets to find protocol
messages or commands contained within it. Id. at 4:27–29. Protocol
converter 201 accesses a corresponding table to find the interim protocol
message to replace the original message. Id. at 4:32–34. More specifically,
protocol converter 201 may access binary table 202, when the received
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multimedia data stream is in a binary format protocol, or it may access text
table 203, when the received multimedia data stream is in a text-based
protocol. Id. at 4:35–39. As protocol converter 201 assembles the new data
stream in the interim protocol, the stream is forwarded to network interface
204 for transmission of the translated data stream onto the network. Id. at
4:52–55.
Figure 3, reproduced below, presents an embodiment of a method
showing the steps of protocol conversion. Ex. 1001, 5:30–31.

As shown in Figure 3, above, in step 300, a multimedia data stream is
received from a communication device at a communication controller in a
first protocol, and at step 301, the type of the first protocol is detected.
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Ex. 1001, 5:30–35. The first protocol is converted into an intermediate
protocol in step 302, and the multimedia data stream in the intermediate
protocol is communicated, in step 303, to a second communication
controller connected to the target communication device. Id. at 5:35–39.
The intermediate protocol is translated into a second protocol in step 304,
and is transmitted to a target communication device at step 305. Id. at 5:39–
43.
Challenged claims 1, 7, 11, and 18 of the ’588 patent are independent.
Claims 1 and 7 are reproduced below, with sub-paragraphing added to the
limitations for reference purposes.
1. A method for multimedia communication comprising:
[a] receiving a multimedia data stream at a communication
controller in a first protocol from a communication device,
wherein the first protocol comprises a signaling protocol;
[b] detecting a type of said first protocol;
[c] converting said first protocol into an intermediate protocol;
[d] translating said intermediate protocol into a second protocol,
wherein the second protocol comprises a signaling protocol;
and
[e] transmitting said multimedia data stream in said second
protocol to a target communication device;
[f] wherein said first protocol comprises one of a text-based
protocol and a binary protocol and wherein said second
protocol comprises one of a binary protocol and a text-based
protocol.

7. A communication controller in a multimedia communication
system, said communication controller comprising:
[a] a message interface to transceive multimedia data from a
communication endpoint in a first protocol, wherein the first
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protocol comprises a signaling protocol, and wherein said first
protocol is either a text-based protocol or a binary protocol;
[b] a protocol signaler to determine a type of said first protocol;
[c] a first protocol conversion table that contains a plurality of
first protocol messages and a plurality of interim protocol
messages, wherein said plurality of interim protocol messages
correspond to ones of said plurality of first protocol messages;
[d] a protocol conversion utility to convert said first protocol
into an interim protocol using said first protocol conversion
table; and
[e] a network interface to transceive said multimedia data in
said interim protocol to a target communication endpoint.
Ex. 1001, 7:25–41, 8:19–27.
II. ANALYSIS
A. The Parties’ Arguments
In our Decision on Institution, we concluded that the arguments and
evidence advanced by Petitioner demonstrated a reasonable likelihood that at
least one claim of the ’588 patent would have been obvious. Inst. Dec. 19–
36. Here, we determine whether Petitioner has established by a
preponderance of the evidence that the challenged claims would have been
obvious. 35 U.S.C. § 316(e). We previously instructed Patent Owner that
“any arguments for patentability not raised in the response may be deemed
waived.” Paper 22, 8; see also 37 C.F.R. § 42.23(a) (“Any material fact not
specifically denied may be considered admitted.”); In re Nuvasive, Inc., 842
F.3d 1376, 1379–82 (Fed. Cir. 2016) (holding patent owner waived an
argument addressed in the preliminary response by not raising the same
argument in the patent owner response). Additionally, the Board’s Trial
Practice Guide states that the Patent Owner Response “should identify all the
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involved claims that are believed to be patentable and state the basis for that
belief.” Consolidated Trial Practice Guide (“TPG”), 66 (Nov. 2019).5
On the record before us, we note that we have reviewed arguments
and evidence advanced by Petitioner to support its unpatentability
contentions, where Patent Owner chose not to address certain limitations in
its Patent Owner Response. In this regard, the record contains persuasive
arguments and evidence presented by Petitioner regarding the manner in
which the prior art discloses the corresponding limitations of claims 1–23 of
the ’588 patent.
B. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art would have a
“a Bachelor’s degree or equivalent in electrical engineering, computer
engineering, or similar field, and at least two years’ experience in a relevant
field such as telecommunications or multimedia communications.” Pet. 19.
In support, Dr. Lavian testifies that the relevant experience could include
“experience in designing, implementing, monitoring and maintaining voice
over Internet protocol [VoIP] and multimedia networks,” and the person of
ordinary skill would therefore have “at least some familiarity with the
fundamentals of computer networks and related concepts, including VoIP,
multimedia transmissions, protocol conversion, and well-known
communication protocols such as SIP, H.323, and TCP/IP.” Ex. 1002 ¶ 18.
In the Decision on Institution, we adopted Petitioner’s proposed skill
level, that is, that one of ordinary skill in the art would have a Bachelor’s
degree or equivalent in electrical engineering, computer engineering, or
similar field, and at least two years of experience in a relevant field such as

