2014-04-18 (CAFC 12-1513) Sigram Schindler Rehearing Petition

8/10/2019 2014-04-18 (CAFC 12-1513) Sigram Schindler Rehearing Petition

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UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

CISCO SYSTEMS, INC. V. REACASE NO. 2012-1513, -1514

CERTIFICATE OF INTEREST

Counsel for Cross-Appellant Sigram Schindler Beteiligungsgesellschaft

mbH, certifies the following.

1. The full name of every party or amicus represented by me is

Sigram Schindler Beteiligungsgesellschaft mbH.

2. The name of the real party in interest

Sigram Schindler Beteiligungsgesellschaft mbH.

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the party or amicus curiae represented

by me are: None

4. The names of all law firms and the partners or associates that

appeared for the party now represented by me in the trial court or

agency or are expected to appear in this court are:

Foley & Lardner LLP and its attorneys: Michael D. Kaminski,

Howard N. Shipley, George E. Quillin, and Ryan A. Schmid.

Fried, Frank, Harris, Shriver & Jacobson LLP and its attorneys:

James W. Dabney, Douglas W. Baruch and John F. Duffy.

Novak Druce + Quigg LLP and its attorney:Vincent M. DeLuca,

Date: April 18, 2014 Signature of Counsel: /s/ Howard N. ShipleyPrinted name of counsel: Howard N. Shipley

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Case: 12-1513 Document: 95 Page: 2 Filed: 04/18/2014


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TABLE OF CONTENTS

CERTIFICATE OF INTEREST ............................................................................ i

TABLE OF CONTENTS ....................................................................................... ii

TABLE OF AUTHORITIES ................................................................................ iii

STATEMENT OF COUNSEL................................................................................1

ARGUMENT FOR REHEARINGEN BANC......................................................1

I. Summary of the Argument ...........................................................................1

II.

Applying BRIPTO

in Claim Construction is a Legal Error. .......................3

III. MayoRequires a Refinement of the Classical Claim Construction,

at Least for Emerging Technology Claim(ed Invention)s,

comprising CIIs. ...........................................................................................12

IV. The Panels BRIPTO

and non-MayoClaim Constructions Are

Legal Errors and Result-Determinative. ...................................................13

CONCLUSION.......................................................................................................15

ADDENDUM : Opinion of February 21, 2014

CERTIFICATE OF SERVICE

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FSTP Reference List

The primary inventor (Prof. Sigram Schindler) has written extensively on the topicof claim interpretation and his FSTP (Facts-Screening-and-Transforming-Processor) Expert System. For the Courts convenience, a complete list of

references referred to by Prof. Schindler in his writings (some of which arereferred to in this petition) is provided below.

[1] S. Schindler: US Highest Courts Patent Precedents inMayo/Myriad/CLS/Ultramercial/LBC: Inventive Concepts Accepted Abstract Ideas Next? Patenting Emerging Tech. Inventions Now withoutIntricacies*).

[2] Advanced IT denotes IT research areas such as AI, Semantics, KR, DL,NL,

[3] R. Brachmann, H. Levesque Knowledge Representation & Reasoning,Elsevier, 2004.

[4] The Description Logic Handbook, Cambridge UP, 2010.[5] S. Schindler: Mathematically Modeling Substantive Patent Law (SPL)

Top-Down vs. Bottom -Up, Yokohama, JURISIN 2013*).[6] SSBG pat. appl.: THE FSTP EXPERT SYSTEM*).[7] SSBG pat. appl.: AN INNOVATION EXPERT SYS., IES, & ITS

DATA STRUC., PTR-DS*).[8] J. Schulze: TECHN. REPORT #1.V1 ON THE 882 PTR AND THE UI

OF THE IES PROTOTYPE, in prep.

[9]

S. Schindler: Patent Business Before Shake-up, 2013*)

[10] SSBG's Amicus Brief to the CAFC inLBC, 2013*).[11] SSBG pat. appl.: INV. CONC. ENABL. SEMI-AUTOM. PATENT

TESTS*).[12] C. Correa: Res. Handbook on Protection of IP under WTO Rules, EE,

2010.[13]

N. Klunker: "Harmonisierungsbestr. im mater. Patentrecht, MPI Munich,2010.

[14] USPTO/MPEP: 2111 Claim Interpretation; Broadest Reason. Interpr. [R-

9]

*)

.[15]

S. Schindler: KR Support for SPL Precedents, Barcelona, eKNOW-2014*).

[16]

J. Daily, S. Kieff: Anything under the Sun Made by Humans SPLDoctrine as Endogenous Institutions for Commercial Innovation,Stanford and GWU*).

[17]En bancHearing inLBC, CAFC, September 12, 2013.

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[18] SSBG Amicus Brief to the Supreme Court in CLS, 07.10.2013*).[19] SSBG Amicus Brief to the Supreme Court in WildTangent, 23.09.2013*).[20] USPTO, Intellectual Property and the US Economy: INDUSTR. IN

FOCUS, 2012*)

.[21] K. O'Malley: Keynote Address, IPO, 2013*).[22]

S. Schindler, The View of an Inventor at the Grace Period, Kiev,2013*).

[23] S. Schindler, The IES anditsIn-C Enabled SPL Tests, Munich, 2013*).[24] S. Schindler, Two Fundamental Theorems of Mathematical Innovation

Science, Hong Kong, ECM-2013*).[25] S. Schindler, A. Paschke, S. Ramakrishna, Formal Legal Reasoning that

an Invention Satisfies SPL, Bologna, JURIX-2013*).[26] SSBG' Amicus Brief to the Supreme Court as to Bilski, August 6, 2009*).[27]

T. Bench-Capon, F. Coenen: Isomorphism. and Legal Knowledge Based

Systems, AI&Law, 1992*)

.[28]

N. Fuchs, R. Schwitter. "Attempt to Control English", 1996.[29] A. Paschke: Rules and Logic Program. for the Web. 7. ISS, Galway,

2011.[30] K. Ashley, V. Walker, From Information Retrieval to Argument

Retrieval for Legal Cases: .., Bologna, JURIX-2013*).[31] CAFC, Hearing in Oracle vs. Google, As to the Copyrightability of the

Java Platform, December 6, 2013.[32] S. Schindler, A KR Based Innovation Expert System (IES) for US SPL

Precedents, Phuket, ICIM-2014

*)

.[33]

S. Schindler, Status Report About the FSTP Prototype, Hyderabad,GIPC-2014.

[34] S. Schindler, A Patent Expert System Based on eKnowledge, Moscow,LESI, 2014.

[35] S. Schindler, Substantive Trademark Law (STL), Substantive CopyrightLaw (SCL), and SPLSTL Tests Are True SCL Subtests, Which Are TrueSPL Subtests, in prep.

[36] S. Schindler, Boon and Bane of Inventive Concepts and Refined ClaimConstruction in the Supreme Court's New Patent Precedents", submitted

for publication, 2014*).[37] D.-M. Bey, C. Cotropia, "The Unreasonableness of the BRI Standard",

AIPLA, 2009*)[38]

Transcript of the Hearing in TELES vs. CISCO/USPTO as to the '902 and'453 patents4), CAFC, January 8, 2014*).

