Aip Acquisition LLC v. Cisco Systems, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

AIP ACQUISITION LLC,
Appellant

v.

CISCO SYSTEMS, INC.,
Appellee

JOSEPH MATAL, PERFORMING THE FUNCTIONS
AND DUTIES OF THE UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR, U.S. PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________

2016-2371
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00307.
______________________

Decided: November 30, 2017
______________________

FRANCISCO ARTURO VILLEGAS, Cohen & Gresser LLP,
New York, NY, argued for appellant. Also represented by
DAMIR CEFO, KAREN H. BROMBERG, ELIZABETH FARBER
2 AIP ACQUISITION LLC v. CISCO SYS., INC.

BERNHARDT; ERICA C. LAI, Washington, DC; CHI ENG, Eng
Law Firm, Newark, NJ.

THEODORE M. FOSTER, Haynes & Boone, LLP, Dallas,
TX, argued for appellee. Also represented by DAVID L.
MCCOMBS, DEBRA JANECE MCCOMAS; THOMAS B. KING,
Costa Mesa, CA.

NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by SARAH E. CRAVEN,
MICHAEL SUMNER FORMAN, THOMAS W. KRAUSE.
______________________

Before MOORE, PLAGER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
AIP Acquisition LLC appeals from the Patent Trial
and Appeal Board’s decision invalidating as obvious
several challenged claims of its U.S. Patent No. 7,269,247
in an inter partes review proceeding. According to AIP,
the Board erred by relying on extrinsic evidence to con-
clude that the claim terms “internet protocol” and “Inter-
net protocol” were not limited to the Internet Protocol of
TCP/IP. Because both the intrinsic and extrinsic evidence
support the Board’s construction, we affirm.
I.
AIP owns the ’247 patent, 1 which relates generally to
systems and methods for interconnecting otherwise
incompatible telephone networks using the Internet. See
’247 patent col. 1 ll. 61–63 (“One objective of the invention
is to provide communication between otherwise incompat-
ible communication networks . . . .”). The specification
explains that the “Internet network” differs from other

1 The ’247 patent expired on October 11, 2014.
AIP ACQUISITION LLC v. CISCO SYS., INC. 3

networks that use “frame relay switching and asynchro-
nous transfer mode by using transmission control proto-
col/Internet program [TCP/IP], which is a set of protocols
developed by the Department of Defense to link dissimilar
computers across a variety of other networks and proto-
cols.” Id. at col. 7 ll. 34–39; see also id. at col. 7 ll. 45–51.
Both parties agree that the specification should refer to
“Internet protocol” instead of “Internet program.” See
Oral Arg. at 1:31–48, 20:52–21:16, http://oralarguments.
cafc.uscourts.gov/default.aspx?fl=2016-2371.mp3.
One application of the invention enables the Internet
or other data network to function like a telecommunica-
tions network by permitting callers “to dial anywhere in
the world for the price of a local access and service fee and
avoid using long distance carriers.” ’247 patent col. 6
ll. 35–39. To make such a call, the calling party dials a
local system, which prompts the calling party to enter the
called party’s number or identification. The calling party
is then connected to the called party “over the Internet or
other data network, such as by connecting them via a
node through a local call or through other networks.” Id.
at col. 6 ll. 44–46. For instance, “a calling party may
access a node that converts the [voice] transmission into
data to support the network that it chooses . . . . [I]t may
[then] connect to another node that converts the trans-
mission [back] into voice and then connects the communi-
cation into a local call to the called party . . . .” Id. at
col. 6 ll. 47–53.
Representative claims 1 and 16 recite these improve-
ments and are reproduced below:
1. A method for communication between two
access devices via one or more networks, compris-
ing the steps:
receiving a transmission in a first
format through a first communication
network from a first access device, the
4 AIP ACQUISITION LLC v. CISCO SYS., INC.

first format comprising a telecommunica-
tion protocol for establishing and trans-
mitting voice communication for a phone
call in one of a digital telephone network,
an analog telephone network, and a cellu-
lar network;
performing a first conversion convert-
ing the transmission from the first format
to a second format, the second format be-
ing internet protocol;
sending the converted transmission
through a second communication network,
the second communication network being
the Internet, for reception by a second ac-
cess device; and
performing a second conversion fur-
ther converting the converted transmis-
sion from the second format to a further
format suitable for the second access de-
vice, wherein the first access device and
the second access device comprise tele-
communication nodes, and said further
format comprises said first format or an-
other telecommunication protocol.
....
16. A system for transmitting communica-
tions from a calling party to a called party, com-
prising a communication node accessible by the
calling party using a first network, said node be-
ing a telecommunication node configured for re-
ceiving a transmission in a first format from the
calling party, converting the transmission re-
ceived from the calling party from the first format
to a second format, and transmitting the convert-
ed transmission through the Internet to a further
AIP ACQUISITION LLC v. CISCO SYS., INC. 5

