04/15/2014

Cisco v. Lee (v. Teles): A Narrow Claim Construction Is Inappropriate When It is Not Supported by the Specification


Category: Claim Construction  
 
 
 
 By: Abby Lin, Contributor 
 
TitleCISCO Sys., Inc. v. Lee, No. 2012-1513, -1514, -1297 (Fed. Cir. Feb. 21, 2014) (nonprecedential).
Issues
[1a] [Regarding the construction of "networks",] Teles argues packet-switched network and the line-switching network [of Claim 68] must be “two independent and distinct networks” … [and that the Board’s holding of the D and B channels of a single ISBN network cannot constitute packet- and line-switching networks… because the D and B channels are part of the same network].
Cisco, at *11-12 (text added, internal citations omitted).
[1b] Teles argues the Board should have construed both [“telephone call” and “data transfer with real-time properties”] to mean “end-terminal-to-end-terminal communications connections with a communications time delay of less than 0.5 seconds.”
Id. at *14(text added, internal citations omitted).
[2] [Teles] further argues the Board improperly failed to interpret the terms “control signal” and “communications connection.”
Id. at *10(text added).
[3] Claim 91 and 104 … add the limitation of “a multiplexer device for multiplexing data of several origin end terminals over a single line connection through the line-switching network.” … Cisco argues claims 91 and 104 are anticipated by Focsaneanu, and would have been obvious over Foxsaneanu, Jonas (or Yoshida), and Lucent. With respect to anticipation, Cisco argues Focsaneanu discloses changing-over between packet and line switching during an active transmission, and that the Board lacked substantial evidence in finding otherwise.
Id. at *19-20.
Holdings
[1a] Although “ISBNs are conventionally known as line-switched networks,” the Board correctly determined that “the networks in the instant claims” can “be read onto an ISBN under a broadest reasonable interpretation.” This court therefore affirms that the claimed packet-switching network and line-switching network includes a single telecommunications network with multiple channels, such as an ISBN network [because the specification does not disclose that two separate networks are required].
Cisco, at *13 (text added, internal citations omitted).
[1b] Teles is therefore incorrect that the broadest reasonable interpretation of “telephone call” and “real-time” data transfer requires a specific time delay limit [because the specification does not mention a 0.5 second time delay in the context of line switching]. See Toshiba Corp., v. Imation Corp., 681 F. 3d 1358, 1369 (Fed. Cir. 2012) (“We do not read limitations form the specification into claims.”). This court affirms the Board’s construction of the terms as any “structure capable of sustaining a telephone call or providing real-time properties.”
Id. at *14-15 (text added. Internal citations omitted).
[2] Contrary to Teles’s argument [regarding “control signal” and “communications connection”], the Board had no obligation to consider claim construction challenges that were not actually raised before it. See 37 C.F.R. § 41.67(c)(1)(vii).
Id. at *16 (text added, internal citations omitted).
[3] Because the Board’s improper limitation of the claimed multiplexer was its sole reason for finding claims 91 and 103 not obvious, the Board’s allowance of claims 91 and 104 is reversed. Once the proper scope of claim 91 and 104’s multiplexer is understood, it is apparent that including such a multiplexer in the combination of Focsaneanu, Lucent, and inter alia, Jonas, is no more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Id. at *22 (footnote omitted).
 

 
Procedural History
[1. Inter partes Reexamination: ] Cisco requested inter partes reexamination of claims 36, 37, 41, 54-58, 60-62m 66m 68m 69m 71, 75, 77, 79, 82, 84, 87, 90-92, 95, 98, 100, 102, 103, and 118-125 of the ‘902 patent… [T]he Examiner rejected all but two of the reexamined claims… confirmed the patentability of claims 91 and 104.
Cisco, at *8 (text added).
[2. Appeal to Board:] Teles appealed the rejections to the Board, and Cisco cross appealed the Examiner’s decision to allow claims 91 and 104. The Board affirmed in all respects.
Id. at *8 (text added).
[3. Appeal to Federal Circuit:] Cisco filed a timely appeal challenging the Board’s allowance of claims 91 and 104. Teles cross appealed the Board’s rejections.
Id. at *10 (text added).
 