5 Available at https://go.usa.gov/xpvPF.
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telecommunications or multimedia communications. Inst. Dec. 20. We also
agreed with Petitioner that one of ordinary skill would have some familiarity
with the design and implementation of VoIP and multimedia networks. Id.
We did not agree, however, that the qualifications included monitoring and
maintaining VoIP and multimedia networks, as Petitioner asserted, and
therefore declined to adopt those requirements. Id. at 20–21.
In its Response, Patent Owner accepted the qualifications for one of
ordinary skill in the art adopted in the Decision on Institution to include
“familiarity with the design and implementation of VoIP and multimedia
networks,” but further described this requirement to include other
requirements:
an understanding of the performance requirements that real-time
communication demands, and the constraints that this places on
processing and converting a multimedia data stream; and
an understanding regarding the complexity of processing media and
signaling and the computational demands this would place on a
communication controller.
PO Resp. 16–17. Patent Owner refers to GPAC, which identifies the factor
of the “type of problems encountered in the art” as a consideration in
determining the level of ordinary skill in the art. Id. at 17 (citing In re
GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)).
We have reviewed the relevant technology and claims of the ’588
patent, as well as the technology of the asserted prior art, and we adopt the
same qualifications as those adopted in the Decision on Institution because
they are commensurate with the relevant technology.
These qualifications are similar to those presented by Petitioner, with
the exception that the additional proposed qualifications for monitoring and
maintaining VoIP and multimedia networks are not adopted because a
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person of ordinary skill need not have had hands-on experience with the
operation of monitoring and maintaining networks. As noted, the
previously-adopted qualifications are acceptable to Patent Owner, except
that Patent Owner proposes to include some more specific details for the
level of qualifications that we decline to add because that specific
knowledge, at least at some level, would fall within the knowledge of one
with experience in the telecommunications or multimedia communications
fields and having familiarity with the design and implementation of VoIP
and multimedia networks.
Additionally, we note that in the Decision on Institution, we requested
that Patent Owner address what impact, if any, the different levels of
proposed qualifications have on the obviousness analysis. Inst. Dec. 21, n.4.
Neither Patent Owner nor Petitioner identified any differences in their
obviousness analysis due to differences in the qualifications of a person of
ordinary skill in the art. See generally, PO Resp.; Pet. Reply; PO Sur-Reply.
C. Claim Construction
For cases like this one, where the petition for inter partes review was
filed after November 13, 2018, the Board interprets claim terms in
accordance with the standard used in federal district court in a civil action
involving the validity or infringement of a patent. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358
(Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under the principles
set forth by our reviewing court, the “words of a claim ‘are generally given
their ordinary and customary meaning,’” as would be understood by a
person of ordinary skill in the art in question at the time of the invention.
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Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). “In determining the meaning of the disputed claim limitation,
we look principally to the intrinsic evidence of record, examining the claim
language itself, the written description, and the prosecution history, if in
evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
1. “multiple data stream”
The interpretation of “multimedia data stream” is in dispute. In the
Patent Owner Response, Patent Owner argues that the primary prior art
reference, Ress, teaches only establishing media stream communications,
and “does not disclose communicating a multimedia data stream (comprising
both signaling and media messages) in a particular protocol.” PO Resp. 18.
In its Sur-Reply, Patent Owner asserts that a person of ordinary skill in the
art would have understood the term “multimedia data stream” to comprise
both signaling and media messages, as this is alleged to be consistent with
the language of the claims and the intrinsic record. PO Sur-Reply 3 (citing
Ex. 1001, Fig. 1A, Fig. 1B, 1:29–31, 4:20–5:29, 6:11–21, 7:26–30, 7:33–37,
7:59–61). Dr. Jeffay testifies that a person of ordinary skill in the art would
have understood that the first and second protocols refer to protocols that
govern the format of messages conveying both signaling and media data.
Ex. 2001 ¶ 22. Patent Owner argues that Petitioner and its expert, Dr.
Lavian, indicate their understanding that both signaling and media data are
included in a multimedia data stream. PO Sur-Resp. 3 (citing Ex. 2017, 8–
10, 32–33; Ex. 1002 ¶¶ 47, 54; Ex. 2026, 117:21–118:17).
In its Reply, Petitioner argues that Patent Owner’s proposed
construction is incorrect. Pet. Reply 1–4. Petitioner asserts that the intrinsic
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record does not require that the multimedia data stream being converted has
to consist of both signaling and media messages. Id. at 3. Petitioner
contends that the ’588 patent’s primary embodiments discuss conversion
between H.323 and SIP, and both of these use a different protocol, Real-time
Transport Protocol (RTP), to transport media by different paths. Id. at 3
(citing Ex. 1001, 1:22–30, 3:25–39; Ex. 1017 ¶¶ 3–4). Petitioner argues that
Patent Owner’s proposed construction must be rejected because it reads out
embodiments of the ’588 patent. Id.
In supplemental briefing, Petitioner argues that the intrinsic record
supports its proposed construction and “[t]he data may be signaling or media
content or both.” Pet. Suppl. Br. 1. Petitioner asserts that “the multimedia
data stream must contain signaling and may—but need not—contain
additional elements.” Id. at 1–2 (citing Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added.”). Petitioner also points to Figure 4 of the
Specification which shows conversion between a first and intermediate
protocol, with the associated disclosure that this process “assembl[es] the
intermediate protocol messages to form the multimedia data stream.” Id. at
2–3 (citing Ex. 1001, 5:55–58, Fig. 4).
In its Sur-Reply, Patent Owner asserts that Petitioner’s arguments rest
on the faulty premise that H.323 and SIP are exclusively call signaling
protocols that do not have media paths to convert. PO Sur-Reply 5 (citing
Ex. 1017 ¶¶ 3–4). Patent Owner argues that the H.323 standard describes
how media streams are formatted and exchanged. Id. (citing Ex. 1008, 3, 9–
11, 18–19). Patent Owner further contends that H.323 and SIP do not limit
the transmission of media to RTP, and protocol compatibility issues can
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arise with respect to the transmission of media. Id. (citing Ex. 1008, 27; Ex.
1009, 8). Patent Owner contends that Dr. Lavian admits that other
protocols, like TCP, UDP, and HTTP, can be used to transport media, and
these diverse media protocols are incompatible with each other, “further
highlighting the need for the claimed invention to process both signaling and
media.” Id. at 5–6 (citing Ex. 2041, 9:22–11:4, 14:22–15:2, 15:18–21,
16:13–21). Patent Owner also assert that H.232 and SIP are a family of
protocols that include both a signaling portion and data portion. See Ex.
1018, 51:5-20; Ex. 2026, 118:13–17.
In supplemental briefing, Patent Owner asserts that under Petitioner’s
proposed construction, “multimedia” means no media. PO Suppl. Br. 1.
Patent Owner argues that the plain language of the claim dictates that
“multimedia” include media messages. Id. Patent Owner refers to Dr.
Jeffay’s testimony which states “[m]ultimedia is just – the technical matter is
understood as multiple forms of media.” Id. at 1–2 (citing Ex. 1018, 31:7–
10). Patent Owner argues that “[t]o construe ‘multimedia’ to mean no media
improperly rewrites the plain language of the claim term to eliminate the
word ‘multimedia.’” Id. at 2 (citing Los Angeles Biomedical Research Inst.
at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1062 (Fed.
Cir. 2017)). Patent Owner also argues that a person of ordinary skill in the
art would understand the term “multimedia data stream” to include
“messages conveying both signaling and media data,” as both Dr. Jeffay and
Dr. Lavian have indicated. Id. at 2–3 (citing Ex. 2001 ¶ 22; Ex. 2017, 33).
Patent Owner also asserts that the ’588 patent Specification supports its
proposed construction by disclosing that “[t]he two endpoints and systems
speak different languages and, thus, cannot understand the messaging and
data being transmitted by the other.” Id. at 3 (citing Ex. 1001, 1:61–64).
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Patent Owner argues that in the ’588 patent, the media messages must be
included in the multimedia data stream received by the communication
controller because otherwise, the actual content of conversations would
never be exchanged in embodiments. Id. at 4 (citing Ex. 1001, Figs. 1A, 1B,
2). Patent Owner argues that H.323 is a suite of protocols that includes both
signaling and media protocols, and SIP is a family of protocols that conveys
both signaling and media messages. Id. at 4–5 (citing Ex. 2001 ¶ 22; Ex.
2009 ¶ 73; Ex. 1018, 37:6–9, 49:10–20, 38:15–17, 51:5–20; Ex. 1008, 10–
12). Patent Owner asserts that Dr. Lavian agreed that transmission of a
multimedia communication using SIP conveys both signaling and media
messages. Id. at 5 (citing Ex. 2026, 118:13–17).
In its Response to the supplemental briefing, Petitioner asserts that
Patent Owner selectively cites to Dr. Lavian’s district court declaration
addressing a different claim construction issue, and Dr. Lavian also
explained in that declaration that the SIP and H.323 standards carry
signaling, while the content is carried by RTP. Pet. Suppl. Resp. Br. 2
(citing Ex. 2017, 32–33). Petitioner disputes Patent Owner’s contention that
Figures 1A, 1B, and 2 of the ’588 patent support its construction because
Figure 2’s controller is converting messages (i.e., signals), not media
content, and Figures 1A and 1B are shown converting between “text” and
“binary” protocols. Id. Petitioner also asserts that Patent Owner has never
refuted Petitioner’s point that both SIP and H.323 typically send media
content over the RTP protocol on a separate data stream. Id. at 2–3.
In its Response to supplemental briefing, Patent Owner argues that
Petitioner is asserting that “multimedia” does not modify “data stream,” but
rather modifies the word “protocol” found later in limitation [a], which
distorts the plain language of the claim. PO Suppl. Resp. Br. 1. Patent
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Owner argues that “[i]f ‘multimedia’ was intended to modify ‘protocol,’ the
claim term should have been drafted as ‘receiving a data stream at a
communication controller in a first multimedia protocol.’” Id. Patent Owner
also contends that Petitioner’s proposed construction is predicated upon its
assertion that the word “message” only refers to “signaling,” but “message”
is simply a generic reference for a transmission structure comprising a
header and payload. Id. at 1–2 (citing Ex. 2009 ¶ 56). Patent Owner asserts
that the communication controller in the ’588 patent receives both signaling
and media messages, with one embodiment disclosing that the protocol
converter inside the communication controller packages “the payload or data
[the media] from the original data stream along with the message or
command in the interim protocol.” Id. at 2 (citing Ex. 1001, 4:47–51, Fig.
2). Patent Owner contends that Petitioner’s assertion there is no media
content received at initiation of a communication is merely attorney
argument, and further that the ’588 patent does not describe H.323 and SIP
as only signaling protocols. Id. at 3 (citing Ex. 1001, 1:31–34).
In accordance with Phillips, “the claims themselves provide substantial
guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at
1314. Limitations of claim 1 recite: “receiving a multimedia data stream at
a communication controller in a first protocol from a communication device,
wherein the first protocol comprises a signaling protocol,” and “translating
said intermediate protocol into a second protocol, wherein the second
protocol comprises a signaling protocol.” Ex. 1001, 7:27–30, 7:33–35
(emphasis added). Thus, according to the claim language itself, a
“multimedia data stream” in the respective protocols is recited to comprise a
signaling protocol.
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Turning to the Specification, although it does not have an explicit
definition of a “multimedia data stream,” it refers to protocols, specifically
H.323 and SIP, for use in multimedia communications:
Two examples of such protocols that have been defined for
handling the administration of VoIP, and its natural extension
to multimedia communication are H.323 from the International
Telecommunication Union-Telecommunication Standardization
Sector (ITU-T) and the Session Initiation Protocol (SIP) from
the Internet Engineering Task Force (IETF). Both H.323 and
SIP typically allow for multimedia communication including
voice, video, and data communications in real-time.
Ex. 1001, 1:22–30. Additionally, the Specification describes the use of SIP
and H.323 in the invention:
Endpoints 101 and 107 each use a text-based communication
protocol, such as SIP, while endpoints 102 and 106 each use a
binary communication protocol, such as H.323. SIP and H.323
are merely specific examples of text-based and binary
protocols. Other protocols may be used as well.
Ex. 1001, 3:25–29. Dr. Lavian refers to the IETF’s “SIP-H.323
Interworking” document, dated July 13, 2001, as support for his testimony
that SIP and H.323 are signaling protocols. See Ex. 1017 ¶ 3; Ex. 1010.
Consistent with his testimony, the IETF document states that
[t]he primary objective of the SIP-H.323 Interworking function
(IWF) is to provide protocol conversion between SIP and H.323
protocol. Both of these protocols use similar formats (e.g.
RTP) to transfer media (audio/video/data) over the Packet
Network. It is, therefore, required to perform the mapping
between SIP and H.323 signaling messages only to achieve the
interworking between the two protocols. The objective is to
transmit media end-to-end directly between the two end
systems in H.323 and SIP networks.
Ex. 1010, 3–4. Dr. Lavian additionally testifies that SIP is defined in RFC
3261, the official Internet signaling protocol for IP networks, as purely a
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signaling protocol “that can be used with other IETF protocols to build a
complete multimedia architecture” and “[t]ypically, these architectures will
include protocols such as the Realtime Transport Protocol (RTP).” Ex. 1002
¶ 53 (citing Ex. 1009, 9).
The Specification discloses the use of SIP in the embodiments of the
’588 patent. We credit Dr. Lavian’s testimony that one of ordinary skill in
the art would consider SIP to be a signaling protocol because this testimony
is supported by other prior art, as discussed above. For instance, RFC 3261
discloses that “SIP is an application-layer control protocol that can establish,
modify, and terminate multimedia sessions (conferences) such as Internet
telephony calls,” which are signaling functions, and the data itself is
transported in RTP. See Ex. 1009, 9.
Dr. Jeffay also concurs with Dr. Lavian’s understanding of SIP,
testifying that
SIP is only used to establish sessions. It does not carry the
actual media for the session. As such, SIP is considered a
“signaling” protocol as it generates the “signals” (messages) to
set up and manage a call . . . RTP, or Real-Time Transport
Protocol, is an application layer protocol for actually carrying
the media of a multimedia communication session.
Ex. 2009 ¶¶ 75–76. The evidence of record supports that the Specification
of the ’588 patent discloses embodiments that use SIP and H.323. Patent
Owner’s references to the ’588 patent do not refute Petitioner’s arguments
that these protocols are used. See Ex. 1001, Fig. 1A, Fig. 1B, 1:29–31,
4:20–5:29, 6:11–21, 7:26–30, 7:33–37, 7:59–61. As discussed, the evidence
further supports that one of ordinary skill in the art would understand SIP to
be a signaling protocol.
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“[T]here is a strong presumption against a claim construction that
excludes a disclosed embodiment.” See In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Thus,
because the Specification discloses the use of signaling protocols only, such
as by the use of SIP, in its multimedia communications in embodiments, it
supports a claim construction for the term “multimedia data stream” that
includes signaling messages only. This interpretation is consistent with the
claim language itself, where the “multimedia data stream” protocols are
recited to comprise a signaling protocol.
Accordingly, we find that the evidence of record supports Petitioner’s
construction that the recited “multimedia data stream” does not have to
consist of both signaling and media messages, and may be a signaling
message only.
Patent Owner also asserts that Petitioner did not propose any claim
constructions in the Petition, relying on the ordinary and customary meaning
of terms, and in its Reply, Petitioner now proposes a construction of
“multimedia data stream” that is inconsistent with the ordinary meaning of
the term. PO Sur-Reply 1–2. As such, Patent Owner asserts that
Petitioner’s belated argument must be rejected as a matter of law. Id. at 2.
We are not persuaded by Patent Owner’s argument on this issue because
Petitioner’s arguments respond to issues on the merits of Ress’s teachings
first raised in Patent Owner’s Response, which could not have been
reasonably anticipated when the Petition was filed. See TPG, 73–75.
2. Other Claim Terms
We determine that it is not necessary to provide an express
interpretation of any other claim terms. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
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Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (“[O]nly those terms need be construed that are in controversy, and
only to the extent necessary to resolve the controversy.”).
D. Alleged Obviousness of Claims 1–23 Over Ress
In the Petition, Petitioner contends that claims 1–23 are rendered
obvious by Ress. Pet. 21–56. To support its contentions, Petitioner provides
explanations as to how Ress teaches each claim limitation. Id. Petitioner
also relies upon the Lavian Declarations (Ex. 1002; Ex. 1017) to support its
positions. Patent Owner argues that the prior art asserted fails to teach or
suggest some of the claim limitations and the rationale to combine the
references is insufficient, with Dr. Jeffay providing supporting testimony.
See generally PO Resp.; Ex. 2001; Ex. 2009.
We begin our discussion with a brief summary of Ress and then
address the evidence and arguments presented.
1. Ress (Ex. 1004)
Ress is directed to a method and apparatus for interworking between
internet protocol (IP) telephony protocols. Ex. 1004, 1:13–17. The system
includes a call server that has a first protocol agent for communicating with
a first protocol device according to a first protocol and a second protocol
agent that communicates with a second protocol device according to a
second protocol. Id. at 3:11–16. An interworking agent provides functions
usable by the first and second protocol agents to communicate using a third
protocol. Id. at 3:16–18. Figure 3, reproduced below, depicts a block
diagram illustrating media gateway controller (MCG) and gatekeeper (GK)
functions implemented within a call server according to an embodiment of
the invention. Id. at 3:37–40.
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Figure 3, above, depicts an embodiment of the invention with call server
300, which includes MGC function 302 and GK function 303. Ex. 1004,
4:43–46.
The interworking agent provides functions usable by the first and
second protocol’s agents to communicate using a third protocol, where the
third protocol provides a superset of the functions provided by the first and
second protocols. Ex. 1004, 3:16–20. Figure 5, reproduced below,
illustrates a call server that includes a plurality of interworking agents. Id. at
3:41–43.
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As illustrated in Figure 5, above, interworking agent 506 provides functions
usable by different protocol agents to provide interworking between the
protocol agents. Ex. 1004, 5:35–38.
The invention provides for a mechanism provided by agent
interworking protocols for implementing media management and exchange
by using connection information parameters (CIP) depicted in Figure 8,
reproduced below. Ex. 1004, 8:8–12.
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Figure 8, above, is a table showing example fields and field values for the
connection information parameter according to an embodiment of the
invention. Ex. 1004, 8:16–18. Current media description field 812 stores
current media description value 814 that indicates the description of the
current media stream. Id. at 8:52–54. Media capabilities field 816 includes
media capabilities value or values 818 that allow an entity to exchange its
media capabilities with another entity. Id. at 8:56–58. In the example
depicted in Figure 8, the media capabilities field includes a list of supported
formats, such as G.711 or G.729. Id. at 8:58–60.
2. Analysis
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
a. Independent claim 1
i. Preamble and Limitation [a]
Petitioner asserts that Ress teaches a method for multimedia
communication, as recited in the preamble of claim 1. Pet. 22. Petitioner
relies upon Ress’s disclosure that it is directed to a method and apparatus for
interworking between IP telephony protocols. Id. (citing Ex. 1004, 1:15–
17).
We have reviewed Petitioner’s arguments and evidence and determine
that Petitioner has provided sufficient evidence that Ress teaches the
preamble of claim 1.6
Petitioner contends that Ress teaches limitation [a] by its disclosure of
the use of protocols for establishing “media stream communications, such as
voice, data, video, or combinations thereof, over an IP network,” with the
multimedia data streams received at various communication controllers such
as gateways, terminals and multipoint control units. Pet. 22 (citing Ex.
1004, 1:20–24, 1:58–62, Figs. 3, 4). Petitioner asserts that Ress discloses a
call server that “includes a first protocol agent for communicating with a
first protocol device according to a first protocol,” and that the first protocol
can be a signaling protocol, such as H.323. Id. at 23 (citing Ex. 1004, code
(57), 5:15–61, Figs. 5, 6). Petitioner further contends that data streams in

6 We make no specific determination as to whether the preamble of claim 1
is limiting.
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Ress are received from communication devices, such as end user devices
with gateways. Id. at 24 (citing Ex. 1004, 1:46–48, 2:6–9, 18:7–14).
Patent Owner argues that Ress does not teach or suggest “receiving a
multimedia data stream . . . in a first protocol” because a person of ordinary
skill in the art would have understood that the first protocol format for the
multimedia data stream would include both signaling and media messages.
PO Resp. 18 (citing Ex. 2016 ¶¶ 20–21). Dr. Jeffay contends that Ress
discloses specific gateways and their use of control signaling to establish
media streams, but “is otherwise silent on their use to actually receive a
multimedia data stream.” Ex. 2009 ¶ 93.
Patent Owner also asserts that Ress fails to teach receiving the
multimedia data stream at the claimed “communication controller” from the
claimed “communication device.” PO Resp. 19. Patent Owner argues that
Ress “is focused on the manner in which these various network elements
work to establish a media stream over the packet network.” Id. Patent
Owner refers to annotated Figure 3, reproduced below, in support of its
argument. Id. at 19–20.
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Annotated Figure 3 of Ress, reproduced above, is a block diagram
illustrating media gateway controller and gatekeeper functions implemented
within a call server. Ex. 1004, 3:37–40. Patent Owner, referring to
annotated Figure 3, argues that “Ress illustrates a ‘packetized media stream’
(in blue) communicated between gateways is not associated with the
signaling messages (in red) communicated to the call server,” so Ress fails
to disclose a first protocol for communicating the packetized media stream.
PO Resp. 19.
Patent Owner’s arguments are based upon its proposed construction of
the term “multimedia data stream,” which we have not adopted. Instead, as
discussed above, we have interpreted the claimed “multimedia data stream”
so that it may consist of signaling messages only. Under that construction,
we determine that Petitioner’s assertion that Ress’s receipt of messages in a
first signaling protocol by the call server sufficiently teaches limitation 1[a].

