Case: 21-1661 Document: 39 Page: 1 Filed: 01/26/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
DIRECTPACKET RESEARCH, INC.,
Appellant
v.
POLYCOM, INC.,
Appellee
______________________
2021-1661
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01233.
______________________
Decided: January 26, 2022
______________________
TERENCE P. ROSS, Katten Muchin Rosenman LLP,
Washington, DC, argued for appellant. Also represented
by CHRISTOPHER FERENC, ERIC THOMAS WERLINGER.
GEOFFREY P. EATON, Winston & Strawn LLP, Washing-
ton, DC, argued for appellee. Also represented by DAVID
DALKE, Los Angeles, CA; NOOROSSADAT TORABI, San Fran-
cisco, CA.
______________________
Case: 21-1661 Document: 39 Page: 2 Filed: 01/26/2022
2 DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC.
Before MOORE, Chief Judge, DYK and REYNA, Circuit
Judges.
MOORE, Chief Judge.
directPacket Research, Inc. appeals an inter partes re-
view final written decision holding claims 1–23 of U.S. Pa-
tent No. 7,773,588 would have been obvious. For the
following reasons, we vacate and remand.
BACKGROUND
directPacket owns the ’588 patent, which is titled “Sys-
tem and Method for Cross Protocol Communication.” That
patent relates to facilitating multimedia communication
between devices that use incompatible communication pro-
tocols. ’588 patent at 1:6–8; 2:3–5. To overcome incompat-
ibility issues, the invention includes a communication
controller, which receives a multimedia data stream from
a communication device in a first protocol and converts the
stream into 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 stream to a second protocol that is com-
patible with the destination communication device. Id. at
2:15–18. Claim 1 is representative for this appeal:
1. A method for multimedia communication com-
prising:
receiving a multimedia data stream at a
communication controller in a first protocol
from a communication device, wherein the
first protocol comprises a signaling proto-
col;
detecting a type of said first protocol;
converting said first protocol into an inter-
mediate protocol;
Case: 21-1661 Document: 39 Page: 3 Filed: 01/26/2022
DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 3
translating said intermediate protocol into
a second protocol, wherein the second pro-
tocol comprises a signaling protocol; and
transmitting said multimedia data stream
in said second protocol to a target commu-
nication device;
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.
(emphasis on disputed language).
Polycom, Inc. petitioned for inter partes review of all
claims of the ’588 patent, which the Board instituted.
Throughout the proceedings, the parties agreed the
claimed multimedia data stream could include signaling
messages used to establish communications, but they dis-
puted whether the stream must include media messages.
Polycom, Inc. v. Directpacket Rsch., Inc., No. IPR2019-
01233, 2021 WL 96053, at *5–6 (P.T.A.B. Jan. 11, 2021).
The Board held that a multimedia data stream “does not
have to consist of both signaling and media messages, and
may be a signaling message only.” Id. at *8. Based on that
construction, the Board determined that all claims of the
’588 patent would have been obvious. Id. at *33. direct-
Packet appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review claim construction de novo and any subsid-
iary factual findings based on extrinsic evidence for sub-
stantial evidence. Cisco Sys., Inc. v. Int’l Trade Comm’n,
873 F.3d 1354, 1360 (Fed. Cir. 2017). Claim terms are gen-
erally given their plain and ordinary meaning, which is the
meaning one of skill in the art would ascribe to a term
when read in the context of the claims, written description,
Case: 21-1661 Document: 39 Page: 4 Filed: 01/26/2022
4 DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC.
and prosecution history. See Phillips v. AWH Corp., 415
F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc).
A multimedia data stream is a data stream that in-
cludes multiple forms of media data (e.g., sound, video, and
text data). This meaning is clear from the adjective multi-
media that modifies “data stream” and, as Polycom admits,
means more than one media. Oral Arg. at 18:00–06,
https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21
-1661_12092021.mp3. Polycom does not dispute that the
plain meaning of the term requires media data. Instead, it
argues the claimed “multimedia data stream” must encom-
pass a data stream that contains only signaling data for
two reasons. First, Polycom argues the claim language fa-
cilitates communication with “a signaling protocol” only,
which is incapable of communicating media messages. Sec-
ond, Polycom argues any contrary construction would ex-
clude a preferred embodiment. We do not agree.
The multimedia data stream is received “in a first pro-
tocol . . . wherein the first protocol comprises a signaling
protocol,” but that doesn’t limit the data stream to signal-
ing data only. Comprises is an open-ended word that does
not foreclose the first protocol from containing other non-
signaling protocols capable of communicating media. See,
e.g., Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d
1396, 1409 (Fed. Cir. 2004). Furthermore, the written de-
scription explains that a communication protocol may “rely
on multiple other protocols . . . for sending and receiving
multimedia traffic.” ’588 patent at 1:32–35 (emphasis
added). Thus, just because the first protocol includes a sig-
naling protocol does not mean it does not also contain other
protocols capable of communicating media. See, e.g., id. at
1:48–53 (listing VoIP as an example of a communication
protocol). For the same reasons, the claim language requir-
ing translation of an intermediate protocol into a second
protocol that also “comprises a signaling protocol” does not
limit the multimedia data stream.
Case: 21-1661 Document: 39 Page: 5 Filed: 01/26/2022
DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 5
Construing “multimedia data stream” to require media
does not read out an embodiment. Polycom argues that the
embodiment in figure 1A uses only the Session Initiation
Protocol (SIP), a signaling protocol, and, therefore, constru-
ing multimedia data stream to require media would read
out that embodiment. However, figure 1A does not disclose
a SIP-only embodiment. Indeed, the figure does not men-
tion SIP; it merely shows the embodiment uses text-based
and binary communication protocols. And the associated
written description identifies SIP as just one example of a
text-based protocol. ’588 patent at 3:25–39. The written
description also clarifies that “[o]ther protocols may be
used as well.” Id. Thus, requiring the multimedia data
stream to contain media does not read out the embodiment
of figure 1A.
We construe the term multimedia data stream accord-
ing to its plain and ordinary meaning, which must include
media. Because the Board applied an erroneous construc-
tion that affects every independent claim and, under the
correct construction, factual issues exist on the proper out-
come, we vacate the Board’s final written decision and re-
mand for further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to directPacket.