[39]

Transcript of the en banc Hearing in CLS vs. ALICE, CAFC, 8.2.2013*).[40] SSBG's Brief to the CAFC in case no. 12-1297, '453 patent*).

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[41] SSBG's Brief to the CAFC in case no. 12-1513 '902 patent*).[42] SSBG's Amicus Brief to the CAFC in caseCLS, 06.12.2012*).[43] SSBG pat. appl. "SEMI-AUTO. GENER. /CUSTOM. OF (ALL) CONF.

LEGAL ARG. CHAINS (LACS) IN AN INV.'S SSPL TEST, ENAB. BYITS In-Cs, 2014*).

[44]

R. Rader, Panel Discussion "Patents in Life Sciences", LESI, Berlin,November 28, 2012.

[45] SSBG's Amicus Brief to the Supreme Court as to its CII Question, Jan.28, 2014*).

[46] S. Schindler: "Automatic Derivation of Legal Argument Chains (LACs)from Arguable Subtests (ASTs) of a Claimed Invention's Test for

Satisfying SPL", subm. for publ.*).[47] S. Schindler: "Automatic Generation of All ASTs for a Claimed Invention'

s SPL Test", submitted for publication*).

[48]

USPTO/MPEP, 2012 ... Proc. for Subj. Matter Eligibility ... of ProcessClaims Involving Laws of Nature, 2012*).

[49] USPTO/MPEP, Guidelines 35 U.S.C. 112(2), Federal Register / Vol. 76,No. 27; MPEP 2171, 9. Aug. 2012*).

[50]NAUTILUS v. BIOSIG, PfC to the Supreme Court, 2013*).[51] BIOSIG, Respondent to PfC, 2013*)[52] Public Knowledge et al., Amicus Brief to the Supreme Court as to its

indefiniteness questions, 2014*).[53] Amazon et al., Amicus Brief to the Supreme Court as to its indefiniteness

questions, 2014

*)

.[54]

White House, FACT SHEET - "... the Presidents Call to Strength. OurPatent System and Foster Innovation", see home page, March 1, 2014*).

[55] www.USPTO.gov, home page, March 1, 2014.[56] IPO:"Patent Claim Limitation Construed According to Claims, Specifica-

tion, and Prosecution History and Not 'Universally Accepted Meaning',see www.IPO.org, home page, March 1, 2014.

[57]

M. Adelman, R. Rader, J. Thomas: "Cases and Materials on Patent Law",West AP, 2009.

[58]

SSBG's Amicus Brief to the Supreme Court as to its (In)Definiteness

Questions, March 3, 2014*).[59] SSBG pat. appl. "A PATENT INTERPRETATIONS AND inCs

MINDED UI OF AN IES,2014.[60]

S. Schindler: "A Patent Interpretation(s) and an inCs Minded UI of anIES,in preparation, 2014.

[61] H. Wegner: "Indefiniteness, the Sleeping Giant in Patent Law",www.laipla.net/hal-wegners-top-ten-patent-cases/.

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[62] CAFC order in Case No. 12-1513, reexamination no. 95,001,001 of U.S.Patent No. 7,145,902, February 21, 2014

[63] B. Wegner, S. Schindler: "Mathematical structures enabling thedecidability of the patentability and patent eligibility of a claimed

invention", Coimbra , CICM-2014*).[64]

TBD[65] CAFC: VEDERI vs. GOOGLE decision; March 14, 2014[66] CAFC: THERASENSE vs. BECTON & BAYER decision, 25.05.2011[67] B. Fiacco: Amicus Brief to the CAFC in VERSATA v. SAP&USPTO,

March 24, 2014*).[68] Official Transcript of the oral argument in U.S. Supreme Court, Case 13-

298 Subject to final Review, March 31, 2014, Alderson ReportingCompany.

[69]

R. Rader, Keynote Speech: Patent Law and Litigation Abuse, ED Tex

Bench and Bar Conference, November 1, 2013*)

.[70]

S. Schindler, Keynote Speech: eKnowledge About Substantive PatentLaw (SPL) Trail Blazer into the Innovation Age, Barcelona, eKNOW-2014*).

[71] S. Schindler: The Supreme Courts SPL Initiative: Scientizing Its SPLInterpretation Clarifies Three Initially Evergreen SPL Obscurities,submitted for publ., 2014*).

[72] USPTO/MPEP: 2014 Procedure For Subject Matter Eligibility AnalysisOf Claims Reciting Or Involving Laws Of Nature/Natural Principles,

Natural Phenomena, And/Or Natural Products

*)

.

*) available at www.fstp-expert-system.com

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STATEMENT OF COUNSEL

Based on my professional judgment, I believe the panel decision is contrary

to the following decision of the Supreme Court of the United States: Mayo

Collaboratives Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012),

which states that the inventive concept[s] of the claimed invention need to be

identified in order to construe the claims. Furthermore, I believe this appeal raises

the following question of exceptional importance: whether a claim in a granted

patent can have two different meanings depending on whether claim construction

is conducted by the USPTO during a reexamination or by a district court.

ARGUMENT FOR REHEARINGEN BANC

I. Summary of the Argument

This case embodies two fundamental questions as to Substantive Patent

Law, SPL precedents. There is a fundamental need of clarifying them for reestab-

lishing consistency and predictability of precedents and create confidence, again.

A.)Whether interpreting a claim by applying the Broadest Reasonable Interpreta-

tion, BRI as practiced by the PTO the BRI standard, here: BRIPTO

contradicts the CAFCs and even the Supreme Courts pertinent precedents, in

particular, if applied to an issued claim in a PTO reexamination or in an appeal

at this Court.

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B.)Whether the PTO or a Panel of the CAFC may ignore the claim construction

requirements for emerging technology claim(ed invention)s implied by the

Supreme CourtsMayodecision, which exclude this BRIPTOinterpretation.

The Panels decision as of 2/21/2014 would be obsolete, if A.)were replied

by yes or B.)were replied by no: By A.), as the Panels claim construction is

based on the BRIPTO. ByB.), as construing this claim construction didnt proceed

as required byMayo.

Accordingly: Section II contends that applying BRIPTO

in claim construction

is legal error for multiple reasons, in II.1 because BRIPTOcontradicts this Courts

own precedents in, e.g., In re Morris, 127 F. 3d 1048 (Fed. Cir. 1997),Phillips v.

AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (both implicitly confirmed by the

Supreme Court in Mayo), and in II.2 because BRIPTOcontradicts 35 USC. Then,

Section III shows how Mayo implicitly states requirements to be met in claim

constructions at least if dealing with emerging technology inventions but are

not met by the classical claim construction, and the more not by the BRIPTObased

one, construed by the Panel. Section IV finally reminds that the Panels decision

explicitly .)refused construing its claim construction as required by Mayoand :)

confirms that its claim construction applies the BRIPTO and then for both these

legal errors shows that they are result-determinative.

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the description. This quotation says: The terms and phrases used in the claims

are as broadly interpretable as allowed by the claims wording, as it does not

mentioning that Phillipsadditionally requires a singlebaselinefor determining

their meanings what rigorously limits the scope of their interpretation.