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ii. Limitation [b]
Petitioner contends that limitation [b] of claim 1, “detecting the type
of said first protocol,” is taught by Ress’s disclosure that “[e]ach of the agent
protocols to be interworked provide some means by which a telephony
device can make known the media capabilities that it supports.” Pet. 24
(citing Ex. 1004, 6:57–60). Petitioner argues that “[i]n order to convert the
message from a first protocol to an intermediate protocol, the inter[]working
agents of Ress first detect the type of first protocol being used by the
device.” Id. at 24–25 (citing Ex. 1004, 5:33–35 (“Interworking agents can
also identify AIP [agent interworking protocol] message types”)). Petitioner
refers to the table of Ress’s Figure 8 that contains exemplary fields and field
values for the connection information parameter (CIP). Id. (citing Ex. 1004,
8:16–18). Petitioner contends that the current media value indicates the
protocol that the media stream is using, and based on the type of protocol
detected, the interworking agent converts messages to the protocol
independent agent interworking protocol. Id. at 25 (citing Ex. 1004, 8:8–18,
8:52–67, Fig. 8). Petitioner also asserts that Figures 9(a) and 9(b) of Ress
illustrate the detecting step because the system “determines the message
type.” Id. at 26.
Petitioner directs us to the steps of Figures 9(a) and 9(b) of Ress,
reproduced below with Petitioner’s annotations. Pet. Reply 7–9.
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Annotated Figures 9(a) and 9(b), reproduced above, are flow charts
illustrating messaging in embodiments of Ress. See Ex. 1004, 3:59–61.
Petitioner refers to step ST2 of Figure 9(a), asserting that Ress checks a type
of protocol to determine whether the AIP has a mapping available. Pet.
Reply 7 (citing Ex. 1004, 9:58–60; Ex. 1017 ¶¶ 18–19). Petitioner also
refers to step ST7 of Figure 9(a), asserting that determining the message type
requires detecting protocol type and also that in order to determine whether a
message is supported (step ST18), the protocol must be detected to make
that determination. Id. at 8 (citing 1004, 10:25–41; Ex. 1017 ¶¶ 20–21).
Dr. Lavian testifies that in Figure 9(a) of Ress, checking if a mapping
of AIP is available requires detecting the type of protocol and checking if the
detected type is supported. Ex. 1017 ¶ 19. Dr. Lavian also testifies that “to
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detect media capabilities for a particular device in Ress, the MGC must also
detect the agent protocol corresponding to that device.” Id. ¶ 17. Dr. Lavian
testifies that in order “to determine whether an AIP mapping is available
between two protocols . . . Ress’ call server must know which protocols it is
converting.” Id. Dr. Lavian refers to Ress’s Figure 5, testifying that the
interworking agent is the glue between the protocols, and “Ress’ call server
must know which protocols it is converting.” Id.
Patent Owner argues that Ress’s disclosure that “[e]ach of the agent
protocols to be interworked provide . . . means [to] make known the media
capabilities that it supports,” upon which Petitioner relies, merely
acknowledges that the agent protocols provide a mechanism to “make
known” the media capabilities (e.g., audio or video codecs) that the device
supports. PO Resp. 21 (citing Ex. 2009 ¶¶ 101–112; Ex. 1004, 6:55–7:32).
Patent Owner asserts that Petitioner’s argument based on the interworking
agent’s ability to identify AIP message types and determine whether a
mapping to the AIP is available conflates the type of protocol with the type
of message within a protocol or the type of media format supported by the
protocol. Id. (citing Pet. 25; Ex. 1002 ¶ 96; Ex. 2009 ¶¶ 101–112). Patent
Owner contends that a person of ordinary skill in the art would understand
that neither the interworking agent’s ability to identify or determine a type of
message in the AIP, nor the sending protocol’s ability to determine whether
a mapping is available to the AIP, say anything about the interworking
agent’s ability to detect the actual protocol itself. Id. at 21–22 (citing Ex.
2009 ¶¶ 101–112).
Patent Owner additionally asserts that the Petition’s reference to
Ress’s CIP does not teach detection. PO Resp. 22. Patent Owner argues
that the CIP represents the data structure provided within the AIP, but these
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field values do not indicate a type of said first protocol because the AIP is
intended to be a protocol independent format. Id. (citing Ex. 1004, 6:23–25,
8:9–12). Patent Owner also asserts that Figures 9(a) and 9(b) do not teach
detecting because, similar to CIP field values, they merely teach the ability
to determine whether a mapping to an AIP message is available (ST2) or
determine an AIP message type (ST7). Id. (citing Pet. 26; Ex. 1002 ¶ 97;
Ex. 2009 ¶¶ 101–112). Patent Owner argues that “ST1 of Fig. 9(a) confirms
that the sending protocol agent already knows the protocol in use, as it
directly receives the message.” Id.
Having considered both parties’ arguments, we are persuaded by
Petitioner’s showing that Ress suggests limitation [b], despite Patent
Owner’s arguments to the contrary. Petitioner argues, and we agree, that
Patent Owner’s argument that Ress does not disclose protocol detection
“amounts to arguing that Ress converts between various protocols without
knowing which protocols are being converted.” Pet. Reply 6. The goal of
Ress’s invention is interworking between different telephony protocols. See
Ex. 1004, code (57). We credit Dr. Lavian’s testimony that, in order to
perform AIP mapping and protocol conversion, the protocol must be
detected. See Ex. 1001 ¶ 98; Ex. 1017 ¶ 19. Although Ress does not
disclose the details of how the protocol detection is performed by the call
server, as Dr. Lavian testifies “[i]f a packet type is not detected, it is
impossible to process.”7 Id. ¶ 16. We underscore that Petitioner’s challenge
is based on obviousness, which does not require that the reference explicitly
disclose what is claimed—rather, the reference need only suggest the

7 Petitioner notes that the ’588 patent does not disclose how its detection is
done. Tr. 47:1–3. Petitioner also confirms that its position is that the call
server of Ress is doing the detection as claimed. Id. at 15:20–21.
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teaching to one skilled in the art. See In re Mouttet, 686 F.3d 1322, 1333
(Fed. Cir. 2012) (“[T]he test for obviousness is what the combined teachings
of the references would have suggested to those having ordinary skill in the
art.”).
For issues relating to Figures 9(a) and 9(b) of Ress, Patent Owner’s
arguments are keyed to the assertion that Ress’s agents will receive only
messages in certain protocols, so that the agent need not detect any
protocols. PO Resp. 22–23; Ex. 2009 ¶¶ 107–108. For instance, Dr. Jeffay
testifies that the first step (ST1) in Figure 9(a) labelled “Receive Message
from External Entity” indicates to a person of ordinary skill in the art “that
the Ress protocol agent already knows the protocol in use and simply (and
directly) receives the message as the first step already knows the protocol in
use and simply (and directly) receives the message as the first step.” Ex.
2009 ¶ 107. Dr. Jeffay further testifies that “Ress teaches that protocol
detection is not necessary because messages in a given protocol will be
received by an agent designed to handle that protocol.” Id. ¶ 108. Although
agents within the call server may be specific to protocols, this does not
detract from the evidence, including Dr. Lavian’s testimony, that first
protocol detection would be required in Ress. Notably, Patent Owner does
not address how Ress could teach advanced knowledge of the type of
protocol (PO Resp. 23), if there is no protocol detection performed by Ress
in the first place. Accordingly, we are not persuaded by these Patent Owner
arguments relating to limitation 1[b].
Additionally, Petitioner asserts that it would have been obvious to a
person of ordinary skill in the art to implement the system of Ress to detect
the type of the first protocol with a reasonable expectation of success in
doing so. Pet. 26–27. Petitioner contends that a person of ordinary skill in
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the art would have understood that the ability to convert between protocols
requires the ability to detect what type of protocol is being converted in
order to understand how to convert that protocol. Id. (citing Ex. 1002 ¶¶ 66–
73, 98). Dr. Lavian testifies that only a small amount of code is required to
analyze the headers of incoming packets to determine protocol and this is
implicit in the IETF standards and was well-known to a person of ordinary
skill in the art at the time. Ex. 1002 ¶ 98. Patent Owner argues that
“detecting” would have not been obvious in Ress because “conversion can
readily occur without detection where the type of protocol is known in
advance.” PO Resp. 23. We do not find Patent Owner’s argument to be
persuasive because there is no explanation of where the advanced
determination of protocol would be done. Accordingly, in addition to our
determination that Ress suggests the detecting step to one of ordinary skill in
the art, we also find that Petitioner’s arguments on this basis, that is, that it
would have been obvious to a person of ordinary skill in the art to
implement the system of Ress to detect the type of the first protocol, are
sufficient.
Thus, we determine that Petitioner’s evidence and argument
sufficiently demonstrate that Ress teaches or suggests limitation 1[b].
iii. Limitation [c]
Petitioner asserts that Ress teaches an interworking agent that
provides functions usable by the first and second protocol agents to
communicate with each other according to a third protocol, with the third
protocol equivalent to the claimed “intermediate protocol.” Pet. 27 (citing
Ex. 1004, code (57)). Petitioner contends that Ress teaches that
interworking agents receive messages in various protocols and converts
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them into a third protocol or AIP. Id. at 27–28 (citing Ex. 1004, 5:29–33,
6:12–19, 6:22–37, Figs. 6, 7).
Patent Owner argues that Ress fails to teach this limitation because
the limitation requires conversion of the entire multimedia data stream, that
is, both signaling and media messages. PO Resp. 24–25. We do not find
this argument persuasive for the reasons discussed above for limitation 1[a].
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has sufficiently shown that Ress
teaches limitation [c] of claim 1.
iv. Limitation [d]
Petitioner asserts that Ress teaches limitation [d] by its disclosure of a
receiving protocol agent that receives a message from the sending protocol
agent using the independent protocol (IAP), where the receiving protocol
agent converts the intermediate IAP protocol into a second protocol (such as
H.323 or SIP). Pet. 29 (citing Ex. 1004, code (57), 5:14–61, 10:10–41, Figs.
5, 6; 9(b)).
Patent Owner argues that Ress fails to teach this limitation because it
“fails to disclose translating both the signaling and media messages of a
multimedia data stream.” PO Resp. 25. We do not find this argument
persuasive for the reasons discussed above for limitation 1[a].
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has sufficiently shown that Ress
teaches limitation [d] of claim 1.
v. Limitation [e]
Petitioner asserts that Ress teaches limitation 1[e] by its disclosure of
transmissions to target communication devices in the form of end user
devices via gateways. Pet. 29–30. For instance, Ress discloses that with
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regard to Figure 2, “a first gateway 200 can be associated with a calling end
user device and a second gateway 202 can be associated with a called end
user device for a given media communication,” with SIP sessions that
include “internet multimedia conferences, internet telephone calls, and
multimedia distribution.” Id. (citing Ex. 1004, 1:46–48, 1:64–65, 2:6–9,
2:30–42, 3:5–10, 18:7–14, Fig. 2).
Patent Owner argues that Ress fails to disclose transmitting a
multimedia data stream because it does not disclose receiving a multimedia
data stream. PO Resp. 26. We do not find this argument persuasive for the
reasons discussed above for limitation 1[a].
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has sufficiently shown that Ress
teaches limitation [e] of claim 1.
vi. Limitation [f]
Petitioner contends that Ress teaches limitation [f] by its disclosure of
first and second protocols that may be H.323 or SIP, for example. Pet. 30
(citing Ex. 1004, 5:15–61, 7:13–32, Figs. 5, 6). Petitioner asserts that the
’588 patent discloses that H.323 is an example of a binary format protocol
and SIP is an example of a text-based protocol. Id. (citing Ex. 1001, 1:43–
44, 1:46–48). Dr. Lavian provides supporting testimony on the types of
protocols disclosed in Ress. Ex. 1002 ¶¶ 79, 103.
Patent Owner presents no arguments related to limitation 1[f].
We have reviewed Petitioner’s arguments and evidence for this claim
limitation and are persuaded that Petitioner has sufficiently shown that Ress
teaches limitation [f] of claim 1.
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vii. Conclusion
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness, discussed below. PO Resp. 49–55. For the
reasons discussed, we find that Patent Owner’s evidence purportedly
showing long-felt need, unexpected results, and industry praise, does not
outweigh Petitioner’s evidence concerning the obviousness of claim 1. On
the full record, Petitioner has established by a preponderance of the evidence
that claim 1 would have been obvious over Ress.
c. Independent Claim 7
Independent claim 7 is an apparatus claim with limitations that
parallel most of those in claim 1. Compare Ex. 1001, 7:26–41, with id. at
8:19–37. Petitioner contends that the “communication controller” in the
claim 7 preamble is equivalent to Ress’s call server, which “performs call
signaling functions, such as translations and media capabilities exchange, on
behalf of an end user device, gateway, or other entity.” Pet. 22 (citing Ex.
1004, 3:8–10). Claim 7 also recites “a message interface to transceive
multimedia data from a communication endpoint in a first protocol,” and
Petitioner contends that the “message interface” functionality is performed
by Ress’s call server. Pet. 43–44 (citing Ex. 1004, 9:46–49). Petitioner
asserts that Ress discloses that the call server contains call halves that serve
to transceive multimedia data from a communication endpoint using
multimedia protocols such as H.323 and SIP. Id. at 43–44. Petitioner
contends that the “protocol signaler” recited in claim 7 is performed by
Ress’s call server. Id. at 44. Petitioner asserts that the connection
information parameter data structure table in Figure 8 of Ress corresponds to
the claimed “first protocol conversion table.” Id. at 44–45. Petitioner
contends that the claimed “protocol conversion utility” is performed by the
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interworking agents of the call server of Ress. Id. at 45. For limitation 7[e],
the Petition contends that the claimed “network interface” is the endpoints in
Ress, such as gateways and terminals, that transceive multimedia data in an
interim protocol to other endpoints. Id. at 45–46 (citing Ex. 1004, Figs. 1, 2,
7). Petitioner also asserts that Ress discloses limitation 7[e] for the reasons
disclosed in limitation 1[e]. Id. at 45.
For the preamble and limitation 7[a], Patent Owner argues that
Petitioner fails to provide any facts to support its contentions that a person of
ordinary skill in the art would understand that Figures 5, 9(a) and 9(b) of
Ress disclose the claimed message interface. PO Resp. 34–35. Patent
Owner also argues that in Ress packetized media streams never reach the
call server and do not teach “tranceiv[ing] multimedia data.” Id. at 35–36.
For the preamble and limitation 7[a] of claim 7, we have reviewed the
arguments and evidence and are persuaded that Petitioner has sufficiently
shown that Ress teaches the preamble and limitation 1[a] of claim 7.8 We
do not find Patent Owner’s argument regarding lack of support in the
Petition to be persuasive because, as Petitioner explains, the Petition cites to
Figures 9(a) and 9(b) of Ress, showing processing by the sending and
receiving protocol agents to “receive message from external entity” and
“transmit message to receiving protocol agent,” which Petitioner asserts
discloses the claimed message interface that transceives multimedia data.
Pet. Reply 16 (citing Pet. 43–44; Ex. 1004, 9:46–56, Figs. 9(a), 9(b)). We
also do not find convincing Patent Owner’s argument that packetized media
streams never reach the call server and, thus, Ress fails to disclose

