Takeaway: For a proposed obviousness ground to be instituted, the Petition must include an explanation of how the teachings of the references might be combined to arrive at the claimed invention.

In its Decision, the Board denied Petitioners’ request to institute inter partes review of claims 1-36 of the ’048 patent, because the Petition does not establish that there is a reasonable likelihood that Petitioner will prevail on demonstrating that any of the claims are unpatentable. The ’048 patent generally relates to “a computer network that provides automatic protection switching to re-route data packets in the event of a network link failure.”

The Board began with claim construction. Petitioner proposed a construction for 8 different claim terms, and Patent Owner provided arguments directed to why those constructions should not be adopted. However, the Board determined that it was not necessary to construe any of the claim terms, because the dispositive issue in this proceeding is whether Petitioner had provided a sufficient rationale to combine RFC 2003 with the teachings of Grover ’880, AAPA (Applicant Admitted Prior Art), and Grover 1998.

The Board then addressed the multiple obviousness grounds all of which included the combination of Grover ’880, AAPA, Grover 1998, and RFC 2003. RFC 2003 is a “Request for Comment” memorandum dated October 1996 from the Network Working Group that addresses an Internet standards track protocol for the Internet Community. RFC 2003 discloses a method in which when the encapsulated datagram arrives at the intermediate destination node, and it is decapsulated, which, in turn, yields the original IP datagram. RFC 2003 refers to this encapsulation and decapsulation as “tunneling” with the encapsulator and decapsulator as the “end points” of the tunnel.

Petitioner argues that it would have been obvious to combine RFC 2003 with the other references because one of ordinary skill in the art would have known that simpler, standard-based approaches existed for tunneling packets along alternative routes and would have recognized that by locating the encapsulator and decapsulator of RFC 2003 at the respective ends of a failed link, that the alternative path of the tunnel created by RFC 2003 could be used to implement the alternative path around a failed link characterized by the p-cycle of Grover 1998.

Patent Owner argues that Petitioner “engages in impermissible hindsight reconstruction by piecing together teachings from Grover ’880, AAPA, Grover 1998, and RFC 2003 to arrive at the claimed invention,” by relying on conclusory statements. The Board agrees with Patent Owner that the Petitioner is relying solely on conclusory statements. For example, the Board concluded that Petitioner’s assertion that ‘“[i]t would have been obvious to encapsulate packets within tunnel packets using the technique of RFC 2003’, ‘[t]hose of skill in the art would have recognized the advantage of using RFC 2003’s tunnel packet when routing packets over the p-cycle of Grover ’880’, and ‘RFC 2003 provides a simpler, standards-based approach to implementing Grover ’880’s p-cycles for link protection’, are nothing more than conclusory statements.” In particular, the Board determined that Petitioner’s obviousness evaluation was missing a convincing rationale for “why one of ordinary skill in the art would have looked to RFC 2003’s IP-in-IP encapsulation techniques when considering how to implement an alternative route, through the use of a protection path or p-cycle, in the event of a network link failure.”

The Board was also not persuaded by the supporting testimony of Petitioner’s expert. The Declaration essentially repeated the arguments advanced by Petitioner, and thus, also only included conclusory statements. The Board noted that “[a]bsent some underlying facts or data to support this testimony, it is entitled to little, if any, weight.” Accordingly, the Board gave little weight to the expert’s testimony. Specifically, the Board determined that the Petition fails to include an explanation of how the teachings of the four references might be combined to arrive at the claimed invention, e.g., by combining and applying specific teachings of RFC 2003 with Grover ’880, AAPA, and Grover 1998 to account for all the features of the challenged claims. Accordingly, the Board found that Petitioner failed to demonstrate a reasonable likelihood that it would prevail on its assertion of unpatentability.

Cisco Systems, Inc. v. Constellation Technologies LLC, IPR2014-01179
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: February 4, 2015
Before: Michael R. Zecher, Trevor M. Jefferson, and Patrick R. Scanlon
Written by: Zecher
Patent: 6,901,048 B1
Related Proceedings: Charter Commc’ns., Inc. v. Rockstar Consortium US LP, 1-14-cv-00055 (D. Del.); Constellation Techs. LLC v. Time Warner Cable Inc., 2-13-cv-01079 (E.D. Tex.); Bockstar Techs. LLC v. Cisco Systems, Inc., 1-13-cv-02020 (D. Del.); In Re: Constellation Techs. LLC Patent Litig.,MDL No. 2558, United States Judicial Panel on Multidistrict Litigation; IPR2014-00871 (USP 6,845,389); IPR2014-01085 (USP 6,845,389); IPR2014-00911 (USP 8,134,917); IPR2014-00914 (USP 8,464,299); and IPR2014-01180 (USP 7,154,879)