node capable of connecting to the called party on a
further network, wherein said first format com-
prises a telecommunication protocol for establish-
ing and transmitting voice communications for
phone calls in one of a digital telephone network,
an analog telephone network, and a cellular net-
work, and wherein said second format is Internet
protocol.
Id. at col. 15 ll. 39–61, col. 16 ll. 38–52 (emphases added).
Cisco petitioned for IPR of claims 1–29 of the ’247 pa-
tent. The Board instituted review of claims 1–9, 11–24,
and 26–29 on three grounds: 1) obviousness of claims 1–8,
12, 15–23, and 27–29 in view of Weinstein 2 and RFC
1190 3; 2) obviousness of claims 9, 11, 13, 24, and 26 in
view of Weinstein, RFC 1190, and Gurrie 4; and 3) obvi-
ousness of claim 14 in view of Weinstein, RFC 1190, and
ISI 5. See Cisco Sys., Inc. v. AIP Acquisition LLC,
IPR2015-307, 2016 WL 2909189, at *3 (P.T.A.B. May 18,
2016) (“Board Decision”). In its Final Written Decision,
the Board concluded that the asserted grounds rendered
all of the instituted claims unpatentable.

2 Clifford J. Weinstein & James W. Forgie, Experi-
ence with Speech Communication in Packet Networks,
1 IEEE Journal on Selected Areas in Communications
963 (1983) (“Weinstein”).
3 Request for Comments 1190, Experimental Inter-
net Stream Protocol, Version 2 (ST–II), C. Topolcic ed.
(1990) (“RFC 1190”).
4 Michael L. Gurrie & Patrick J. O’Connor,
Voice/Data Telecommunications Systems: An Introduction
to Technology (1986) (“Gurrie”).
5 Univ. of S. Cal. Info. Scis. Inst., 1982 Annual
Technical Report: A Research Program in Computer
Technology (1983) (“ISI”).
6 AIP ACQUISITION LLC v. CISCO SYS., INC.

The Board began by attributing different construc-
tions to “internet protocol” in claim 1 and “Internet proto-
col” in claim 16 based on the terms’ differing
capitalization. It 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.” Id. at *7 (emphasis add-
ed). The Board then 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.” Id. (emphasis added). In
reaching these constructions, the Board noted that the
intrinsic evidence neither demonstrated the inventor’s
intent to ascribe a certain definition to either claim term
nor clarified the terms’ ordinary and customary meanings.
The Board also noted that the extrinsic evidence made
clear that neither term should be limited to a specific
protocol. In addition, the Board rejected AIP’s arguments
that various claim amendments and accompanying
statements during prosecution of the patent were suffi-
cient to disavow the claim scope that the Board attributed
to the claims.
With respect to the first instituted obviousness
ground, AIP argued that the Weinstein and RFC 1190
references did not disclose four separate claim limitations.
The Board disagreed, noting that several of AIP’s argu-
ments were based on claim construction positions that
were not adopted by the Board. AIP’s remaining argu-
ments did not persuade the Board because they focused
on the failure of an individual reference to disclose a
limitation when Cisco’s grounds for unpatentability relied
on a combination of references to meet the claim limita-
tions.
AIP also contended that an ordinarily skilled artisan
would not have been motivated to combine Weinstein
with RFC 1190. The Board disagreed, noting that RFC
1190 disclosed an updated version of the particular inter-
AIP ACQUISITION LLC v. CISCO SYS., INC. 7

net protocol taught by Weinstein, which would have
motivated a person of ordinary skill to combine Weinstein
with RFC 1190 at the time of the invention.
AIP did not raise any other arguments for the claims
beyond those presented for independent claims 1 and 16.
After considering the entirety of the evidence, including
AIP’s arguments with respect to objective indicia, the
Board held unpatentable all claims of the ’247 patent for
which it instituted review.
AIP appeals from the Board’s Final Written Decision.
We have jurisdiction pursuant to 35 U.S.C. § 141(c) and
28 U.S.C. § 1295(a)(4)(A).
II.
The Board construes claims of an expired patent pur-
suant to the standard articulated in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Wasica
Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279
(Fed. Cir. 2017). Phillips requires that claim terms be
given their ordinary and customary meaning as would be
understood by an ordinarily skilled artisan at the time of
the invention. See 415 F.3d at 1312–13. We review the
Board’s ultimate claim construction de novo and any
underlying factual determinations that involve extrinsic
evidence for substantial evidence. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1236 (Fed. Cir. 2016).
Substantial evidence “means such relevant evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197,
229 (1938).
At issue are the Board’s constructions of “internet
protocol” and “Internet protocol.” 6 AIP contends that both