8 We make no specific determination as to whether the preamble of claim 7
is limiting.
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“tranceiv[ing] multimedia data,” because it is based on Patent Owner’s
proposed construction of the term “multimedia data stream,” which we have
not adopted for the reasons discussed above.
For limitations 7[b]–7[d], we have reviewed the arguments and
evidence and are persuaded that Petitioner has sufficiently shown that Ress
teaches these limitations. For limitations 7[b] and 7[d], Patent Owner argues
that Ress does not disclose these limitations for the reasons presented for
limitations 1[a]–1[c]. PO Resp. 37. We do not find these arguments
persuasive for the reasons discussed for claim 1.
Patent Owner asserts that Petitioner fails to demonstrate that Ress
teaches limitation 7[e]. PO Resp. 37–38. Patent Owner argues that Ress
does not contain a “communication controller” having a “network interface.”
Id. Patent Owner argues that limitation 1[e] has a notably distinct scope
from limitation 7[e]. Id. (citing Ex. 2009 ¶¶ 153–154). Dr. Jeffay testifies
that Petitioner’s contentions under limitation 1[e] do not apply to limitation
7[e] because in Ress gateways and terminals do not receive messages in the
interim AIP protocol. Ex. 2009 ¶ 153. Dr. Jeffay testifies that the AIP
protocol is only used for communications between protocol agents in the call
server in Ress. Id.
In Reply, Petitioner asserts that limitation 7[e] claims a distributed
system similar to Ress’s Figure 6 “where the interim protocol is transmitted
between different endpoints, each containing its own interworking agent and
call agent.” Pet. Reply 17 (citing Ex. 1004, 5:45–47 (“call server 300 . . . is
divided into call servers 300A, 300B, and 300C, which can execute on the
same machine or different machines”); Ex. 1017 ¶ 33). Petitioner argues
that “[t]he different machines running the call server can be endpoints such
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as gateways, terminals, MCUs, etc., as discussed in the Petition.” Id. at 18
(citing Pet. 29–30, 45–46; Ex. 1017 ¶¶ 33–34).
Figure 6 of Ress, reproduced below, “is a block diagram illustrating
protocol agents implementing originating and terminating call half functions
executing on different machines wherein an interworking agent is associated
with each protoco1 agent.” Ex. 1004, 3:48–50.