This misrepresentation of Phillipsby the BRIPTOguideline also simply does

not tell that thePhillipsdecision, from its outset,

repeatedly requires to exclude such "free-style" term interpretations

independent of the claimed invention described by the specification: By the

Phillipsopening statement "claim terms' meanings"7)must result from tying

by a baseline these terms' interpretations tightly to the claimed invention,

then making it even clearer by emphasizing: It is appropriate , when

conducting claim construction, to rely heavily on the written description for

guidance as to the meaning of the claims. Phillipsat 1317. This stresses:

The claim terms meanings must fit to the claimed invention, at least must

not contradict it while BRIPTOallows this!!!

To make this legal error of the BRIPTO guideline quite clear: The PTO

ignores the fundamental Phillipsopening statement and replaces it by the just

explained BRIPTOopening statement, which insinuates: a claim's terms need not

unconditionally be subject to the much tighter limitations imposed on them by

the Phillipsopening statement. This may totally disable the limitations of the

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claims in an infringement suit." MPEP 2111, citing Morrisat 1054-55; [14].

This reference toMorris i.e. again pre-Phillips insinuates the BRIPTOis kind

of precedential (see the Panels decision on p. 10-11, further commented on in

Section IV). But this interpretation ofMorris/Phillipsis legally incorrect. By it,

the CAFC authorized the use of the BRIPTOby the PTO only for the course of

prosecution of a patent application, definitely not for a patent granted already,

as in this case5).

Finally,Mayoimplicitly confirms the CAFCsMorris/Phillipsrequirements:

) Mayo firstly confirms and refines by explicitly requiring to identify

the inventive concept[s]7)representing the claimed invention's increments of use-

fulness (potentially) patentable [18,19] as Phillipsrequired by its baseline.

) Mayo secondly requires and this is crucial for Mayos emerging

technologies concerns to ensure that, due to its baseline of its "inventive con-

5 Phillips and Morris nowhere say that also by the end of a claims prosecutiontheir above explained and for a legal conflict about it decisive claim interpreta-tions limitations may be ignored by the BRIPTO e.g., to ... taking into accountwhatever enlightenment by way of definitions or otherwise that may be afforded

by the written description contained in the applicants specification. MPEP 2111, quoting Morris at 1054-55. The Phillips decision thus reminds that thePTO itself introduced its BRIPTOinto the claim interpretation discourse, and theCAFC never sanctioned its breadth.

And much more important, a patent granted represents a(n intellectual) proper-ty, in the confiscation of which the PTO must not deviate from the procedure of adistrict court [21,37]. 35 USC does not entitle the PTO to proceed in a way notsanctioned by the Highest Courts.

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cept[s], the claim(ed invention) is ) nonpreemptive (i.e., not an abstract idea

only [5,71]), ) patent-eligible (i.e., comprises at least one patent-eligible inventi-

ve concept), and

) patentable (i.e., its patent-eligible inventive concepts indicate it

deserves patentability), as explained by three Amicus Briefs [18,19] and by [25].

I.e., the BRIPTOfails meeting any Mayorequirement )or ), the BRICAFC

partially meets requirement )but doesnt check ), and (any) BRIFSTPmeets both.

None of these clarifications added by Mayoto classical claim interpretation

at all exists in the BRIPTOguideline [14], originating from Kerbich in 1953 [37].

The BRIPTOthus maintains a since Phillips/Mayo at the latest legally erroneous

position that broadening of the meanings of claim terms by disregarding its

specification is lawful. All this despite Phillips/Mayorequiring to the contrary!

Consistency and predictability of SPL precedents is impossible to achieve, if

the BRIPTOguideline remains as it is and is used by courts as the Panel did as if

it were Highest Courts SPL precedents. That it is not!

In total: A claimed inventions test for satisfying SPL must be much more

elaborate than in just construing for it its classical claim construction by BRIPTO6).

Yet, the Panel decision implies, this amount of scrutiny is not needed6).

6 For a claim, any BRIFSTPalias BRIMayo is, compared to BRIPTO, legally more

concise, by first identifying its disclosed inventive concepts representing itsrequired (by 101) novelty and usefulness increments thus excluding legallyerroneous technical meanings of its claims terms(see Sections III/IV) and

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The above elaborations on the BRI is intended to show that claim construc-

tion requires much more problem awareness and scrutiny than the BRIPTO

guideline represents. The BRIPTOis absolutely untenable, at the latest sinceMayo

endedthe BRIPTOs endorsement of being less meticulous. Mayonamely stopped

the misconception9) that the meanings of a claim's terms are uniquely derivable

alone from this claim's wording, without reading the specification7)8)9)10)11).

coherent, by ensuring all their 112/101/102/103 aspects are consistent.

Not applying the scrutiny of BRIMayo inevitably causes inconsistencies inSPL precedents!

9)See e.g. [58,71] for the scientification of BRIMayoto BRIFSTP.Mayouses the term "inventive concept" only three times and often replaces it bysynonyms or circumscribes it, e.g., in "... do the patent claims add enough to ....", or "... unless the process has additional features that ...", or"What else is there...",or "Those steps included ...". Thus Mayotells:An invention's specification may refer to inventive concepts also by synonymsor embody them only implicitly, i.e., circumscribing them these synonyms and

circumscriptions also represent inventive concepts. I.e.: Decisive is not whetherthe term inventive concept is used (see the next paragraph): Any other termmay refer to an inventive concept, if the referred-to object only has the meaningof incrementally increasing the usefulness of the claim(ed invention) [18,19].

A term together with its meaning is a notion. A notion hence defines itsterms meaning. InMayoa notion is called an inventive concept if its meaninghas the pragmatics to serve for defining the claimed inventions 101usefulness, this pragmatics being disclosed by the claimed inventions specifi-cation (unless known a priori by the person of ordinary skill and creativity,posc.). A notion e.g., "inventive concept" may be represented by differentterms (= synonyms) or even implicitly, as the preceding paragraph exemplifies.

In the Phillipsopening statement, its "claim term" is a term representing aninventive concept8). Phillips deals only with such claim terms alias inventiveconcepts (though often leaving away the leading "claim" because of evidence).The BRIPTOguideline knows no such notion. Mayoemphasizes this notion byintroducing the synonym "inventive concept" for it (see Section III). That

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"inventive concepts" hence clearly are legal items including factual items i.e.,not just factual items is explained in [5,7,11,36].

8 A patent specification may disclose several inventions. A first consequence is

that a claim seeking patent protection for one of them must identify which one.This one then is its "claimed invention" more exactly explained in [71].

While this need to focus on a claim's "claimed invention" was recognizedalready by Morris, it is only Phillips that recognized the second consequence.To focus in a claim interpretation also on interpreting its "claim terms"7)just ason interpreting its "clamed invention." Markman v. Westview Instruments, Inc.,517 U.S. 370 (1996) did not yet recognize this intricacy in claim construction,i.e. nowhere talks of "claim terms", i.e., ignores that a claim interpretation mayneed to focus on its terms, too. Thus, a notational glitch sneaked into Markman,

whichPhillips

fixed by explicitly complementing a quotation fromMarkman

using a "term" to become using a "[claim] term".9 As to this misbelief, linguists hint at sentences like "John sees Jim with his

binoculars on the mountain": Therein the terms "sees" and "his" have no uniquemeanings. Without knowing the meaning of this sentence a priori, the meaningsof its terms are not uniquely determinable. I.e.: By Advanced IT, the meaningsof the terms in a sentence, and hence the meaning of even a set of sentences maybe uniquely determinable only if its meaning is known up-front.