6 These terms are referred to collectively as
“I/internet protocol” or the “terms.”
8 AIP ACQUISITION LLC v. CISCO SYS., INC.

terms should receive the same construction and urges us
to conclude that the specification and prosecution history
confine the terms’ scope to a single protocol: the Internet
Protocol, or “IP,” of TCP/IP. We decline to do so for the
reasons explained below.
A patent’s claims are “of primary importance[] in the
effort to ascertain precisely what it is that is patented,”
Phillips, 415 F.3d at 1312 (quoting Merrill v. Yeomans,
94 U.S. 568, 570 (1876)), and the claim language here
supports the Board’s construction. Claim 1, for example,
recites converting the transmission from a first format to
a second format, “the second format being internet proto-
col.” ’247 patent col. 15 ll. 48–49. Claim 16 is similar and
requires converting the transmission from a first format
to a second format, “wherein said second format is Inter-
net protocol.” Id. at col. 16 ll. 51–52. The patent appli-
cant could have claimed a specific protocol, such as the IP
of TCP/IP, perhaps by capitalizing the “i” in “internet”
and the “p” in “protocol” in both claims or, more definitive-
ly, by reciting the “Internet Protocol of TCP/IP.” It did
not, however, and the use of lowercase letters suggests
that “I/internet protocol” is not confined to any particular
protocol.
The specification further supports the Board’s conclu-
sion that “I/internet protocol” should not be not limited to
the IP of TCP/IP. Neither claim term is mentioned in the
specification, which refers instead to “transmission con-
trol protocol/Internet program” and “transmission control
protocol/Internet program TCP/IP.” Id. at col. 7 ll. 36, 46.
The specification explains that these phrases refer to a set
of protocols developed by the Department of Defense that
“link dissimilar computers across a variety of other net-
works and protocols.” Id. at col. 7 ll. 37–39, 47–49. The
specification’s reference to a specific protocol—TCP/IP—
stands in stark contrast to the claims’ recitation of the
generic terms “I/internet protocol,” and confirms that the
claims have a broader scope.
AIP ACQUISITION LLC v. CISCO SYS., INC. 9

Extrinsic evidence can also inform the meaning of a
claim term, and the extrinsic evidence cited by the Board
here provides substantial evidence to support its factual
determinations regarding the meaning of “I/internet
protocol.” The Board recognized that the Weinstein prior
art reference used “internet” and “internetwork” inter-
changeably. Board Decision, 2016 WL 2909189, at *7
(citing J.A. 1608–23). The Board further explained that
internetworking referred to the transmission of data
through different networks. Id. (citing J.A. 3437–39).
Two common styles of internetworking were a connection-
oriented concatenation of virtual circuit subnets and a
datagram internet. J.A. 3437. In a virtual circuit net-
work, multiprotocol routers—also referred to as gate-
ways—were positioned between the disparate virtual
circuit networks to convert the messages between the
different protocols used by the disparate networks,
J.A. 3437–38; similarly, in datagram networks, gateways
were used between disparate networks to translate proto-
cols between networks, J.A. 3438.
An alternative approach used an internet protocol,
which is a “universal ‘internet’ packet” that all routers
would recognize. Board Decision, 2016 WL 2909189, at *7
(citing J.A. 3439). An “IP” packet is described as one such
packet “designed to be carried through many networks.”
J.A. 3439. The Board relied on these teachings and the
distinction drawn by the ’247 patent’s specification be-
tween the Internet and other types of internetworking,
’247 patent col. 7 ll. 34–39, to conclude that the “Internet
is one example of internetworking and Internet Protocol is
one specific ‘internet protocol.’” Board Decision, 2016 WL
2909189, at *7. And, although it was not relied on by the
Board, the prior art expressly acknowledges the existence
of more than one internet protocol at the time of the
invention. See, e.g., J.A. 1632 (noting that Internet
Stream Protocol “is an internet protocol”). The Board also
relied on Newton’s Telecom Dictionary, which defined a
10 AIP ACQUISITION LLC v. CISCO SYS., INC.