Ress further describes Figure 6, above, as illustrating that “call server 300
illustrated in FIG. 5 is divided into call servers 300A, 300B, and 300C,
which can execute on the same machine or on different machines.” Ex.
1004, 5:45–48. Ress discloses that “[t]his division of call processing
functionality is enabled by interworking agents components 506A and 506B,
which enable protocol agents to communicate with each other using AIP
messaging.” Id. at 5:51–55. And, “[b]y allowing the protocol agents to
reside on separate machines, the interworking agents according to
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embodiments of [Ress] allow efficient division of call processing functions.”
Id. at 5:58–61.
The evidence supports that Ress teaches the claimed network interface
of limitation 7[e]. Petitioner asserts that the Ress’s call server corresponds
to the claimed “communication controller.” Pet. 42. As Petitioner explains,
consistent with Ress’s disclosures, “the interim protocol is transmitted
between different endpoints, each containing its own interworking agent and
call agent,” as depicted in Figure 6 of Ress. Pet. Reply 17 (citing Ex. 1004,
5:45–47). We agree with Petitioner’s argument that the different machines
running the call server can be endpoints, similar to gateways, as the
machines may serve as the claimed “target communication end-point.” Id.
Patent Owner argues that Petitioner’s assertion that claim 7[e] claims
a distributed system similar to the one of Ress’s Figure 6 is based on an
incorrect claim construction. PO Sur-Reply 15. Patent Owner, however,
fails to explain how this contention applies to Petitioner’s arguments
regarding Ress’s disclosures.
In addition to the arguments and evidence considered above, we have
considered Patent Owner’s arguments concerning objective indicia of
nonobviousness below. PO Resp. 49–55. For the reasons discussed, we find
that Patent Owner’s evidence purportedly showing long-felt need,
unexpected results, and industry praise, does not outweigh Petitioner’s
evidence concerning the obviousness of claim 7. On the full record,
Petitioner has established by a preponderance of the evidence that claim 7
would have been obvious over Ress.
c. Independent Claim 11
Independent claim 11 recites a method for multimedia communication
having limitations that parallel most of the steps of claim 1. Compare Ex.
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1001, 7:26–41, with id. at 8:51–9:6. Claim 11 additionally recites that the
conversion of the first protocol into the second protocol is performed
“irrespective of a second protocol in which the multimedia data stream is to
be transmitted to a target communication device.” Id. at 8:63–65. Petitioner
asserts that the intermediate AIP protocol in Ress “is designed to be
‘protocol-independent’ regardless of which protocols the endpoints use.”
Pet. 48–49 (citing Ex. 1004, 6:13–19 (“Because the interworking agent
components 702A and 702B provide functions for converting messages to
and from a protocol independent format, MGCP agent 700A and the H.323
agent 700B need not be aware of each other’s protocol.”)).
We have reviewed Petitioner’s explanations and supporting evidence
as to how Ress teaches the limitations of claim 11, and we agree with and
adopt Petitioner’s analysis. See Pet. 47–49.
Patent Owner argues that claim 11 is not rendered obvious based on
the arguments presented for claim 1. PO Resp. 39. We do not find the
arguments persuasive for the reasons discussed above.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 11. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 11 would have been obvious over Ress.
d. Independent Claim 18
Independent claim 18 is an apparatus claim to a “computer program
product” with limitations that parallel most of the limitations in claims 1 and
11, respectively. Compare Ex. 1001, 7:26–41 with id. at 8:19–37, 9:54–
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10:13. Petitioner relies on the assertions made as to claims 1 and 11 and
additionally contends that Ress discloses that its call server “is a software
entity that can execute on a single machine or on multiple machines.” See
Pet. 52–54 (citing Ex. 1004, 4:46–48).
We have reviewed Petitioner’s explanations and supporting evidence
as to how Ress teaches the limitations of claim 18, and we agree with and
adopt Petitioner’s analysis. See Pet. 52–54.
Patent Owner argues that claim 18 is not rendered obvious based on
the arguments presented for claims 1 and 11. PO Resp. 39. We do not find
the arguments persuasive for the reasons discussed above.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 18. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 18 would have been obvious over Ress.
e. Dependent Claim 2
Claim 2 depends from claim 1 and additionally recites:
communicating, prior to said translating, said multimedia data
stream in said communication controller to a second
communication controller connected to said target
communication device; wherein said translating and said
transmitting are performed by said second communication
controller.
Ex. 1001, 7:43–48.
Petitioner relies upon the evidence and arguments provided for
limitations 1[d] and [e]. Pet. 31. Petitioner also relies on Figure 6 of Ress
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for its disclosure that call servers can execute on the same machine or
different machines. Id.
Patent Owner argues that claim 2 is not rendered obvious based on the
arguments presented for claim 1. PO Resp. 26. Patent Owner asserts that
“the call server of Ress is focused solely on interworking of different call
signaling protocols and does not receive, let alone process any media
messages within a multimedia data stream.” Id. at 27. This argument is
based on Patent Owner’s proposed construction of the term “multimedia
data stream.” We do not find this argument persuasive because we have not
adopted Patent Owner’s claim construction.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–54. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 2. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 2 would have been obvious over Ress.
f. Dependent Claim 3
Claim 3 depends from claim 1 and additionally recites:
[a] accessing a first protocol table responsive to said type,
wherein said first protocol table includes a plurality of first
protocol messages corresponding to a plurality of intermediate
protocol messages;
[b] selecting ones of said plurality of intermediate protocol
messages that correspond to one or more first protocol
messages found in said multimedia data stream; and
[c] assembling said ones of said plurality of intermediate
protocol messages to form said multimedia data stream in said
intermediate protocol.
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Ex. 1001, 7:50–61 (sub-paragraphing added).
Petitioner asserts that the recited first protocol table is the connection
information parameter (CIP) data structure table disclosed in Figure 8 of
Ress. Pet. 32. Petitioner asserts that values 810 are first protocol messages
corresponding to intermediate protocol messages that are supported by the
AIP. Id. (citing Ex. 1004, code (57) (“The [intermediate protocol AIP] is a
superset of functions provided by the first and second protocols.”), 3:18–20
(“The [AIP] provides a superset of the functions provided by the first and
second protocols.”)). Petitioner further asserts that Ress’s sending protocol
agent determines whether the received message in the first protocol
corresponds to a message understood by the intermediate AIP protocol, as
shown in Figure 9(a). Id. at 33–34. Petitioner also contends that Ress
teaches assembling intermediate protocol messages to form multimedia data
streams, as depicted in Figure 9(a). Id. at 34–35.
For limitation 3[a], Patent Owner argues that the Petition points to the
“media description values” of the connection information parameter (CIP)
data structure of Figure 8 to disclose a “first protocol table,” but the field
values do not indicate a type of protocol because AIP is intended to be a
protocol independent format. PO Resp. 28 (citing Ex. 2009 ¶¶ 123–124).
Patent Owner also asserts that the claim requires “accessing a first protocol
table responsive to said type,” but the Petition fails to provide explanation as
to how the CIP is accessed, or accessed “responsive to said type.” Id.
We do not find Patent Owner’s arguments persuasive. As discussed
above for limitation 1[b], we have already determined that Petitioner has
demonstrated that Ress discloses detection of a first protocol type and claim
3 does not require that the type of first protocol be included in the first
protocol table. As Petitioner argues, Ress discloses that “[t]the connection
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information parameter [CIP] illustrated in FIG. 8 is the mechanism provided
by the agent interworking protocol for implementing media management
functions and exchanging media capabilities.” Pet. Reply 12 (citing Ex.
1004, 8:9–12). With the detection of a first protocol type under limitation
1[b] (from which claim 3 depends), Ress teaches that the CIP of Table 8 (the
first protocol table) would be used or accessed as part of the mechanism
provided by the agent interworking protocol to implement media
management functions and exchanging media capabilities. See Ex. 1004,
8:9–12. Thus, we determine that Petitioner has sufficiently demonstrated
that Ress teaches “accessing a first protocol table responsive to said type” in
response to the detection of a first protocol.
Patent Owner additionally asserts that Petitioner fails to demonstrate
that Ress teaches limitation 3[c] because it does not process a multimedia
stream. PO Resp. 29. This argument is based on Patent Owner’s proposed
construction of the term “multimedia data stream.” We do not find this
argument persuasive because we have not adopted Patent Owner’s proposed
claim construction.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 3. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 3 would have been obvious over Ress.
g. Dependent Claim 4
Claim 4 depends from claim 1 and further recites
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[a] determining a second protocol type associated with said
target communication device;
[b] accessing a second protocol table responsive to said second
protocol type, wherein said second protocol table includes a
plurality of second protocol messages corresponding to said
plurality of intermediate protocol messages;
[c] selecting ones of said plurality of second protocol messages
that correspond to one or more intermediate protocol messages
found in said multimedia data stream; and
[d] assembling said ones of said plurality of second protocol
messages to form said multimedia data stream in said second
protocol.
Ex. 1001, 7:62–8:10 (sub-paragraphing added).
Petitioner asserts that Ress teaches that as part of translating from
intermediate AIP protocol to the second protocol at the target
communication device, the interworking agent determines the second
protocol. Pet. 35–36. Petitioner argues that Ress teaches limitation 4[b] by
its disclosure of channel operation values 810 of Figure 8, and the supported
operations are second protocol messages (e.g., no action, open, close,
modify, mode change, redirect, direct, send capabilities). Id. at 37 (citing
Ex. 1004, 8:16–18, 8:34–36, Fig. 8; Ex. 1002 ¶¶ 76, 79–80, 112). Petitioner
contends that the API’s provision of a superset of functions “mean[s] the
second protocol messages correspond to messages (e.g., functions) in the
intermediate AIP protocol.” Id. (citing Ex. 1004, 3:18–20). Petitioner
argues that Ress discloses the selection of second protocol messages at step
ST8 of Figure 9. Id. at 38. Further, for limitation 4[d], Petitioner asserts
that Ress teaches assembling second protocol messages at step ST9 of
Figure 9(b) for transmitting to end user devices. Id. at 38–39 (citing Ex.
1004, 10:18–21, Fig. 9(b)).
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We have reviewed Petitioner’s explanations and supporting evidence
as to how Ress teaches the limitations of claim 4, and find that Petitioner
provides sufficient support for Ress’s teachings of the claim 4 limitations.
See Pet. 35–39; Pet. Reply 13–14.
Patent Owner argues that Petitioner has failed to demonstrate that
limitation 4[a] is taught by Ress for the same reasons provided for limitation
1[b]. PO Resp. 29–30. Patent Owner also argues that the receiving protocol
agent of Ress does not perform the claimed “determining” step because it
already knows what protocol to use to communicate, which is confirmed by
Ress’s disclosures. Id. at 30 (citing Ex. 2009 ¶¶ 129–130). We have
addressed Patent Owner’s arguments based on limitation 1[b] and do not
find them persuasive for claim 4 for reasons similar to those discussed
above. We note that the discussion for limitation 1[b] addressed Patent
Owner’s argument that Ress would know what protocol to use without
making a “determination,” and for similar reasons, we do not find that Patent
Owner’s argument on “determining” is persuasive for limitation 4[a] either.
For limitation 4[b], Patent Owner argues that Petitioner has failed to
demonstrate that it is taught by Ress for the same reasons it provides for
limitation 3[a]. PO Resp. 30. We do not find these arguments to be
persuasive for the reasons discussed above for limitation 3[a].
For limitation 4[d], Patent Owner argues that Petitioner relies on the
receipt and processing of AIP messages by “receiving protocol agent” as
teaching this claim element, but “this disclosure is fundamentally inapposite
with the claimed ‘assembling’ step because the received AIP messages in
Ress would need to be disassembled, in order for it to be further processed.”
PO Resp. 30 (citing Pet. 38–39; Ex. 2009 ¶¶ 138–140).
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Patent Owner’s argument on limitation 4[d] lacks merit because it
misinterprets Ress. As shown in Figure 9(b) of Ress, the system receives a
message (ST6), and at step ST7 it determines the message type. Ex. 1004,
10:10–17. If the message is an AIP type, “the receiving protocol agent
processes the message (step ST9).” Id. at 10:18–21. We agree with
Petitioner that this step would include assembling the second protocol
messages into a multimedia data stream in a second protocol, as Dr. Lavian
testifies. See Ex. 1002 ¶ 114; Ex. 1017 ¶ 28.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 4. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 4 would have been obvious over Ress.
h. Dependent Claim 5
Claim 5 depends from claim 4 and further recites:
retrieving said second protocol type from a device information
base, wherein said device information base contains
compatibility information for each device available for said
multimedia communication.
Ex. 1001, 8:11–15. Petitioner asserts that the data structure of Figure 8 of
Ress contains compatibility information for each device. Pet. 39. Petitioner
refers to field 818, which identifies the “list of supported formats,” and field
802, which contains a “media type value . . . for specifying the type of
media being exchanged or sought to be exchanged in a media stream,” of
Figure 8 as the device information base. Id. at 40 (citing Ex. 1004, 8:24–26,
8:56–65, 13:62–65).
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Petitioner also asserts that, to the extent the Board finds that Ress does
not disclose the additional limitation of claim 5, it would have been obvious
to implement the system of Ress to retrieve the second protocol type from a
device information base because a person of ordinary skill in the art would
have understood that the ability to convert between two protocols requires
information regarding compatible protocols for various devices in order to
understand how to perform the conversion. Pet. 40–41 (citing Ex. 1002
¶¶ 66–73, 116). Petitioner contends that a person of ordinary skill in the art
would understand that the second protocol type could be stored in a database
such as the claimed device information base and “a database is simply a
collection of data such as the individual data structures disclosed in Ress.”
Id. at 41.
Patent Owner argues that the Petition fails to identify the portions of
Ress that Petitioner contends are the claimed compatibility information. PO
Resp. 31. Patent Owner asserts that the CIP of Ress does not disclose a
device information base containing compatibility information as claimed.
Id. (citing Ex. 2009 ¶¶ 141–144).
Patent Owner additionally argues that the CIP of Ress is a data
structure included within AIP messages to facilitate the exchange of specific
messages between terminal devices in a particular communication session,
but a person of skill would not have understood the CIP to contain
“compatibility information for each device available for said multimedia
communication.” PO Resp. 31 (citing Ex. 1004, 8:9–15; Ex. 2009 ¶ 1439).
Patent Owner argues that Petitioner fails to explain how multiple ephemeral

9 Patent Owner’s Response cites to “Ex. 2009 ¶ 144,” but in context the
citation appears to be incorrect and the most relevant paragraph of the
Declaration cited above.
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communication-specific data structures constitute “a device information
base.” PO Sur-Reply 14.
We are persuaded by Patent Owner’s argument that Petitioner fails to
demonstrate that Ress teaches a “device information base [that] contains
compatibility information for each device available for said multimedia
communication” as recited in claim 5. We agree with Patent Owner’s
contention that the evidence supports that the CIP illustrated in Figure 8 of
Ress is a data structure provided by the AIP to facilitate the exchange of
specific messages between terminal devices in a communication session.
See PO Resp. 31; Ex. 1004, 8:9–15. As such, that disclosure alone does not
sufficiently demonstrate that Ress teaches the storage of compatibility
information in a device information base for each device that is available for
multimedia communication, as claim 5 requires. We credit Dr. Jeffay’s
testimony on this issue, that is, that Ress’s Figure 8 table is disclosed as a
connection specific table. Ex. 2009 ¶ 143. Ress’s disclosure describes some
of the fields in Ress’s Figure 8 table as providing characteristics of a
“current media stream,” which supports Dr. Jeffay’s testimony. See Ex.
1004, 8:52–54. Although Dr. Lavian testifies that “each device
communicating through the call server would have associated CIPs to
facilitate a conversion,” that testimony is not sufficient to support that Ress
discloses the capability to store that data for available devices, but rather
could be viewed as applying only to those devices in a particular
communication session. Ex. 1017 ¶ 29.
Accordingly, we determine that Petitioner has not established by a
preponderance of the evidence that claim 5 would have been obvious over
Ress.
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i. Dependent Claim 6
Claim 6 depends from claim 1 and further recites “wherein said
intermediate protocol comprises protocol messages common to said text-
based protocol and said binary protocol.” Ex. 1001, 8:16–18.
Petitioner asserts that Ress discloses that intermediate protocol AIP
“is preferably capable of representing a reasonable superset of the messaging
capabilities of all protocols to be supported within the packet network,” so
the AIP comprises a superset of functions, or messages, common to
supported protocols such as H.323 and SIP. Pet. 41–42.
Patent Owner argues that a person of ordinary skill in the art “would
understand the ‘capability’ of a message in Ress as referencing the function
performed by the message, and not a requirement that actual protocol
messages be present within the AIP.” PO Resp. 33 (citing Ex. 2009 ¶ 146).
In Reply, Petitioner argues, and we agree, that Patent Owner’s
argument assumes a narrow interpretation of the claim language that would
render the additional limitation of claim 6 meaningless because a person of
ordinary skill would understand that different protocols do not have
messages that are literally identical. Pet. Reply 15 (citing Ex. 1017 ¶ 31). In
support, Petitioner references the portion of the ’588 patent that recognizes
this by referring to “an interim protocol that comprises the common
functions and elements of the different protocols.” Id. (citing Ex. 1001,
3:36–37).
We have reviewed Petitioner’s explanations and supporting evidence
as to how Ress teaches the additional limitation of claim 6, and we agree that
Petitioner has sufficiently shown that Ress teaches the limitation of the
claim. See Pet. 41–42; Pet. Reply 15–16.
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We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 6. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 6 would have been obvious over Ress.
j. Dependent Claims 8–10, 12–17, and 19–23
Petitioner asserts that Ress discloses the limitations of claims 8–10,
12–17, and 19–23 based on the evidence and argument presented for other
claims. See Pet. 46–47, 49–52, 54–56. We find that Petitioner has not
demonstrated that Ress teaches the limitations of claims 15 and 22 because
Petitioner relies upon the same evidence and argument presented for claim 5,
which we have found to be deficient. See Pet. 51, 56.
We have reviewed Petitioner’s explanations and supporting evidence
as to how Ress teaches the limitations of claims 8–10, 12–14, 16, 17, 19–21,
and 23, and we agree with, and adopt Petitioner’s analysis.
Patent Owner argues that claims 8–10, 12–14, 16, 17, 19–21, and 23
are not rendered obvious based on arguments directed to other claims, which
we have already considered. PO Resp. 38–40. We do not find the
arguments persuasive for the reasons discussed above.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness below. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claims 8–10, 12–14, 16,
17, 19–21, and 23. On the full record, Petitioner has established by a
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preponderance of the evidence that claims 8–10, 12–14, 16, 17, 19–21, and
23 would have been obvious over Ress.
k. Objective Indicia of Nonobviousness
Patent Owner also presents arguments and evidence of objective
indicia or secondary considerations of nonobviousness. PO Resp. 49–55;
PO Sur-Reply 21–25. Objective indicia of nonobviousness may include
long-felt but unsolved need, failure of others, unexpected results,
commercial success, copying, licensing, industry praise, and expert
skepticism. Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir.
2012). “[O]bjective indicia may often be the most probative and cogent
evidence of nonobviousness in the record,” and “help turn back the clock
and place the claims in the context that led to their invention.” Id. at 1378.
Evidence of objective indicia of nonobviousness “must always when present
be considered en route to a determination of obviousness.” Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d
1340, 1349 (Fed. Cir. 2012); see also Apple Inc. v. Samsung Elecs. Co., 839
F.3d 1034, 1048 (Fed. Cir. 2016) (en banc).
Objective indicia of nonobviousness are “only relevant to the
obviousness inquiry ‘if there is a nexus between the claimed invention and
the [objective indicia of nonobviousness].’” In re Affinity Labs of Tex., LLC,
856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align Tech.,
Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of
nonobviousness to be accorded substantial weight, their proponent must
establish a nexus between the evidence and the merits of the claimed
invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir.
2016).
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As the Federal Circuit has explained, “a patentee is entitled to a
rebuttable presumption of nexus between the asserted evidence of secondary
considerations and a patent claim if the patentee shows that the asserted
evidence is tied to a specific product and that the product ‘is the invention
disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366,
1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). That is, presuming
nexus is appropriate “when the patentee shows that the asserted objective
evidence is tied to a specific product and that product ‘embodies the claimed
features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v.
Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). On the other hand,
the patentee is not entitled to a presumption of nexus if the patented
invention is only a component of a commercially successful machine or
process. Id. Once “the patentee has presented a prima facie case of nexus,
the burden of coming forward with evidence in rebuttal shifts to the
challenger . . . to adduce evidence to show that the commercial success was
due to extraneous factors other than the patented invention.” Demaco, 851
F.2d at 1392–93.
However, “[a] finding that a presumption of nexus is inappropriate
does not end the inquiry into secondary considerations.” Fox Factory, 944
F.3d at 1373. “To the contrary, the patent owner is still afforded an
opportunity to prove nexus by showing that the evidence of secondary
considerations is the ‘direct result of the unique characteristics of the
claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the secondary
considerations evidence presented in the context of whether the claimed
invention as a whole would have been obvious to a skilled artisan.”
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Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB
Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d
1317, 1331 (Fed. Cir. 2016)).
i. Presumption of Nexus
Patent Owner argues that the challenged claims are embodied in its
Secure Traversal Navigation Solution system (the “STNS system”). PO
Resp. 50 (citing Ex. 2008; Ex. 2009 ¶¶ 190–192; Ex. 2028). Patent Owner
refers to the Declaration of Rahul Vijh for support, with Mr. Vijh testifying
that he considered “Source Code for directPacket’s STNS system” and,
based on his review, the STNS system embodies the inventions of claims 1–
23 of the ’588 patent. Ex. 2008 ¶¶ 9, 17. Mr. Vijh refers to a claim chart,
which purports to identify source code for each element of the claims. Id.
¶ 17, App. B. Patent Owner contends that when a marketed product
embodies the claimed invention, objective evidence may be presumptively
attributed to the patented invention. PO Resp. 50 (citing PPC Broadband,
Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir.
2016)).
Patent Owner refers to the testimony of Dr. Jeffay, who references the
Declaration of Mr. Vijh and relies upon it for his opinion that the challenged
claims are embodied in the STNS system. Ex. 2009 ¶ 190. Patent Owner
also relies on Dr. Jeffay’s review of a report by market research firm
Wainhouse Research (the “Wainhouse report”) (Ex. 2028), which provide
the results of testing of Patent Owner’s STNS system. Ex. 2009 ¶ 191.
Patent Owner argues that Petitioner fails to directly respond to and
rebut the testimony provided by Dr. Jeffay and Mr. Vijh. PO Sur-Reply 23–
24. More specifically, Patent Owner asserts that Dr. Jeffay provides
unrebutted testimony regarding how the objective evidence offered is
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reasonably commensurate with the scope of the challenged claims. Id. at 24
(citing Ex. 1037, 201:18–205:16; Rambus Inc. v. Rea, 731 F.3d 1248, 1257
(Fed. Cir. 2013)).
As Petitioner argues, however, Patent Owner does not provide
sufficient analysis demonstrating that the STNS system was coextensive (or
nearly coextensive) with the challenged claims. See Pet. Reply 25–28. The
main evidence of a nexus presented by the Patent Owner is the Vijh
Declaration, but Mr. Vijh’s testimony on the issue merely consists of the
statement that he examined source code for the STNS system, and “it is my
opinion that directPacket’s STNS system practices and embodies the
inventions recited in Claims 1–30 of the ’588 Patent.” Ex. 2008 ¶¶ 9, 17.
Mr. Vijh also states that in support of this opinion, he “compiled a claim
chart identifying, on a claim element-by-claim element basis, where in the
STNS Source Code each element of Claims 1–23 of the ’588 Patent is
found,” which is attached as Appendix B of the Declaration. Appendix B,
however, only presents as support for each claim element a listing of
subroutine names without additional detail, such as the source code for the
subroutine or an explanation of its contents or operation. See id. ¶ 17, App.
B.10 Moreover, none of the source code for the STNS system was produced
by Patent Owner. See id. Thus, Patent Owner has not provided Petitioner or
the Board with sufficient information to understand the basis for Mr. Vijh’s
opinion or to evaluate its accuracy. Accordingly, because the testimony is