It hence was consequential that Phillips required in line with what NLwould indispensably require [2], see the preceding paragraph that in claim

interpretation the claimed invention's meaning, its "technical teaching," isknown before determining the meanings thereinof the claim's terms. I.e.: Patentjudges/lawyers/examiners must precisely understand all principles the claimedinvention embodies and in order to achieve this precise understanding mustread and grasp what the specification discloses about these principles prior tofinally fixing the meanings thereinof the claim's terms (see Section III and IV).

Thus, Mayo does absolutely nothing other than enforcing to proceedexactly as required by Phillips

6). It achieves this enforcement by its

requirement to define a claim(ed invention)s inventive concepts (i.e., also their

meanings7)8)

) for construing the claim construction for it by means of them, i.e.,by ) above.

Addressing the uncertainties within the CAFC as to an inventive conceptsbeing: By advanced IT it is the notional instruments indispensable for determi-ning for one or several sentences its/their meaning(s)/meaning(s). I.e.: Scientifi-cally there is no other way to determine the meaning(s) of this/these sentence/s.

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I.e., the BRIPTOdoesn't care for this clarification conveyed byMayo just as

this Panel and remains caught in this misbelief9), as Section IV shows. Both enti-

ties simply ignoreMayo even though its inventive concepts bar this misbelief.

II.2 The BRIPTO

Contradicts 35 USC. This point has been argued by many

people over time. Two recent ones, [37,67], represent a huge share of all profes-

sional and industrial legal knowledge as to this aspect of 35 USC. It suffices, iden-

tifying by page numbers their main arguments as this Court knows their details.

10But banning the BRIPTOis only a first step: Construing, for a claimed invention, the refined claim construction (i.e. testing it under 112/101/102/103) yields

a construction satisfying SPL; while construing for it just the classical claim construction by testing it only under 112 yields a cons-

truction satisfying SPL or not. I.e., of this rudimentary construction must beshown that its claimed invention passes also the other 3 s tests [19,36,58].

In none of its decisions the Supreme Court explicitly addresses this deficiency ofclassical claim construction. But, it also is not its business to fix in detail a prob-

lem, but to indicate it! clearly stated by the Supreme Court(e.g., in [68] onp. 28). InMayo,the Supreme Court indicated the lack of a legally proper claimconstruction and stated the requirements it must meet thereby refining theCAFCsMorris/Phillipsdecisions, as well as the classical claim construction.

11The Mathematical KR definition of the notion inventive concept alias "claimterm" as discussed in more detail in [5-11,36,63], is a dramatic simplification ofthe powerful notion of "concept" in DL or KR [2-4]. It here is customized formodeling just SPL precedents, nothing else, while in DL or KR concepts servefor modeling recursively building compound concepts out of simpler ones.

By contrast, the Highest Courts' SPL precedents proceed the opposite way:

Modeling the properties of the elements of an invention precisely must disaggre-gate its compound inventive concepts (modeling compound such properties) intoelementary inventive concepts (modeling elementary such properties) [5-11], as 112 and 101 require any such property to be clearly defined, i.e., inparticular its novelty and usefulness logically impossible with compoundproperties.

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In [37] see p. 294-300, showing the BRIPTOs inconsistency with the Patent

Statutes and its contradicting the legal unitary appellate structure of these Statutes.

In [67], though dealing with the AIA, on p. 15-17 arguments are provided

that apply especially to this case, explaining the absence with the PTO of any SPL

rule making authority that promulgating the BRIPTOas SPL violates the USC.

III. MayoRequires a Refinement of the Classical Claim Construction, at

Least for Emerging Technology Claim(ed Invention)s, comprising CIIs.

Neglecting the Supreme Courts claim construction requirements clearly

stated by Mayo, just because it originally was triggered by a patent-eligibility

issue, focuses on the wrong issue. Even though the Supreme Court inMayodid not

explicitly spell out that it guides to construing a claim(ed invention)s properly

refined claim construction this is evident9).

The below bullet points evidence for the first 2 quotations in ftn7) from the

Mayodecision that their only purpose is to prescribe how to construe a refinement

of the classical claim construction for the claimed invention at issue there. These

quotations are synonyms to its inventive concepts and circumscribe these7).

do claims add enough: This questions enough clearly requires inte-

grating eventually all inventive concepts into the claim construction.

unless additional features : This unless states the same requirement.

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IV. The Panels BRIPTO

and non-MayoClaim Constructions Are Legal

Errors and Result-Determinative.

The Panel decision states in ftn 12 that it sees no reason to considerMayoin

claim construction. On page 10, bottom lines, it states to apply BRIPTO, after

having confirmed, on the bottom lines of page 8, to know that also the PTO had

used it for claim construction. Both these legally improper findings (see Sections II

and III), taken by the Panel, are determinative for the results of its decision.

IV.1 The Impact on the Decision by the First Finding. If the Panel had

accepted the Mayoconforming claim construction for the claims at issue, submit-

ted to it by SSBGs Reply Brief (therein explained very verbose, for didactic

reasons), it would have found no way as there is none to interpret them inde-

pendently of the invention, i.e., the BRIPTOway. The reason being this is an ad-

vantage provided by the inventive conceptsMayo

requires (see)

in Section II.1

and [18,19]) that these inventive concepts already embody the Phillipsconfor-

ming interpretation of the claim terms7)8). Thus, had the Panel construed the refined

claim construction required byMayo, this decision would have been impossible.

This is evidenced by the inventive concepts signal and communications

connection. For both of them, SSBGs Reply Brief showed (pp. 10-13) that no

prior art document mentions such notions. Neither the PTO nor Cisco has ever

argued that the prior art had anticipated even one of these inventive concepts thus

the Panel decision is legally wrong.

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IV.2 The Impact on the Decision by the Second Finding. Two kinds of situa-

tions are to be distinguished, both being result-determinative. a)For claim 68 the

Panel accepts the PTOs technical expertise and with it the BRIPTO, i.e., also its

legal expertise, and b) for claims 91 and 104 the Panel overrules this PTOs ex-

pertise in a technically absolutely nontrivial but to the posc7)well-known issue12)b).

a):This finding of the Panel is fundamentally legally erroneous: The CAFCs

Morris/Phillipsdecisions barred applying the BRIPTOin claim construction and

35 USC does not entitle the PTO to proceed in a way not sanctioned by the

Highest Courts12)a).

b):This finding of the Panel is fundamentally legally erroneous, too. In its

decision, the Panel decides factual issues, namely those of the multiplexers at

issue. The Panel thus contradicts the pertinent Supreme Court and/or CAFC

12 a) The Panel did just simply accept the factual information provided by thePTO. It also confirmed this (BRIPTO flawed) information using the BRIPTO,instead of at least using this Courts BRICAFC, which would have resulted in adifferent outcome.b) The additional inventive concept of the claims 91/104 is a multiplexer. Itenables several simultaneous such Internet calls between the same sites to usethe same PSTN connections between their switches For the posc no commonlyknown multiplexers are used, as they must have additional and then novel

though evident features. They namely must accommodate the change-over of anInternet telephone call, from the Internet connection between the switches onto aPSTN connection between them, at least as to ) address resolution (WhichPSTN address belongs to an IP address, if e.g. the IP call establishment failed?)and ) communications connection monitoring (Is a potentially encountered net-work delay caused by the Internet or an overload of this PSTN connection?).