“protocol” as “[a] specific set of rules, procedures or con-
ventions relating to the format and timing of data trans-
mission between two devices.” Board Decision, 2016 WL
2909189, at *7. Although a copy of the pertinent diction-
ary page was not included in the record, neither party
disputes this definition on appeal.
The Board’s constructions of “I/internet protocol” flow
logically from its fact findings. The Board combined its
understanding of “internet” with the definition of “proto-
col” 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.” Id. (emphasis added). Because the
Board understood the capital-letter “i” in “Internet” to
narrow the scope of “Internet protocol” relative to “inter-
net protocol,” the Board construed it as “a specific set of
rules, procedures, or conventions relating to the format
and timing of data transmission between two devices over
the Internet.” Id. (emphasis added).
AIP argues that the Board’s constructions are errone-
ous because a person of ordinary skill, 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”
is not broad enough to cover any protocols other than the
IP of TCP/IP, AIP notes that the claims recite “I/internet
protocol” instead of “an I/internet protocol.” According to
AIP, the absence of an indefinite article in the claim
language signifies that these terms are proper nouns
referring to a specific protocol. AIP also relies on portions
of the prosecution history to show that claims 1 and 16
each recited “an I/internet protocol” but were subsequent-
ly amended to remove the “an.” See J.A. 1080, 1126, 1128.
While the claim amendments might seem to weigh in
AIP’s favor, the patent applicant’s arguments accompany-
ing the claim amendments cut the other way. One por-
AIP ACQUISITION LLC v. CISCO SYS., INC. 11

tion of the argument corresponding to the claim amend-
ments states:
Independent claim 38 [issued claim 1] further re-
cites that the transmission is converted to a sec-
ond format comprising Internet protocol and sent
via the Internet to a second access device. Sup-
port for this is shown in Fig. 8 which depicts con-
verters A–F in a central node that sends
transmissions to a global network of high capacity
data networks including the Internet TCP/IP.
J.A. 1132 (emphases added). The use of “comprising” and
“including” when discussing the claimed protocol casts
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.
Next, AIP argues that the ’247 patent references
TCP/IP every time it discusses protocols that can be used
for Internet transmissions and, accordingly, the claim
terms “I/internet protocol” should be limited to TCP/IP.
See ’247 patent col. 7 ll. 34–39, 45–49; Fig. 8. As we
explained above, the specification does not define
“I/internet protocol” as the IP of TCP/IP, and we decline to
commit “one of the cardinal sins of patent law—reading a
limitation from the written description into the claims.”
Phillips, 415 F.3d at 1320 (quoting SciMed Life Sys., Inc.
v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1340 (Fed. Cir. 2001)). We are particularly reluctant to
import a limitation from the specification into the claim
language here because a parent application to the ’247
patent expressly claimed a method “wherein the selected
data network uses Transmission Control Protocol/Internet
Protocol.” J.A. 933.
For all these reasons, we agree with the claim con-
struction adopted by the Board.
12 AIP ACQUISITION LLC v. CISCO SYS., INC.

III.
AIP also claims that the Board violated the Adminis-
trative Procedure Act by raising a new invalidity theory
on Cisco’s behalf in its Final Written Decision. Whether
the Board relied on a new ground of invalidity is a legal
question subject to de novo review. In re NuVasive, Inc.,
841 F.3d 966, 970 (Fed. Cir. 2016).
Our examination of the record reveals no APA viola-
tion. Here, Cisco asserted that a person of ordinary skill
would have been motivated to combine Weinstein with
RFC 1190, to which AIP provided a counterargument in
its Patent Owner Preliminary Response, J.A. 250, and its
Patent Owner Response, J.A. 370–72. The Board’s Final
Written Decision explained that it was persuaded by
Cisco’s arguments regarding motivation to combine and
rejected AIP’s counterargument. Board Decision, 2016
WL 2909189, at *14. Therefore, the Board did not raise a
new argument on Cisco’s behalf. The Board’s position
with respect to AIP’s counterargument also was not new:
the Board’s Institution Decision contained the exact same
language that AIP complains about here. Compare id.,
with Cisco Sys., Inc. v. AIP Acquisition LLC, IPR2015-
307, 2015 WL 2441511, at *11 (PTAB May 20, 2015).
This put AIP on notice and allowed it to respond both in
its Patent Owner Response and during the oral hearing.
Thus, we conclude that the Board did not commit an APA
violation.
IV.
We have considered AIP’s remaining arguments, in-
cluding its obviousness arguments, and find them unper-
suasive. The Board did not err in construing the disputed
claim terms, and its rejection of AIP’s counterargument
did not violate the APA. Accordingly, we affirm.
AIP ACQUISITION LLC v. CISCO SYS., INC. 13

AFFIRMED
COSTS
Costs to Appellee.