10 Patent Owner filed a Motion to Seal, which seeks to seal of portions of
Appendix B of the Vijh Declaration, and, more particularly, seeks to seal the
names of portions of the source code. Paper 31; Ex. 2008. We address the
Motion to Seal below, but note that the discussion herein does not disclose
the identification of portions of the source code that are alleged to be
confidential.
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conclusory and not supported by evidence of record, we cannot credit Mr.
Vijh’s testimony concerning the alleged practice of the claims by the STNS
system. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
underlying facts or data on which the opinion is based is entitled to little or
no weight.”).
Patent Owner also relies on the testimony of Dr. Jeffay, who refers to
the Vijh Declaration, and states that “I find the [Mr. Vijh’s] analysis
credible” and “the conclusions developed are supported by the analysis
presented.” Ex. 2009 ¶ 190. Dr. Jeffay continues: “[f]or these reasons, it is
my opinion” that the claims are embodied by the STNS system. Id.
(emphasis added). We cannot afford weight to this portion of Dr. Jeffay’s
testimony because Dr. Jeffay does not base his opinion on his own
independent evaluation of the source code and rather relies upon that the
testimony of Mr. Vijh, which we find to be insufficiently supported and
conclusory, as discussed above.
We also are not persuaded by Dr. Jeffay’s reliance on the Wainhouse
report. See Ex. 2009 ¶ 191. Dr. Jeffay testifies that “the [Wainhouse]
[r]eport provides the results of extensive testing of the Patent Owner’s STNS
system which has been shown to embody the inventions of the ’588 Patent.”
Id. Patent Owner additionally refers to Dr. Jeffay’s deposition testimony as
support for the allegation that Mr. Vijh’s opinions are corroborated by the
Wainhouse report. PO Sur-Reply 23 (citing Ex. 1019, 195:11–200:8).
The Wainhouse report documents an evaluation of the STNS system,
including testing, with assessment of different criteria, such as
install/configure difficulty, user interface, connectivity, interoperability,
feature sets, security, and costs. Ex. 2028, 1–4. Although the Wainhouse
report includes testing protocols and results, it does not provide any details
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on the STNS system itself or its operation. See generally id. Similarly, as
discussed above, Dr. Jeffay’s testimony references the Wainhouse report,
but provides no discussion or explanation of how the claim elements are
embodied in the STNS system. See Ex. 2009 ¶¶ 191–192; Ex. 2028, 2, 4,
17, 20; Ex. 1019, 195:11–200:8. Instead, Dr. Jeffay testifies, in a conclusory
manner, that “the [Wainhouse] Report confirms my opinion that the
Challenged Claims are embodied by Patent Owner.” Ex. 2009 ¶ 191. In
view of the lack of information on the STNS system and its operation in the
Wainhouse report, and Dr. Jeffay’s failure to provide supporting
explanations with sufficient detailed explanations, we cannot credit Dr.
Jeffay’s testimony on the alleged nexus, and the Wainhouse report does not
serve to corroborate Mr. Vijh’s opinion that the challenged claims are
embodied in the STNS system.
Thus, based on the evidence of record, Patent Owner does not provide
sufficient analysis demonstrating that the infringing products were
coextensive (or nearly coextensive) with the challenged claims. See PO
Resp. 49–50. We, therefore, find that a presumption of nexus is
inappropriate. See Lectrosonics, Paper 33 at 33; Fox Factory, 944 F.3d at
1374.
ii. Long-Felt Need
Patent Owner asserts that its STNS system satisfied a long-felt but
unmet need for a method of multimedia communication that provided
enhanced interoperability, that is, compatibility across multiple
manufacturers, and transparency, without sacrificing any quality of service.
PO Resp. 51–52 (citing Ex. 2009 ¶¶ 191–192). Patent Owner asserts that as
the Internet matured and network links had increased capacity, the desire to
conduct multimedia communication sessions across disparate,
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geographically distant networks grew and several technical challenges
needed to be resolved. Id. at 51. Patent Owner further argues that efforts to
address these issues began shortly after the H.323 and SIP protocols were
developed, yet despite the significant attention devoted to the issue in
academia and industry, no solution had emerged. Id.
Patent Owner contends that its STNS system satisfied this long-felt
need because it “marked a significant advancement in the technology and
addressed a critical problem, which theretofore had plagued the
videoconferencing industry.” PO Resp. 52 (citing Ex. 2009 ¶¶ 191–192).
Patent Owner argues that because the STNS solution solved known issues
without adversely impacting overall call quality and user experience, the
claims satisfied a long-felt but unmet need. Id. (citing Ex. 2028, 12, 17).
Patent Owner further asserts that the objective results of the study discussed
in the Wainhouse report found that the STNS system overcame the known
obstacles in the field to provide seamless communication and highlighted its
“Exceptional Interoperability” and “Transparent Operation.” PO Sur-Reply
24–25 (citing Ex. 2028, 20).
Establishing long-felt need “requires objective evidence that an art-
recognized problem existed in the art for a long period of time without
solution.” Ex parte Jellá, Appeal No. 2008-1619, 2008 WL 5693899, at *13
(BPAI Nov. 3, 2008) (precedential). Furthermore, one must demonstrate
that “widespread efforts of skilled workers having knowledge of the prior art
had failed to find a solution to the problem.” In re Allen, 324 F.2d 993, 997
(CCPA 1963).
Petitioner argues that the STNS system did not satisfy a long-felt but
unmet need. Pet. Reply 28–29. Petitioner asserts that as of December 2004,
numerous products were already in commercial use that allowed multimedia
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communication across disparate networks. Id. (citing Ex. 1002 ¶¶ 51, 55–
68; Ex. 1017 ¶ 43). In support, Dr. Lavian testifies that by December 2004,
H.323 and SIP were mature technologies that had been around for years.
Ex. 1017 ¶ 44. Dr. Lavian further testifies that at that time, the industry
understood how to communicate across disparate geographic networks using
H.323 and SIP. Id.
We are not persuaded that Patent Owner has provided sufficient
evidence to establish a long-felt need that the claimed invention satisfied.
Patent Owner relies on the Wainhouse report for support that the STNS
system allegedly solved long-felt needs; however, the report makes general
statements about the STNS system, but it does not indicate that the STNS
system solved protocol conversion issues.11 Ex. 2028, 20. Additionally, Dr.
Jeffay’s testimony on long-felt need only provides general statements on the
issue. Ex. 2009 ¶ 191; Ex. 1019, 195:11–200:8.
Moreover, the lack of any evidence of actual sales or customer use of
the STNS system cuts against Patent Owner’s assertion that this system
satisfied long-felt but unmet needs of customers. And, Patent Owner does
not show a nexus between the alleged long-felt needs and the merits of the
claimed invention; Patent Owner provides no additional evidence to
demonstrate that the STNS system attributes met long-felt needs.