14



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decisions, such as Markman, limiting the CAFCs competence in claim

construction to the legal aspects it comprises. The CAFC improperly

substitutes its technical understanding for that of the PTO (notwithstanding that

the Board used it contra legem), without disclosing where it comes from, espe-

cially in an emerging technology area which, at priority date, was for years des-

perately in search for this at-that-time extremely sophisticated 902 invention.

Thus, Subsection IV.2 also shows, independently of Subsection IV.1, that

the Panel decision is legally wrong.

CONCLUSION13

The petition for rehearing en bancshould be granted in particular as the

new PTO guideline about (non)patent-eligible subject matter [72] may dramatical-

ly increase the current confusion about SPL precedents under the AIA. That

guideline raises the same questions, whether the PTO is entitled to create its own

legal standard independent of the Higher Courts or U.S. Code.

Respectfully Submitted,April 18, 2014 /s/ Howard N. Shipley

Howard N. ShipleyGeorge E. QuillinRyan A. Schmid

FOLEY &LARDNER LLPCounsel for Cross Appellant, SSBG

13Prof. Sigram Schindler, the primary inventor of the 902 patent, should berecognized for his significant contributions to this Petition.

15



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ADDENDUM



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NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit______________________

CISCO SYSTEMS, INC.,Appellant,

v.

MICHELLE K. LEE, Deputy Director, United StatesPatent and Trademark Office,

Appellee,

v.

TELES AG INFORMATIONSTECHNOLOGIEN,Cross-Appellant.

______________________

2012-1513, -1514______________________

Appeals from the United States Patent and Trade-mark Office, Board of Patent Appeals and Interferences,

in Reexamination No. 95/001,001.- - - - - - - - - - - - - - - - - - - - - - - - -

IN RE TELES AGINFORMATIONSTECHNOLOGIENANDSIGRAM

SCHINDLER BETEILIGUNGSGESELLSCHAFT

MBH______________________

2012-1297

Case: 12-1513 Document: 86-2 Page: 1 Filed: 02/21/2014 (3 of Case: 12-1513 Document: 95 Page: 25 Filed: 04/18/2014


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CISCO SYSTEMS,INC. v.LEE 3

WALLACH, Circuit Judge.

Third-party requester Cisco Systems, Inc. (Cisco)appeals from the Patent Trial and Appeal Boards

(Board) decision confirming the patentability of claims91 and 104 of U.S. Patent No. 7,145,902 (the 902 pa-tent). Teles AG Informationstechnologien (Teles)1crossappeals from the Boards rejections of claims 68, 69, 71,

75, 77, 79, 82, 84, 87, 90, 92, 95, 98, 100, and 102. Thiscourt affirms-in-part and reverses-in-part.

BACKGROUND

I. The 902 Patent

The 902 patent discloses a method and apparatus fortransmitting data in a telecommunications network by

line switching (also referred to as circuit switching) andpacket switching. 902 patent col. 1 ll. 1922. It contem-

plates transfer of any type of data, including audiodata, video data or computer files, id.col. 3 ll. 4546, andis particularly useful in Internet telephony, id.col. 4 ll. 34. A conventional telephone transmission uses line

switching, whereas the Internet uses packet switching. Aline-switching connection has fixed bandwidth and trans-

fers data continuously and without delay. Id.col. 1 ll. 46

60. Line-switching connections are costly, however,because the connection must be maintained even when nodata is being transferred. Id. col. 1 ll. 5658. Packet

switching transmits data in data packets. It is less ex-pensive, but can cause significant time delays when there

is a large amount of data to be transmitted. Id.col. 2 ll.

1825.

1 For convenience, this court will refer to former pa-tent owner Teles, even though Sigram Schindler Be-teiligungsgesellschaft MbH now owns the 902 patent.



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CISCO SYSTEMS,INC. v. LEE4

The 902 patent teaches changing over between lineswitching and packet switching during an existing com-

munication, so that each type of connection can be usedwhen it is most beneficial. This is accomplished with

switches that allow both line-switching and packet-switching, and combine the functions of a line-switch and

a packet-switch. Id. col. 3 ll. 4750. Such a switch has[(1)] a packeting device for packeting and unpacketingdata, [(2)] an IP switching device for routing data packets,[(3)] a line-switching device for establishing connections

for switching through data channels[, and (4)] a controldevice which directs incoming data. Id.col. 3 ll. 5155.

The control device responds to control signals, which can

be triggered (1) automatically when a packet-switchingtransfer exceeds a certain bandwidth, (2) by a user, or (3)by the network management system. Id.col. 3 ll. 5863.

The method is designed to harness both the cost-savingbenefits of packet switching and the speed and accuracy of

line switching. Id. col. 3 ll. 2539. Importantly, thetransfers between line switching and packet switchingoccur without interrupting the connection between the

servers. Id.col. 3 ll. 2528.

A telecommunications network according to the 902

patent includes multiple switches 7, each of which com-prises a packet switch 72 and a line switch 73.



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Id. Fig. 4. Control device 71 produces internal controlcommands to direct data either through packet switch 72or line switch 73. Id. col. 8 ll. 5965. The network man-

agement system or a user can use an end terminal oranother switch to trigger control signals from the controldevice 71. Id. col. 9 ll. 2933, 6366. Alternatively,change-over control device 711 (depicted in Figure 4 as

part of control device 71) monitors the transfer bandwidth

and can automatically release a control command tochange the type of transfer. Id. col. 9 ll. 4147. For in-stance, when the control device 711 detects that packetswitching is understepping or exceeding a certain band-width and/or in the event of a time delay, it can change

over to line switching. Id.

Exemplary claim 68 recites:

68. Switching apparatus for selectively routing atelephone call from a first end terminal to a sec-

ond end terminal, comprising:



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a device that provides access to apacket switchingnetworkthrough which data can be sent for deliv-

ery to the second end terminal;

means for transferring first data of the telephone

call originated by the first terminal through thepacket switching network for delivery to the sec-

ond end terminal;

a device for establishing a connection to a line-switching networkthrough which data can be sent

for delivery to the second end terminal;

means for transferring second data of the tele-

phone call originated by the first terminal overthe 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 ofthe telephone call without interruption of a call-up

procedure, wherein said control signal is produced

by a network management system.

Id.col. 18 l. 58col. 19 l. 14 (emphasis added to disputedlimitations). Two dependent claims, 91 and 104 (whichdepend from claims 84 and 100, respectively), also feature

a multiplexer in the line-switching device for multiplex-ing data of several origin end terminals over a single line

connection through the line-switching network.2 Id.col.21 ll. 3840; see also id. col. 23 ll. 68 (substantially thesame, except the connection must be through the public

telephone network).

2 Claims 84 and 100 cover similar switching appa-ratuses, except that claim 100s packet-switching networkis limited to the Internet. 902 patent col. 22 l. 2729.