 
 
Legal Reasoning (Dyk, Moore, Wallach)
Background
Claims
68. Switching apparatus for selectively routing a telephone call from a first end terminal to a second end terminal, comprising:

a device that provides access to a packet switching network through which data can be sent for delivery to the second end terminal;

means for transferring first data of the telephone call originated by the first terminal through the packet switching network for delivery to the second end terminal;

a device for establishing a connection to a line- switching network through which data can be sent for delivery to the second end terminal;

means for transferring second data of the telephone call originated by the first terminal over the connection through the line-switching network for delivery to the second end terminal; and

means responsive to a control signal for changing-over from a packet-switching mode of transfer of the first data of the telephone call to a line-switching mode of transfer of the second data of the telephone call without interruption of a call-up procedure, wherein said control signal is produced by a network management system.
Two dependent claims, 91 and 104 (which depend from claims 84 and 100, respectively), also feature a multiplexer in the line-switching device “for multiplexing data of several origin end terminals over a single line connection through the line-switching network.” (substantially the same, except the connection must be “through the public telephone network”)

Claims 84 and 100 cover similar switching apparatuses, except that claim 100’s packet -switching network is limited to the Internet.

Cisco, at *5-6(emphasis original, internal citations omitted).
Legal Standard
ReexaminationDuring reexamination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)(internal quotation marks and citation omitted). “[C]laim construction by the PTO is a question of law that we review de novo . . . “ Rambus Inc. v. Rea, 731 F.3d 1248, 1252 (Fed. Cir. 2013)(quoting In re Baker Hughes Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000)).
Id. at *10-11.
102 and 103 and Standard of ReviewAnticipation under 35 U.S.C § 102 is a question of fact. In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012). Obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying factual findings, including “[t]he scope and content of the prior art” and “whether the prior art teaches away from the claimed invention.” In re Mouttet, 686 F. 3d 1322, 1330 (Fed. Cir. 2012). The Board’s factual findings are reviewed for substantial evidence, and question of law are reviewed without deference. Id. at 1330-31.
Id. at *11.
Analysis: Teles' Issues
[1a] Packet and Line Switching Networks Need Not Be Separate Networks Since the Specification Does Not Support Teles’s Argument that the Specification Requires Separate Networks – Claim 68
On appeal, Teles argues the packet-switched network and the line-switching network [of Claim 68] must be “two independent and distinct networks” … [and that the Board’s holding of the D and B channels of a single ISBN network cannot constitute packet- and line-switching networks… because the D and B channels are part of the same network]. 
Cisco, at *11-12 (text added, internal citations omitted).
Contrary to Teles’s argument that a person of ordinary skill “always understands the ISBN to be a single line-switching network,” the Summary of the Invention” portion of the ‘902 patent refers to ISBN’s D-channel as one type of packet switching network, thus confirming that packet switching and line switching can take place in one network… The portion of the specification that Teles cites [to show that the] 902 Patent makes clear that two independent and distinct networks are required to make up the Packet and Line switching Network] refers to only one network [and does not show that two separate networks are required.] . . . Although “ISBNs are conventionally known as line-switched networks,” the Board correctly determined that “the networks in the instant claims” can “be read onto an ISBN under a broadest reasonable interpretation.” This court therefore affirms that the claimed packet-switching network and line-switching network includes a single telecommunications network with multiple channels, such as an ISBN network.
Id. at*12-13(text added, internal citations omitted).
[1b] Claim Construction of Time Delay of 0.5 seconds In Terms Not Applicable Because Specification Does Not Disclose the Limitation – Claims 68, 84