11 The Wainhouse report states “STNS does not interfere with the
capabilities exchange or protocols/resolutions used by the participating
video systems.” Ex. 2028, 20 (emphasis added); see also id. at 15 (noting
limitations in protocol support), id. at 17 (noting support for limited
protocols).
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iii. Unexpected Results
Patent Owner asserts that there were real-world constraints at the time
of the ’588 patent that imposed significant obstacles for multimedia
communications. PO Resp. 52. Patent Owner argues that “real-time
conversion of multimedia data streams line-by-line, bit-by-bit, as a general
matter, requires processing vast amounts of data, both in terms of number of
packets as well as quantum of data.” Id. at 52–53 (citing Ex. 2009 ¶¶ 186–
191). Patent Owner asserts that a person of ordinary skill would have
expected that the additional computational overhead required for conversion
would be unduly burdensome, “rending the systems at the time inoperable
by sacrificing the basic level of call quality needed for communication.” Id.
at 53 (citing Ex. 2009 ¶¶ 186–191). Further, Patent Owner asserts that the
’588 patent inventor’s ability to clear these hurdles was “seamless,” and
accomplished what no person of ordinary skill in the art would have
expected was possible. Id. at 53 (citing Ex. 2028; Ex. 2009 ¶¶ 191–192; Ex.
2008).
We agree with Petitioner’s argument that Patent Owner does not
identify how the STNS system was any different than products that were on
the market at the time. See Pet. Reply 30. To establish unexpected results,
the claimed subject matter must be compared with the closest prior art. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The evidence of
record indicates that there were other products in the market that allowed
multimedia communications between external networks. See Ex. 2028, 2;
Ex. 1017 ¶ 43. Patent Owner provides no evidence explaining the
differences between the STNS system and other systems. See PO Resp. 52–
53. Furthermore, the lack of any evidence of actual sales or customer use of
the STNS system cuts against Patent Owner’s assertion that this system’s
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operation had unexpected results. And, Patent Owner fails to show a nexus
between the alleged unexpected results and the merits of the claimed
invention; Patent Owner provides no additional evidence to demonstrate that
the STNS system attributes produced unexpected results.
iv. Significant Industry Praise
Patent Owner asserts that the STNS system received significant
industry praise from industry thought leaders. PO Resp. 53–54. More
specifically, Patent Owner asserts that Wainhouse, a respected analyst and
thought leader in the videoconferencing industry, lauded the STNS system’s
ability to “seamlessly” communicate, noting its “Exceptional
Interoperability” and “Transparent Operation” as its “Primary Strengths.”
Id. at 54 (citing Ex. 2028; Ex. 2029). Patent Owner contends that this
alleged industry recognition of the features of the claims that “unexpectedly
overcame the significant limitations of the prior art solutions further
confirms they are nonobvious.” Id. at 54 (citing Institut Pasteur &
Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1347 (Fed.
Cir. 2013)).
Here, the only evidence presented in support of alleged significant
industry praise is the Wainhouse report. See PO Resp. 54–55. We find this
evidence to be insufficient to demonstrate significant industry praise. The
limited nature of the evidence—one report from an evaluation company—
does not rise to a level of demonstrating significant industry praise. Patent
Owner fails to show a nexus between the alleged industry praise and the
merits of the claimed invention; Patent Owner provides no additional
evidence to demonstrate that the STNS system attributes had been found to
be praiseworthy by the industry.
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v. Conclusions on Objective Indicia of
Nonobviousness
For the reasons explained above, we conclude that Patent Owner’s
evidence purportedly showing, long-felt need, unexpected results, and
significant industry praise is not sufficient to outweigh Petitioner’s evidence
of obviousness of the challenged claims.
l. Summary
To summarize, we determine that Petitioner has demonstrated by a
preponderance of the evidence that Ress teaches all the limitations of claims
1–4, 6–14, 16–21, and 23 and these claims are unpatentable as obvious. We
also determine that Petitioner has not demonstrated by a preponderance of
the evidence that Ress teaches all the limitations of claims 5, 15, and 22.
E. Alleged Obviousness of Claims 1–23 Over Ress and Doyle
In the Petition, Petitioner contends that claims 1–23 are rendered
obvious by the combination of Ress and Doyle. Pet. 56–68. To support its
contentions, Petitioner provides explanations as to how Ress and Doyle
teaches each claim limitation. Id. Petitioner also relies upon the Lavian
Declarations (Ex. 1002; Ex. 1017) to support its positions. Patent Owner
argues that the prior art asserted fails to teach or suggest some of the claim
limitations and the rationale to combine the references is insufficient, with
Dr. Jeffay providing supporting testimony. See generally PO Resp.; Ex.
2001; Ex. 2009.
We begin our discussion with a brief summary of Doyle and then
address the evidence and arguments presented.
1. Doyle (Ex. 1005)
Doyle is directed to a multi-protocol communication analysis system
with protocol conversion of multimedia communications. Ex. 1005, code
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(57). Figure 2, reproduced below, depicts a block diagram showing the
multi-protocol communication analysis system. Id. ¶ 18.

Figure 2 of Doyle, above, illustrates a system for communications between
endpoint 12a and endpoint 24a that includes three network/protocol monitors
32, 34, 36 that provide first, second, and third protocol information 52, 54,
56 to multi-protocol communication analyzer 58, which includes multi-
protocol communication analysis application program 60. Ex. 1005 ¶¶ 37–
38. Communications travel over first protocol 14a, where they are converted
by network device 16 into second protocol 18a, which are then converted by
network device 20 into third protocol 22a. See id. ¶ 30. Embodiments
include the use of SIP and ISDN (id. at Fig. 3), and Doyle discloses that
other protocols can be used including H.323, SS7, and HTTP (id. ¶ 55).
2. Analysis
In its obviousness contentions, to the extent that Ress is considered
not to disclose limitation of claims of the ’588 patent directed to protocols,
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Petitioner relies upon Doyle in combination with Ress in the alternative. See
Pet. 57–68.
a. Claim 1
Patent Owner argues that to the extent Ress is not considered to
disclose claim limitation 1[b] (“detecting a type of said first protocol”),
Doyle also discloses this limitation. Pet. 57. Petitioner points to Doyle’s
disclosure that “[t]he method includes collecting protocol information
corresponding to the plurality of protocols, wherein the collecting is
provided by a plurality of network/protocol monitors.” Id. (citing Ex. 1005
¶ 12). Petitioner asserts that Doyle’s network/protocol monitors provide
protocol information to a multi-protocol communication analyzer, which
includes a multi-protocol communication analysis application program, and
the multi-protocol communication analysis application program analyzes the
protocol. Id. (citing Ex. 1005 ¶ 60). Petitioner contends that the analysis
includes detecting information regarding the monitored communication,
including an “identification of a content of the communication (for example,
G.711 audio media).” Id. (citing Ex. 1005 ¶ 39). For support, Petitioner
refers to Figure 3 of Doyle and its depiction of links using different
protocols for communication messaging. Id. at 57–58.
Petitioner asserts that Ress and Doyle are in the same field of
endeavor, that is, systems for converting between multimedia, and
particularly VoIP, protocols. Pet. 59 (citing Ex. 1002 ¶¶ 76–78, 81–82,
164). Petitioner contends that “[e]xplicitly detecting the first protocol is an
entirely predictable variation” to a person of ordinary skill in the art. Id.
Petitioner further contends that a person of ordinary skill in the art would
understand that detecting the type of protocol used in a communication was
a routine procedure and was predictable. Id. at 59–60. Petitioner also
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asserts that Ress itself suggests detecting the first protocol. Id. at 60. For
instance, Petitioner argues that step ST2 shown in Figure 9(a) of Ress
“suggests and requires that there must be a method for detecting the first
protocol, because otherwise the system of Ress would lack the information
to determine whether a mapping was available.” Id. (citing Ex. 1002 ¶ 167).
Petitioner further argues that the functionality of Doyle to detect
protocols would be added to the call server of Ress to examiner headers to
determine protocol, and there would be no need to include network/protocol
monitors from Doyle. Pet. Reply 22 (citing Pet. 59; Ex. 1002 ¶¶ 66–73, 99,
162–163; Ex. 1017 ¶¶ 25, 35; Ex. 1005 ¶¶ 13, 14, 24).
We have reviewed Petitioner’s explanations and supporting evidence
and find that Petitioner provides sufficient support for the teaching of the
claim 1 limitations by Ress and Doyle and has sufficiently supported the
rationale to combine the references.
Patent Owner argues that: (1) there is no motivation to modify Ress to
incorporate Doyle’s teaching; (2) the Petition fails to explain how Ress
would be combined with Doyle; and (3) there is no reasonable expectation
of success in combining Ress and Doyle. PO Resp. 41–45.
On the first issue, Patent Owner asserts that Doyle is not analogous art
because the ’588 patent is directed toward “communication using
incompatible communication protocols,” and Doyle is concerned with
monitoring and analyzing network communications. PO Resp. 42; Ex. 2009
¶ 167. Dr. Jeffay testifies that Doyle does not describe protocol conversion,
and only observes traffic. Ex. 2009 ¶¶ 164, 165. Patent Owner also points
to a statement made in the Decision on Institution, which states that “the
technology, claims, and prior art do not specifically relate to monitoring and
maintaining VoIP and multimedia networks,” to suggest that a monitoring
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system like Doyle should not be considered analogous art. PO Resp. 42
(citing Inst. Dec. 21).
We do not find these arguments persuasive because while Doyle is
directed to an analysis system, it includes analysis of protocol conversion
systems for multimedia communications. Ex. 1005, code (57). Doyle’s
embodiments include the use of multiple protocols and their conversions.
Id. ¶¶ 37–38, 55. As Dr. Jeffay testifies, Doyle provide a user with a visual
display of how the protocols are converted by devices in the network. Ex.
2009 ¶ 165 (citing Ex. 1005 ¶ 10). The ’588 patent is directed to conversion
of protocols of multimedia communications. Ex. 1001, code (57). A
reference is considered analogous prior art if the reference is from the same
field of endeavor as the claimed subjected matter, regardless of the problem
addressed. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Further,
“[t]he Supreme Court’s decision in KSR . . . directs us to construe the scope
of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238
(Fed. Cir. 2010). Although Doyle addresses problems using its analysis of
protocol conversion of multimedia communications, it nevertheless is from
the same field of endeavor as the ’588 patent, that is, systems for converting
protocols of multimedia communications, and is therefore analogous art.
Additionally, Patent Owner takes the cited statement on monitoring
and maintaining VoIP and multimedia networks from the Decision on
Institution out of context. See PO Resp. 42. The cited statement is from the
discussion on the qualifications of a person of ordinary skill in the art, and
the intent of the statement was only to indicate that a person of ordinary skill
in the art was not required to have hands-on (operational) experience with
monitoring and maintaining of VoIP and multimedia systems. See Inst. Dec.
21.
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Patent Owner also argues that the Petition fails to explain why a
skilled artisan would have been motivated to modify Ress because Petitioner
argues that Ress teaches the claimed detection, so the teachings of Doyle
would be redundant. PO Resp. 43–44. We do not find this argument
persuasive because Petitioner argues Doyle in combination with Ress in the
alternative, if Ress’s teaches were determined to be inadequate. See Pet. 57.
Accordingly, we do not find persuasive Patent Owner’s arguments on
the rationale to combine Doyle and Ress. And, Petitioner’s rationale that
Ress requires detection of protocol and Doyle explicitly discloses protocol
detection provides a requisite rationale underpinning for the combination.
For the second issue, Patent Owner argues that the Petition fails to
establish how a person of ordinary skill in the art would combine Doyle with
Ress. PO Resp. 47. Patent Owner asserts that Petitioner contends that the
multiprotocol communication analyzer of Doyle teaches detecting in
analyzing protocol information, but Ress does not include any
network/protocol monitors, and Petitioner fails to explain how the necessary
protocol information would be collected. PO Resp. 44. Thus, according to
Patent Owner, the proposed modifications would not be a predictable
application of a known technique. Id. Petitioner contends that the only
functionality being combined from Doyle is detecting the type of protocol,
and that could be done with a limited code without including
network/protocol monitors from Doyle.12 Pet. Reply 22 (citing Ex. 1002
¶¶ 66–73, 99, 162–163; Ex. 1017 ¶¶ 25, 35).

