The Software IP Report

‘Internet protocol’ different than ‘internet protocol’

Court of Appeals for the Federal Circuit affirms obviousness rejection of Patent Trial and Appeal Board based on the Board’s construction of ‘Internet protocol’ and ‘internet protocol.’ AIP Acquisitions LLC v. Cisco Systems, Inc., Opinion 2016-2371 (Fed. Cir. 2017) (non-precedential).

This case pertains to the Board’s construction of the phrases internet protocol and Internet protocol (also referred to herein as I/internet protocol).  The procedural posture of this case comprises Cisco instituting Inter Partes Review (IPR) and challenging AIP’s U.S. Patent 7,269,247 on obviousness grounds.  Among other things, the ‘247 patent claims a method for communication and a system for transmitting communications, in accordance with the representative claims reproduced below (emphasis added).  The Board held that the claims at issue in the IPR were unpatentable, and AIP appealed to the Federal Circuit.

1. A method for communication between two access devices via one or more networks, comprising the steps:

receiving a transmission in a first format through a first communication network from a first access device, the first format comprising a telecommunication protocol for establishing and transmitting voice communication for a phone call in one of a digital telephone network, an analog telephone network, and a cellular network;

performing a first conversion converting the transmission from the first format to a second format, the second format being internet protocol;

sending the converted transmission through a second communication network, the second communication network being the Internet, for reception by a second access device; and

performing a second conversion further converting the converted transmission from the second format to a further format suitable for the second access device, wherein the first access device and the second access device comprise telecommunication nodes, and said further format comprises said first format or another telecommunication protocol.

16. A system for transmitting communications from a calling party to a called party, comprising a communication node accessible by the calling party using a first network, said node being a telecommunication node configured for receiving a transmission in a first format from the calling party, converting the transmission received from the calling party from the first format to a second format, and transmitting the converted transmission through the Internet to a further node capable of connecting to the called party on a further network, wherein said first format comprises a telecommunication protocol for establishing and transmitting voice communications for phone calls in one of a digital telephone network, an analog telephone network, and a cellular network, and wherein said second format is Internet protocol.

The ‘247 patent purports to enable the Internet or other data network to function like a telecommunications 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.” 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.” 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 transmission [back] into voice and then connects the communication into a local call to the called party . . . .”

The Federal Circuit agreed with the Board’s construction of the phrases “internet protocol” and “Internet protocol”—namely, that these phrases are different from one another and more broad than asserted by AIP.  The Board construed the phrase “internet protocol” to be a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices on different networks.  And the phrase “Internet protocol” was construed to be a specific set of rules, procedures, or conventions relating to the format and timing of data transmission between two devices over the Internet. Consequently, the Board rejected AIP’s argument that the phrases internet protocol and Internet protocol were identical, and that a skilled artisan would read the I/internet protocol to mean the IP of TCP/IP.**

More particularly, with regard to the intrinsic record, the Federal Circuit Board found no explicit definition of the phrases in the written description, nor any support therein that clarified the phrases’ ordinary and customary meanings. The Board used extrinsic evidence (inter alia, a prior art IEEE journal article and a technical dictionary) to support the finding that neither the phrase ‘Internet protocol’ nor ‘internet protocol’ should be limited to a specific protocol (i.e., neither supported AIP’s asserted only the specific IP standard of the TCP/IP).  And the Federal Circuit held that the Board’s determination was supported by substantial evidence.  Consequently, in light of the broad constructions of I/internet protocol, the prior art submitted by Cisco in the IPR rendered the claims obvious, and the Federal Circuit affirmed.

Lessons for Practice

This case represents another example of why a patentee, when drafting claims, must assess the ambiguity of the claim terminology and ensure that the written specification provides appropriate support for key terms and phrases.  Certainly one consideration is that any undefined term may be left to the courts to define.  In my practice, I advocate drafting patent applications with multiple layers of support for the recited claims.  Thus, I evaluate whether claim terminology in the original claim set—as well as claim terms which may be used only by way of amendment—are equally unambiguous and clear.

Another take-away from this case is that proper punctuation and consistent use of terminology matters.  As this case originated in Israel, it occurs to me that a professional translation may have been provided by a foreign associate, wherein the translator used Internet protocol and internet protocol arbitrarily and/or interchangeably, and that, prior to filing, these minor typographical differences were not amended for consistency (unfortunately, leading to a costly result).

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