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II. Prior Art References

Cisco relied on multiple prior art references in its re-quest for inter partes reexamination. Five references aremost relevant to this appeal: Jonas,3 Farese,4 Matsuka-

wa,5 Yoshida,6 and Focsaneanu.7 The Board found thatthe first four references disclose changing over betweenpacket switching and line switching during an existingcommunication. Jonas discloses a system and method of

transmitting secret and/or critical data over a packet-switched network (such as the Internet), and also features

a line-switched network to bypass packet switching

when necessary. J.A. 1112.

Farese teaches a system in which a host computertransfers an Integrated Services Data Network (ISDN)access path between a D-channel (which uses packet

switching) and a B-channel (which is capable of using lineswitching) during an ongoing host session.8 Matsukawas

network likewise uses an ISDN in both packet-switchingand line-switching modes, and teaches changing over toline switching when a certain pre-determined time delayoccurs during the packet-switching connection. Yoshida,

again, teaches an ISDN network using line and packetswitching. Yoshida focuses on a Local Area Network

(LAN) with channels B1 and B2, which correspond topacket and line switches, respectively. When there is anincrease in packet data per unit time (resulting in greaterdelays), Yoshidas channel change signal causes a change

over to transmission on the line-switching connection.

3 U.S. Patent No. 6,137,792.4 U.S. Patent No. 4,996,685.5 U.S. Patent No. 5,598,411.6

U.S. Patent No. 5,347,516.7 U.S. Patent No. 5,610,910.8 ISDN is a data system that enables digital trans-

mission over the public telephone network.



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The fifth reference, Focsaneanu, discloses a multi-service access platform that allows a plurality of comput-

ers (or other communications equipment) to interface witha plurality of networks. Focsaneanu col. 1 ll. 714, col. 4

l. 40col. 5 l. 12. Focsaneanu also teaches the use of amultiplexer to combine multiple signals in a single

transmission to the network. Id.col. 8 ll. 2426, col. 10 ll.

4749.

III. Procedural History

In 2007, Cisco requested inter partes reexamination ofclaims 36, 37, 41, 5458, 6062, 64, 66, 68, 69, 71, 75, 77,

79, 82, 84, 87, 9092, 95, 98, 100, 102, 104, and 118125

of the 902 patent.9After the U.S. Patent and TrademarkOffice (PTO) granted the request, the Examiner rejectedall but two of the reexamined claims based on anticipa-

tion, with some claims being anticipated by multiple priorart references. The Examiner confirmed the patentability

of claims 91 and 104, rejecting all of Ciscos proposedobviousness and anticipation rejections. Teles appealedthe rejections to the Board, and Cisco cross appealed theExaminers decision to allow claims 91 and 104. The

Board affirmed in all respects.

In particular, the Board affirmed the Examinersclaim construction of network, as used in claim termspacket-switching network and line-switching network.

The Board determined the broadest reasonable interpre-tation of those terms includes D- and B- channels of

9 Teles and Cisco are also involved in an infringe-ment action in the U.S. District Court for the District ofDelaware involving, inter alia, the 902 patent. Cisco

Sys., Inc. v. Sigram Schindler Beteiligungsgesellschaft,C.A. No. 09-232-SLR & No. 09-072-SLR (D. Del.). Thatcase is currently stayed pending final decision in this andother reexamination proceedings.



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ISDN, and rejected Teless argument that the separatechannels of the ISDN cannot constitute two distinct

networks. J.A. 19. The Board also found unpersuasiveTeless argument that telephone call and real-time

properties, as recited in the apparatus claims of the 902patent, require actually making a telephone call or trans-

ferring data in real time; rather, the Board determinedthe apparatus claims only require a structure capable ofperforming those functions.

Finally, the Board construed the means responsive to

a control signal limitation in the last paragraph of claim68 as a means-plus-function claim. The Board agreed

with the Examiner that the recited function was chang-ing-over from a packet-switching mode of transfer of the

first data of the telephone call to a line-switching mode oftransfer of the second data of the telephone call without

interruption of a call-up procedure. J.A. 22 (internalquotation marks omitted). The Board determined thecorresponding structure was the change-over control unit

711. J.A. 23.

Based on these claim constructions, the Board af-

firmed the Examiners rejections of claims 68, 69, 71, 75,77, 79, 82, 84, 87, 90, 92, 95, 98, 100, and 102 as antici-

pated by Jonas. Some of these claims were also rejectedas anticipated by Farese, Matusaka, and Yoshida, alt-hough claims 100 and 102 were rejected solely on thebasis of Jonas. The Board also affirmed the Examiners

decision not to adopt Ciscos proposed anticipation rejec-tions based on Focsaneanu. It determined Focsaneanu

does not meet the limitation of changing-over betweenpacket and line switching during an active communica-tion, but instead requires disconnecting the data transfer

before making such a change.



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Finally, the Board affirmed the allowance of claim 91,holding it would not have been obvious over Focsaneanu

in view of Lucent10and, inter alia, Jonas or Yoshida, andlikewise affirmed that claim 104 would not have been

obvious over the combination of Focsaneanu, Lucent, andJonas. Although Focsaneanu discloses a multiplexer as

required by claims 91 and 104, the Board found it doesnot disclose a multiplexer that supports changing-overbetween packet switching and line switching during an

ongoing phone call.

Cisco filed a timely appeal challenging the Boards al-lowance of claims 91 and 104. Teles cross appealed the

Boards rejections. This court has jurisdiction pursuant to35 U.S.C. 141 and 144 and 28 U.S.C. 1295(a)(4)(A).

DISCUSSION

On appeal, Teles contests the Boards constructions ofnetwork, telephone call, and real-time properties. Itfurther argues the Board improperly failed to interpretthe terms control signal and communications connec-

tion. According to Teles, these allegedly incorrect claimconstructions require reversal of the Boards rejections

based on Farese, Yoshida, Matsuwaka, and Jonas. Even

assuming those constructions are correct, Teles contendsthere is not substantial evidence to support the Boardsrejections of claims 100 and 102 as anticipated by Jonas.

Cisco, in turn, challenges the Boards decision confirmingclaims 91 and 104. Each argument is addressed in turn.

I. Standard of Review

During reexamination, claims . . . are to be giventheir broadest reasonable interpretation consistent with

10 Lucent Technologies, Lucent Technologies an-nounces Internet telepathy servers to put voice, fax, andmail on the Internet(Sept. 17, 1996) (Lucent).



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part of the same network, not two independent net-

works.11

In holding the claimed packet- and line-switchingnetworks can be part of one network, the Board relied on

the 902 patents statement that it is possible to divideup a single coupling networkdepending, on requirements,dynamically into a line-switching network and a packet-switching network. J.A. 9 (quoting 902 patent col. 3 ll.

1013) (emphasis added). While this statement is madein the context of discussing prior art, the rest of the

specification does not require a narrower meaning.Contrary to Teless argument that a person of ordinary

skill always understands the ISDN to be a single line-switching network, Teless Br. 19 (emphasis added), the

Summary of the Invention portion of the 902 patentrefers to ISDNs D-channel as one type of packet-

switching network, thus confirming that packet switchingand line switching can take place in one network. See902 patent col. 4 l. 66col. 5 l. 2 (describing an example ofa packet-switching transfer to the access point as e.g.,

through an ISDN D channel).