12 Although Patent Owner argues that Petitioner changes course from the
arguments it presented in the Petition (PO Sur-Reply 19), we do not find that
to be accurate. Instead, Petitioner’s Reply includes additional explanations
on its assertions provided in response to Patent Owner’s arguments, and the
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We are not persuaded by Patent Owner’s arguments because
Petitioner is not relying on the bodily incorporation of Doyle into Ress. See
Pet. 57–60; Pet. Reply 22. We credit Dr. Lavian’s testimony that detecting
the type of protocol used in a communication was a routine procedure that a
person of ordinary skill in the art would understand, and incorporating the
teachings regarding detecting protocols into Ress would be no more than
combining prior art elements according to known methods to yield
predictable results. See Ex. 1002 ¶¶ 66–73, 83, 165; Ex. 1017 ¶¶ 25, 35. In
particular, Dr. Lavian notes as support the known requirement of
determining protocols in order accomplish protocol mapping, as well as
known methods of examining headers of incoming packets to determine
protocols. See Ex. 1002 ¶ 66; Ex. 1007 ¶ 35.
Accordingly, we do not find persuasive Patent Owner’s arguments
regarding Petitioner’s showing of how a person of ordinary skill in the art
would combine Doyle with Ress.
For the third issue, Patent Owner asserts that the Petition fails to
demonstrate a reasonable expectation of success in the combination of Ress
and Doyle. PO Resp. 45. Patent Owner argues that the proposed
modification of Ress would entail more than “known methods to yield
predictable results,” as Petitioner argues, because the design and
implementation of network monitors is a complex and specialized process.
Id.; see Ex. 2009 ¶ 169. In Reply, Petitioner asserts that detecting protocols
is not a complex or specialized process because “[d]etecting protocol can be
accomplished by examining the headers of incoming packets to determine

explanations fall within the original arguments made in the Petition. See
Pet. 59–60; Ex. 1002 ¶¶ 164–165.
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the protocol.” Pet. Reply 23 (citing Pet. 27; Ex. 1002 ¶¶ 66–73, 99; Ex.
1017 ¶¶ 25, 35).
We are not persuaded by Patent Owner’s arguments because they
appear to be based on a bodily incorporation of network/protocol monitors
from Doyle into Ress, which Petitioner is not asserting, as discussed above.
See Pet. 57–60; Pet. Reply 22; Ex. 2009 ¶ 169. Additionally, we credit Dr.
Lavian’s testimony that detecting protocols would be done by examining the
headers of incoming packet, which is within known methods yielding
predictable results, thus providing support that the combination would have
worked for its intended purpose. See Ex. 1017 ¶¶ 25, 35; see also DePuy
Spine, Inc., 567 F.3d at 1326.
Accordingly, despite Patent Owner’s arguments to the contrary, we
determine that Petitioner makes a persuasive showing that a person of
ordinary skill in the art would have a reasonable expectation of success for
the combination of Doyle with Ress.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness above. PO Resp. 49–55. For the reasons
discussed above, we find that Patent Owner’s evidence purportedly showing
long-felt need, unexpected results, and industry praise does not outweigh
Petitioner’s evidence concerning the obviousness of claim 1. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 1 would have been obvious over the combination of Ress and Doyle.
b. Claim 5
Petitioner argues that to the extent Ress is not considered to disclose
claim 5, Doyle discloses a device information base containing compatibility
information for each device available for multimedia communication. Pet.
61. Petitioner asserts that Doyle discloses that “[t]he computer readable
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medium includes instructions for collecting protocol information
corresponding to the plurality of protocols.” Id. at 61 (citing Ex. 1005 ¶ 13).
Petitioner refers to Doyle’s disclosure that the collected protocol information
can be analyzed, stored, and displayed. Id. Petitioner notes Doyle’s
teaching that the information regarding many protocols can be collected and
stored. Id. at 62 (citing Ex. 1005 ¶ 55). Petitioner refers to a ladder
diagram, Figure 3, as a depiction of the retrieval of protocol information. Id.
at 62–63.
Petitioner also asserts that Doyle teaches that the device information
base (the computer readable medium) may collect compatibility information
for each device available for multimedia communication. Pet. 62. Petitioner
refers to Figure 2 of Doyle, which shows network/protocol monitors at each
communication link between each endpoint and network device. Id.
Petitioner asserts that Doyle’s network/protocol monitors provide a variety
of protocol information. Pet. 63 (citing Ex. 1005 ¶¶ 35, 39). Petitioner cites
as an example of the information collected the “content of the
communication, (for example, G.711 audio media),” and asserts that
collecting the type of protocol the device is using (e.g., G.711, SIP, H.323,
etc.) constitutes retrieving compatibility information. Id. at 64 (citing Ex.
1002 ¶ 173).
Petitioner argues that a person of ordinary skill in the art would have
been motivated to modify Ress to include the device information base
discussed in Doyle, with a reasonable expectation of success in doing so.
Pet. 64 (citing Ex. 1002 ¶¶ 69–70, 174). Petitioner asserts that both Ress
and Doyle are in the same field of endeavor. Id. (citing Ex. 1002 ¶¶ 76–78,
81–82, 174). Petitioner argues that maintaining a computer readable
medium with compatibility information (as discussed in Doyle) is a
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predictable variation to a person of skill, and it would be impossible to
convert from one protocol to a second protocol as disclosed in Ress without
having compatibility information, which is a design incentive. Id. at 64–65
(citing Ex. 1002 ¶¶ 68–72, 174). Petitioner asserts that incorporating
Doyle’s teachings regarding maintaining a computer readable medium with
compatibility information into the multimedia protocol conversion system of
Ress would be no more than combining prior art elements according to
known methods to yield predictable results. Id. at 65 (citing Ex. 1002,
¶¶ 68–72, 175). Petitioner also asserts that storing information regarding the
protocols used by a communication device, as in Doyle, was routine
functionality that a person of ordinary skill in the art would understand well.
Id. Petitioner also argues that, for the same reason, the combination of Ress
and Doyle is a use of a known technique with a known device ready for
improvement to yield predictable results. Id. (citing Ex. 1002 ¶¶ 68–73,
176). Petitioner asserts that Ress itself suggests retrieving the protocol type
from a device information base because the table in Ress’s Figure 8 contains
compatibility information for each device available to the endpoint, so this
suggests that Ress must retrieve that information to assist in protocol
conversion. Id. at 66 (citing Ex. 1004, 9:46–49; Ex. 1002 ¶¶ 79–80, 174).
We have reviewed Petitioner’s explanations and supporting evidence
and find that Petitioner provides sufficient support showing the teachings of
the claim 5 limitations by Ress and Doyle and also has sufficiently
supported the rationale to combine the references. We note that Doyle
teaches a computer readable medium that collects protocol information, as
well as other information such as G.711 audio media. See Ex. 1005 ¶¶ 35,
39. Doyle also teaches that the collected protocol information can be
analyzed and stored. Id. ¶ 13. Accordingly, we agree with Petitioner’s
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assertion that the computer readable medium is the claimed “device
information base” that contains stored compatibility information for each
device available and which also allows retrieval of a second protocol type.
Patent Owner argues that the Petition fails to adequately explain how
the protocol information collected by the computer readable medium of
Doyle constitutes compatibility information. PO Resp. 46 (citing Ex. 2009,
¶¶ 173–174). Patent Owner further argues that a person of ordinary skill in
the art would not have understood Doyle to deal with or store “compatibility
information for each device available for said multimedia communication.”
Id. Patent Owner also argues that the only piece of information identified by
Petitioner as being collected by Doyle is the content of the communication
(for example, G.711 audio media), but a person of ordinary skill in the art
would have understood G.711 to be an audio codec, not a type of protocol.
Id.
We find that the Petition’s explanation of the collection of data
constituting compatibility information is sufficient; claim 5 requires only
that compatibility information be stored in the “device information base,”
and Petitioner has demonstrated that Doyle teaches collection and storage of
a variety of protocol information. See Pet. 63–64; Ex. 1005 ¶¶ 13, 35, 39.
We also are not persuaded by Patent Owner’s arguments on Doyle’s
allegedly deficient teaching of compatibility information. The claimed
“compatibility information” is a broad term. We agree with Petitioner that
in Doyle the types of protocols and codecs being used by a device are
compatibility information because this information is necessary to determine
whether two endpoints are compatible. Pet. Reply 24. This assertion is
supported by the testimony of Dr. Lavian, which we credit. Ex. 1017 ¶ 37.
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Patent Owner additionally argues that Petitioner does not provide
adequate support of a rationale to combine because Doyle is not in the same
field of endeavor as the claimed invention. PO Resp. 47. Patent Owner
asserts that Petitioner presents the same generic rationale for modifying the
system of Ress to incorporate Doyle’s teaching of as it did with respect to
claim limitation 1[b]. Id. Patent Owner argues that for similar reasons to
those of claim 1, a person of ordinary skill in the art would not have been
motivated to combine Ress with Doyle and would not have had a reasonable
expectation of success in doing so. Id. at 47–48.
We are not persuaded by Patent Owner’s arguments. As discussed
above for claim 1, we have determined that Doyle is analogous art.
Petitioner has provided sufficient evidence that maintaining a computer
readable medium with compatibility information and protocol type, as
discussed in Doyle, is a predictable variation to Ress and that one of
ordinary skill would have had a reasonable expectation of success in making
the combination. See Pet. 64–66; see also KSR, 550 U.S. at 416 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness above. PO Resp. 49–55. For the reasons
discussed, we find that Patent Owner’s evidence purportedly showing long-
felt need, unexpected results, and industry praise, does not outweigh
Petitioner’s evidence concerning the obviousness of claim 5. On the full
record, Petitioner has established by a preponderance of the evidence that
claim 5 would have been obvious over the combination of Ress and Doyle.
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c. Claims 7, 10, 11, 15, 18, and 22
Petitioner presents arguments for claims 7, 10, 11, 15, 18, and 22.
Pet. 66–68. We have reviewed Petitioner’s explanations and supporting
evidence as to how the combination of Ress and Doyle teach the limitations
of claims 7, 10, 11, 15, 18, and 22 and determine that Petitioner has
demonstrated that the prior art’s teachings are sufficient, as is the rationale to
combine the references.
Patent Owner argues that claims 7, 10, 11, 15, 18, and 22 are not
rendered obvious based on the arguments directed to other claims, which we
have already considered. PO Resp. 48–49. We do not find these arguments
persuasive for the reasons discussed above.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness. PO Resp. 49–55. For the reasons discussed
above, we find that Patent Owner’s evidence purportedly showing long-felt
need, unexpected results, and industry praise does not outweigh Petitioner’s
evidence concerning the obviousness of claims 7, 10, 11, 15, 18, and 22. On
the full record, Petitioner has established by a preponderance of the evidence
that claims 7, 10, 11, 15, 18, and 22 would have been obvious over the
combination of Ress and Doyle.
d. Claims 2–4, 6, 8–9, 12–14, 16–17, 19–21, and 23
In the introductory portion addressing this ground, the Petition states
that “[f]or Ground 2, Petition relies on Ress as discussed above for Ground
1, in view of Doyle.” Pet. 56. The Petition goes on to provide argument
specific to claims 1, 5, 7, 10, 11, 15, 18, and 22; identify relevant portions of
Doyle; and present related arguments including the rationale to combine
Doyle and Ress. See id. at 56–68.
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Patent Owner argues that because the Petition lacks argument and
analysis as to claims 2–4, 6, 8–9, 12–14, 16–17, 19–21, and 23, the
challenges to these claims should be rejected by the Board. PO Resp. 40–41
(citing 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4)–(5);
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)).
Petitioner argues that the Petition’s statement that it relies on Ress as
discussed in the first ground for the second ground indicates that the second
ground presents the same arguments as the first ground, except for those
claims where Doyle was added as a secondary reference. Pet. Reply 18–19.
Petitioner asserts that all the claims at issue are dependent claims, and there
was no need to duplicate arguments for these dependent claims where the
analysis has not changed. Id.
We decline to reject Petitioner’s assertions for claims 2–4, 6, 8–9, 12–
14, 16–17, 19–21, and 23 because the Petition’s statement of the second
ground’s reliance on Ress for these dependent claims, as were set forth in
the first ground, serves as sufficient notice of the basis for Petitioner’s
challenge.
We have reviewed Petitioner’s arguments and evidence and determine
that Petitioner has provided sufficient evidence that the combination of Ress
and Doyle teaches the limitations of claims 2–4, 6, 8–9, 12–14, 16–17, 19–
21, and 23.
We have considered Patent Owner’s arguments concerning objective
indicia of nonobviousness. PO Resp. 49–55. For the reasons discussed
above, we find that Patent Owner’s evidence purportedly showing long-felt
need, unexpected results, and industry praise does not outweigh Petitioner’s
evidence concerning the obviousness of claims 2–4, 6, 8–9, 12–14, 16–17,
19–21, and 23. On the full record, Petitioner has established by a
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preponderance of the evidence that claims 2–4, 6, 8–9, 12–14, 16–17, 19–21,
and 23 would have been obvious over the combination of Ress and Doyle.
III. MOTION TO SEAL
Patent Owner filed a Motion to Seal and for Entry of a Protective
Order. Paper 31. Patent Owner seeks to seal portions of Exhibit 2008, and a
version with the redactions has been filed. See Ex. 2008. Patent Owner
asserts that Exhibit 2008 contains a claim chart with an identification of
highly confidential source for the STNS system, and seeks sealing for that
identification. Paper 31, 1. The Motion is unopposed.
We have reviewed the redacted portion of the document, as well as
the explanations of the confidential nature of the materials for which sealing
is sought, as discussed in the Motion. We grant the Motion and the
associated request to enter the Protective Order.
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IV. CONCLUSION13
In summary:

V. ORDER
For the reasons given, it is:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1–23 of U.S. Patent No. 7,773,588 B2 are
unpatentable;
FURTHER ORDERED that the Motion to Seal (Paper 31) is granted;
FURTHER ORDERED that the request to enter the protective order is
granted; and
FURTHER ORDERED because this is a final written decision, the
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

13 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–23 103(a) Ress 1–4, 6–14,
16–21, 23
5, 15, 22
1–23 103(a) Ress, Doyle 1–23
Overall
Outcome
1–23
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PETITIONER:
John Presper
Robert Mattson
Stephen McBride
Oblon, McClelland, Maier & Neustadt, LLP
cpdocketpresper@oblon.com
cpdocketmattson@oblon.com
cpdocketmcbride@oblon.com

PATENT OWNER:

Jitendra Malik
Sean S. Wooden
Christopher Ferenc
Katten Muchin Rosenman LLP
jitty.malik@kattenlaw.com
sean.wooden@kattenlaw.com
christopher.ferenc@kattenlaw.com