By Mark Engstrom, J.D.
In its ruling on AIP’s appeal of a decision on inter partes review (IPR) of 27 claims of a patent for systems and methods of using the Internet to connect incompatible telephone networks, the U.S. Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board did not err in construing the claim terms "internet protocol" and "Internet protocol." Nor did the Board err in relying on extrinsic evidence to conclude that the terms were not limited to the Internet Protocol of TCP/IP. Because intrinsic and extrinsic evidence both supported the Board’s disputed claim constructions, and because the Board did not raise a new argument on Cisco’s behalf in violation of the Administrative Procedure Act (APA), the obviousness rulings of the Board were affirmed (AIP Acquisitions LLC v. Cisco Systems, Inc., November 30, 2017, Stoll, K.).
U.S. Patent No. 7,269,247 ("Efficient communication through networks") involved systems and methods for using the Internet to connect incompatible telephone networks. Cisco sought IPR of several claims of the patent, and the Board instituted review on three grounds: (1) obviousness of claims 1–8, 12, 15–23, and 27–29, in view of Weinstein and RFC 1190; (2) obviousness of claims 9, 11, 13, 24, and 26, in view of Weinstein, RFC 1190, and Gurrie; and (3) obviousness of claim 14 in view of Weinstein, RFC 1190, and ISI. In its final written decision, the Board concluded that the asserted grounds rendered all of the instituted claims unpatentable.
On appeal, AIP argued that Board had erroneously relied on extrinsic evidence to conclude that the claim terms "internet protocol" and "Internet protocol" were not limited to the Internet Protocol of TCP/IP. Based on the different ways that the disputed terms were capitalized, the Board gave them different constructions. More specifically, the Board construed "internet protocol" as "a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks" and construed "Internet protocol" as "a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet."
On appeal, AIP argued that the two terms should receive the same construction because the specification and prosecution history both confined the scope of those terms to a single protocol: the Internet Protocol—or "IP"—of TCP/IP.
According to the Federal Circuit, the claim language supported the Board’s claim constructions. Claim 1, for example, recited the conversion of a telephone transmission from a first format to a second format, "the second format being internet protocol." Claim 16 required the conversion of the transmission from a first format to a second format, "wherein said second format is Internet protocol." In the court’s view, the patent applicant could have claimed a specific protocol—such as the IP of TCP/IP—by capitalizing the "i" in "internet" and the "p" in "protocol" in both claims, or by reciting the "Internet Protocol of TCP/IP." The applicant failed to do that, however, and its use of lowercase letters suggested that "I/internet protocol" was not confined to any particular protocol.
Moreover, the specification supported the Board’s conclusion that "I/internet protocol" should not be not limited to the IP of TCP/IP. Neither claim term was mentioned in the specification, which referred to "transmission control protocol/Internet program" and "transmission control protocol/Internet program TCP/IP," the court observed. And the specification explained that the phrases referred to a set of protocols that were developed by the Department of Defense to "link dissimilar computers across a variety of other networks and protocols." The court found that the specification’s reference to a specific protocol—TCP/IP—stood in stark contrast to the claims’ recitation of the generic terms "I/internet protocol," which confirmed that the claims had a broader scope.
In addition, extrinsic evidence could inform the meaning of a claim term, and the extrinsic evidence cited by the Board provided substantial evidence to support its factual findings on the meaning of "I/internet protocol." In the court’s view, The Board’s constructions of "I/internet protocol" flowed logically from its fact findings. The Board combined its understanding of "internet" with the definition of "protocol," the court explained, to construe "internet protocol" as "a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks" (emphasis added by the court). In addition, the Board understood the capital-letter "i" in "Internet" to narrow the scope of "Internet protocol" relative to "internet protocol," and thus construed "Internet protocol" as "a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet."
AIP argued that the Board’s constructions were erroneous because a person of ordinary skill in the art, when interpreting the disputed terms in light of the intrinsic evidence, would have understood their ordinary meaning to be the IP of TCP/IP. To support its position that "I/internet protocol" was not broad enough to cover protocols beyond the IP of TCP/IP, AIP noted that the claims recited "I/internet protocol," not "an I/internet protocol." According to AIP, the absence of the indefinite article "an" made the terms proper nouns that referred to a specific protocol. In addition, AIP relied on portions of the prosecution history to show that claims 1 and 16 initially recited "an I/internet protocol," but were subsequently amended to remove the "an."
The court acknowledged that the claim amendments appeared to favor AIP, but it also noted that arguments accompanying the claim amendments "cut the other way." One portion of those arguments stated that:
Independent claim 38 [issued claim 1] further recites that the transmission is converted to a second format comprising Internet protocol and sent via the Internet to a second access device. Support for this is shown in Fig. 8 which depicts converters A–F in a central node that sends transmissions to a global network of high capacity data networks including the Internet TCP/IP.
In the court’s view, the use of the words "comprising" and "including" in a discussion of the claimed protocol cast significant doubt on AIP’s contention that "I/internet protocol" would have been understood by a person of ordinary skill as "only referring to the IP of TCP/IP." The court agreed with the Board, and thus affirmed the disputed constructions.
APA violation. AIP argued that the Board violated the APA by raising a new theory of invalidity, on Cisco’s behalf, in its final written decision. The court disagreed. In its final decision, the Board explained that Cisco’s arguments regarding a motivation to combine were persuasive. In addition, the Board rejected AIP’s counterargument.
In the court’s view, the Board did not raise a new argument on Cisco’s behalf, and the Board’s position with respect to AIP’s counterargument was not new because its Institution Decision contained "the exact same language that AIP complains about here." That put AIP on notice, the court explained, and it allowed AIP to respond in its Patent Owner Response and during the oral hearing. For those reasons, the court concluded that the Board did not commit an APA violation.
The case is No. 2016-2371.
Attorneys: Elizabeth Farber Bernhardt (Cohen & Gresser LLP) for AIP Acquisition LLC. David L. McCombs (Haynes & Boone, LLP) for Cisco Systems, Inc.
Companies: AIP Acquisition LLC; Cisco Systems, Inc.
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