Teles counters that [t]he 902 Patent makes clearthat two independent and distinct networks are required

to make up the Packet- and Line-switching Network: onebeing a packet-switched network, such as the Internet;and the other being a line-switched network, such as the[public switched telephone network] or ISDN. Teless Br.

28 (citing 902 patent col. 7 ll. 4952). The portion of thespecification that Teles cites for this proposition, however,

11 The finding that D- and B-channels in an ISDNnetwork can meet the packet and line-switching net-

work limitations is necessary to the Boards anticipationfindings regarding prior art references Farese, Yoshida,and Matsukawa, which disclose changing over betweenpacket and line switching in an ISDN network.



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refers to only one network: The switches 7a and 7b[,representing a packet switch and a line switch, respec-

tively,] can be mounted . . . at different points in thetelecommunications network. 902 patent col. 7 ll. 4849

(emphasis added). Moreover, the fact that packet switch-ing and line switching are quite different[ ] from each

other, id. col. 1 l. 67col. 2 l. 3, does not show that two

separate networks are required.

Nor is there an unmistakable disavowal of claimscope, as Teles argues, in the description that [i]f an

ISDN network exists, then an ISDN B channel is used asthe data channel. Teless Br. 31 (quoting 902 patent col.

5 ll. 26). This simply describes a preferred embodimentin which the same data channel is used for transferring

the data packets from the first switch to both the packet-switching network and the line-switching network. 902

patent col. 4 ll. 5160. This embodiment is meant toensure a larger and fixed bandwidth . . . up to the accesspoint [of the packet-switching network], id.col. 5 ll. 12,but does not state that the packet-switching network

cannot be another channel in the ISDN network. Alt-hough ISDNs are conventionally known as line-switched

networks, the Board correctly determined that the

networks in the instant claims can be read onto anISDN under a broadest reasonable interpretation. J.A.20. This court therefore affirms that the claimed packet-

switching network and line-switching network includes asingle telecommunications network with multiple chan-

nels, such as an ISDN network.

B. The Board Correctly Construed Telephone Call and

Data Transfer with Real-Time Properties

The contested claims of the 902 patent require a tel-ephone call and/or data transfer with real-time proper-

ties. Claim 68, for example, recites a [s]witchingapparatus for selectively routing a telephone call, com-prising, inter alia, means for transferring first data of the



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telephone call and means for transferring second data ofthe telephone call. 902 patent col. 18 l. 58col. 19 l. 4

(emphases added). Claim 84 requires a control devicethat maintains respective communications connections

for data transfer with real-time properties. Id. col. 20 ll.6364 (emphasis added). The Board determined that both

limitations require only a structure capable of perform-ing the function of sustaining a telephone call or provid-ing real-time properties. J.A. 21 (citing Hewlett-PackardCo. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir.

1990) ([A]pparatus claims cover what a device is, notwhat a device does.)).

Teles argues the Board should have construed bothterms to mean end-terminal-to-end-terminal communica-

tions connections with a communications time delay ofless than 0.5 seconds. Teless Br. 40. The proper con-

struction, according to Teles, must exclude the transfer ofanonymous bulk data with unspecified/non-real-timedelay requirements. Id. Teles bases its argument on theportion of the specification stating that [w]ith Internet

telephony, a cost-conscious caller uses the normal Inter-net with approximately 8 kbit/s bandwidth and a time

delay of 0.5 seconds. Id.at 41 (quoting 902 patent col. 2

ll. 1921).This statement is set forth in the Background of the

Invention, and provides context by describing the diffi-culties typically associated with packet switching; it does

not limit the otherwise plain meaning of telephone callor data transfer with real-time properties. Nearby

portions of the specification further describe delays . . . ofconsiderable significance, especially when the Internet isoverloaded. Id. col. 2 l. 1825 (When the Internet isoverloaded, the time delay of the individual packets

becomes so great that an acceptable conversation connec-

tion between telephone partners is no longer possible.).Nor does the specification even mention the 0.5-secondtime delay in the context of line switching. Teles is there-



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40/47


tion to the problem present in prior art systems. Id.at4546. According to Teles, [a]ll of the appealed claims

were carefully and deliberately limited to structure oracts of changing-over . . . from the packet-switched

network to the line-switched network without interrup-tion of the communications connection / the call set-up

procedure. Id. at 46.

Contrary to Teless argument, the Board had no obli-

gation to consider claim construction challenges that werenot actually raised before it. See 37 C.F.R.

41.67(c)(1)(vii). The Board did construe the meansresponsive to a control signal limitation in claim 68,

finding it was a means-plus-function term and that thecontrol device 711 was corresponding structure. J.A. 22

(emphasis added). Teles now contends that controlsignal requires the real-time changing-over of an ongo-

ing telephone call from a packet-switched network to aline-switched network without interruption of end-to-endcommunications connection, and that [c]ommunications[c]onnection should be construed as an end-terminal-to-

end-terminal link. Teless Br. 45. These arguments havebeen waived. Moreover, Teless one-and-a-half pages of

argument on this issue do not cite to any intrinsic or

extrinsic evidence to support its proposed constructions.To the extent Teles contests the Boards construction ofmeans responsive to a control signal, the Board properly

treated it as a means-plus-function term with correspond-ing structure of the control device 711.

Teless claim construction arguments are its sole chal-

lenges to the rejections of claims 68, 69, 71, 75, 77, 79, 82,84, 87, 90, 92, 95, and 98 as anticipated by one or more ofJonas, Farese, Yoshida, and Matsukawa. Because theBoards claim constructions are correct, this court also

affirms these otherwise unchallenged anticipation rejec-

tions.



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D. Teless New Challenges to Claims 100 and 102 Are

Unpersuasive

The Board affirmed the Examiners rejections of inde-pendent claim 100 and its dependent claim 102 as antici-

pated by Jonas. Claim 100 recites, inter alia, a control

device,

the control device being responsive to the datapacket headers for controlling the packet switch-ing device and the line switching device for estab-

lishing and maintaining respectivecommunication connections for data transfer with

real-time properties between originend terminals

and destinationend terminals, and the control de-vice also being responsive to an overload in the In-ternet for automatically changing-over from

packet-switching transfer of first data of a com-munications connection to line-switching transfer

of second data of the communication connectionwithout interruption of the communications con-nectionwhen a data blockage occurs in the routingof data packets of the first data of the communica-

tions connection through the Internet.

902 patent col. 22 ll. 3351 (emphases added to disputedlanguage). On appeal, Teles argues that Jonas does notdisclose (1) an end terminal, (2) a communications

connection, or (3) a control device that is responsive todata packet headers and an overload on the Internet.

Teless Br. 52, 56. Teles did not raise these argumentsbefore the Board, however, where it challenged the rejec-tion of claims 100 and 102 based only on its argumentswith respect to exemplary claim 68. See, e.g., J.A. 7174

75 (real-time properties and telephone call argu-ments), 715456 (arguing Jonas does not disclose the

limitations of claim 68). Absent exceptional circum-stances, this court does not consider arguments not



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raised before the Board. In re Baxter Intl, Inc., 678 F.3d

1357, 1362 (Fed. Cir. 2012).