Teles argues the Board should have construed both [“telephone call” and “data transfer with real-time properties”] to mean “end-terminal-to-end-terminal communications connections with a communications time delay of less than 0.5 seconds.” . . . Teles bases its argument on the portion of the specification stating that “[w]ith Internet telephony, a cost-conscious caller uses the normal Internet with approximately 8 kbit/s bandwidth and a time delay of 0.5 seconds.”
Id. at *14-15(text added, internal citations omitted).
This statement is set forth in the “Background of the Invention” … it does not limit the otherwise plain meaning of “telephone call” or “data transfer with real-time properties.” . . . Nor does the specification even mention the 0.5 second time delay in the context of line switching. Teles is therefore incorrect that the broadest reasonable interpretation of “telephone call” and “Real-time” data transfer requires a specific time delay limit. See Toshiba Corp., v. Imation Corp., 681 F. 3d 1358, 1369 (Fed. Cir. 2012)(“We do not read limitations form the specification into claims.”). This court affirms the Board’s construction of the terms as any “structure capable of sustaining a telephone call or providing real-time properties.”
Id. at *14-15(text added, internal citations omitted).
[2] Board Need Not Consider Claim Construction Challenges Which were Not Raised Before It – Claim 84
The Board did not construe “control signal” or “communications connection [in Claim 84] because Teles did not dispute the meaning of those terms. Teles now argues that “[u]pon de novo review, the Court should find legal error in the [Board’s ] failure to construe the terms ‘Control Signal’ and ‘Communications Connection.”
Id. at *15(text added, internal citations omitted).
Contrary to Teles’s argument, the Board had no obligation to consider claim construction challenges that were not actually raised before it. See 37 C.F.R. § 41.67(c)(1)(vii). . . .[Teles’s claim construction] arguments have been waived…The Board properly treated [“means responsive to a control signal”] as a means-plus-function term with corresponding structure of the “control device 711.”
Id. at *16(text added, internal citations omitted).
Analysis: Cisco's Issues
[3] Limitations Not Present in the Claim Should Not be Used in Analysis - Claim 91 and 104 – Multiplexer
The Board found that claims 91 and 103 were not anticipated by Focsaneaunu. It agreed with Cisco that Focsaneanu discloses a multiplexer, but nevertheless found that Focsaneanu does not disclose switching networks without interrupting an active communication, as required by claims 91 and 104. … Cisco argues claims 91 and 104 are anticipated by Focsaneaunu, and would have been obvious over Focsaneanu, Jonas (or Yoshida), and Lucent.
Cisco at * 19.
This court need not resolve the parties’ arguments on anticipation; even if the Board was supported in finding Focsaneanu does not anticipate 91 and 104, it nevertheless erred in holding those claims are not invalid as obvious. According to the Board, the one limitation of underlying dependent claims 84 and 100 that is not disclosed in Focsaneanu is the change-over between line and packet switching during an existing communication, a limitation the Board found was disclosed by Jonas. Indeed, independent claims 84 and 100 are anticipated by Jonas, which therefore “disclose[s] each and every element” of those claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Dependent claims 91 and 103 add only a multiplexer to their respective independent claims, and Cisco argued to the Board that “[t]here is nothing novel about a multiplexer.”
Id. at *21.
The Board nonetheless reasoned that claims 91 and 104 would not have been obvious because “[t]he multiplexing disclosed in Focsaneanu is not disclosed to support changing-over between switching network for data transfers having real-time properties.” Claims 91 and 104 do not require the multiplexer itself to “support changing –over between switching networks,” however. The claimed multiplexer resides in “the line switching device” and “multiplex[es] data of several origin end terminals over a single line connection through the line switching network.” ‘902 patent col. 21 ll. 36-40; id. col. 23 ll. 4-9(emphasis added)… That independent claims 84 and 100 recite changing-over between packet switching and line switching does not mean claim 91 and 103’s multiplexer must do the same, especially when the multiplexer is expressly limited to the line switching network.
Id. at *21-22.
Conclusion
For the foregoing reasons, this court reverses the Board’s decision confirming the patentability of claims 91 and 104, and affirms the Board in all other respects. Affirmed-in-part and Reversed-in-part.
Cisco, at *22.
 
 
 
 
 
 
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