Even if this court considers the merits of these newarguments, they are unpersuasive.13 Without deciding

whether the above three limitations are required byclaims 100 and 102, it is evident from the Boards factfinding that Jonas discloses all three. Jonas describesmonitoring a packet-switching transmission from a source

computer to a destination computer and dynamicallyswitching to a line-switching connection during an exist-

ing transmission. Jonas col. 5 ll. 5358. The Board foundthat Jonas discloses dynamically tak[ing] advantage of

both the inherent cost benefit of [a] . . . packet-switched[network] and the minimal delay time of [a] [line]-

switched . . . network[ ] by monitoring transmissiondelay, and switching to the line-switched network when

the delay exceeds a predetermined value. J.A. 13 (quotingJonas col. 5 ll. 5356). Jonas also features data packetheaders and describes that packets transmitted over thebypass line-switched network may contain labels in the IP

header. J.A. 12 (citing Jonas col. 4 ll. 4345). Based onthe Boards fact findings, Jonas thus discloses an end

terminal, a communications connection, and a control

device responsive to data packet headers and Internet

13 In its reply brief, Teles argues that Cisco and thePTO waived their argument that Teless arguments arewaived. Teles Reply Br. 25 (citing Riemer v. Ill. Dept of

Transp., 148 F.3d 800, 809 (7th Cir. 1998) for the proposi-

tion that [a] defense of waiver can itself be waived by notbeing raised). This argument overlooks that this is Ciscoand the PTOs first opportunity to respond to Teless newarguments on claims 100 and 102.



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overload. Accordingly, the rejections of claims 100 and

102 are affirmed.14

III. Ciscos Appeal

A. The Board Erred in Confirming the Patentability ofClaims 91 and 104

Claims 91 and 104 depend from claims 84 and 100,respectively, and add the limitation of a multiplexer

device for multiplexing data of several origin end termi-nals over a single line connection through the line-

switching network. 902 patent col. 21 ll. 3740 (claim91); id. col. 23 ll. 48 (claim 104 reciting substantially the

same, except that the line-switching network must be apublic telephone network). Ciscos request for reexamina-

tion argued these claims should be rejected as anticipatedby Focsaneanu, or, alternatively, as obvious over Focsa-

neanu alone or in combination with multiple prior artreferences. In particular, Cisco argued claim 91 wouldhave been obvious over Focsaneanu and Lucent andeither Jonas or Yoshida. It argued claim 104 would have

been obvious over the combination of Focsaneanu, Lucent,and Jonas.

The Board found that claims 91 and 104 were not an-

ticipated by Focsaneanu. It agreed with Cisco thatFocsaneanu discloses a multiplexer, but neverthelessfound Focsaneanu does not disclose switching networkswithout interrupting an active communication, as re-

quired by claims 91 and 104. J.A. 25 (The one embodi-ment of Foscaneanu [sic] that clearly talks about change-

over while a call is transpiring discloses that ongoing callis terminated.); see alsoJ.A.11 (citing Focsaneanu col. 10

14

Because the Boards rejections are affirmed, thereis no need to determine whether the Board erred in de-clining to adopt Ciscos alternative proposed bases forrejection. See Ciscos Br. 34.



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ll. 3234) (stating a data service request initiated by theuser during a [Plain Old Telephone Service] call will

disconnect the phone and present a carrier to the usersmodem) (emphasis added)). The Board also affirmed the

Examiners decision that claim 91 would not have beenobvious over Focsaneanu, Lucent, and either Jonas or

Yoshida, and that claim 104 would not have been obvious

over Focsaneanu, Lucent, and Jonas.

On appeal, Cisco argues claims 91 and 104 are antici-pated by Focsaneanu, and would have been obvious over

Focsaneanu, Jonas (or Yoshida), and Lucent. With re-spect to anticipation, Cisco argues Focsaneanu discloses

changing-over between packet and line switching duringan active transmission, and that the Board lacked sub-

stantial evidence in finding otherwise. Cisco relies on theportion of Focsaneanus specification stating the access

module can dynamically select a different network fromthe one prescribed in the user profile, to carry the packet-ized data traffic. Ciscos Br. 40 (quoting Focsaneanu col.11 ll. 710); see also Focsaneanu col. 11 ll. 1516 (The

voice service [quality of service] is maintained by continu-ous monitoring of the transmission delay.). According to

Cisco, these portions of the specification show that the

change between the network originally selected for thevoice call and the different network on which the call isrouted is dynamically carried out within a single call and

does not require the user to initiate a new call set-upprocedure or to re-dial the number. Ciscos Br. 40. In

finding otherwise, Cisco maintains the Board improperlyfocused on a single embodiment in Focsaneanu, andignored other embodiments that meet the claim limitation

of changing over in real time.

The PTO and Teles respond that the Boards findings

on Focsaneanu are supported by substantial evidence.

According to the PTO, [n]one of the other disclosures inFocsaneanu cited by Cisco disclose[s] a change-overbetween modes during an active communication. PTO



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Br. 47. It maintains the dynamic selection occurs priorto placing a telephone call, and that the quality of service

disclosure simply permits the most appropriate channelto be selected after a call is made. Id.

This court need not resolve the parties arguments onanticipation; even if the Board was supported in findingFocsaneanu does not anticipate claims 91 and 104, itnevertheless erred in holding those claims are not invalid

as obvious. According to the Board, the one limitation ofunderlying dependent claims 84 and 100 that is not

disclosed in Focsaneanu is the change-over between lineand 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 ele-ment of those claims. In re Gleave, 560 F.3d 1331, 1334

(Fed. Cir. 2009). Dependent claims 91 and 104 add only amultiplexer to their respective independent claims, andCisco argued to the Board that [t]here is nothing novel

about a multiplexer. J.A. 6847.

The Board nonetheless reasoned that claims 91 and

104 would not have been obvious because [t]he multiplex-ing disclosed in Focsaneanu is not disclosed to support

changing-over between switching networks for datatransfers having real-time properties. J.A. 43. Claims91 and 104 do not require the multiplexer itself to sup-port changing-over between switching networks, howev-

er. The claimed multiplexer resides in the line switchingdevice and multiplex[es] data of several origin end

terminals over a single line connection through the line-switching network. 902 patent col. 21 ll. 3640; id.col.23 ll. 49 (emphases added). There is no requirementthat the multiplexer itself trigger or support changing-

over between line switching and packet switching. Ac-

cording to the claim language, the multiplexers operationis limited to the line-switching network. That independ-ent claims 84 and 100 recite changing-over between



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CERTIFICATE OF SERVICE

I certify that on this 18th day of April 2014 the foregoing PETITION FOR

REHEARING EN BANCis being served electronically on counsel for appellant

and appellee via the courts CM/ECF system.

Upon acceptance by the Court of the e-filed document, eighteen paper

copies will be filed with the Court, within the time provided in the Courts rules.

Two paper copies will also be mailed to counsel for appellant and appellee at the

time paper copies are sent to the Court.

April 18, 2014 /s/ Howard N. ShipleyHoward N. ShipleyFOLEY &LARDNER LLP3000 K Street, N.W., Suite 600Washington, D.C. 20007Tel: (202) 672-5300

Fax: (202) 672-5399


Documents

2014-04-18 (CAFC 12-1513) Sigram Schindler Rehearing Petition