united states patent and trademark office before …filed: march 22, 2011 : issued: april 1, 2014 :...

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

In Re: U.S. Patent 8,687,640 : Attorney Docket No. 066303.0617

Inventor: Michael A. Lyons et al. :

Filed: March 22, 2011 :

Issued: April 1, 2014 : IPR No. Unassigned

Assignee: Metaswitch Networks Ltd.

Title: Controlling Communication Sessions

Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia 22313-1450

Submitted Electronically via the Patent Review Processing System

PETITION FOR INTER PARTES REVIEW OF CLAIMS 2-5, 8-10, 14-18, and 22-24 OF U.S. PATENT NO. 8,687,640 UNDER 35 U.S.C. §§ 311-319 and

37 C.F.R. §§ 42.100 ET SEQ.

Petition for Inter Partes Review of Claims 2-5, 8-10, 14-18, and 22-24 of U.S. Patent No. 8,687,640

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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES AND FEES ......................................................... 2

III. GROUNDS FOR STANDING ........................................................................ 4

IV. OVERVIEW OF THE ’640 PATENT ............................................................ 5

A. Summary of the Claimed Subject Matter .............................................. 5

B. Prosecution History of the ’640 Patent ............................................... 11

V. CLAIM CONSTRUCTION .......................................................................... 12

VI. SUMMARY OF PRIOR ART ....................................................................... 13

A. Ejzak ’270 Disclosed Media Bypass of Media Gateways by use of an SDP Extension Field .................................................................. 13

B. The SBC References Disclosed Session Border Controllers That Unify Signaling and Media Communication Functions Into a Single Device ............................................................................ 17

VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 19

VIII. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE .............................................................. 20

A. A person of ordinary skill in the art would have been motivated to combine Ejzak ’270 with any one or more of the SBC References ........................................................................................... 20

B. Ground 1: Claims 2-5, 8-10, 14-18, and 22-24 are Obvious Under 35 U.S.C. § 103 over Ejzak ’270 in view of Intel .................... 26

1. Claim 1 ...................................................................................... 26

2. Claims 2, 3 and 15 (media connectivity settings) ..................... 37

3. Claims 4 and 5 (ensuing device data) ....................................... 41

4. Claims 8-10 (bypass mode data) ............................................... 46


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5. Claim 14 (response messages) .................................................. 51

6. Claims 16-18 and 22-23 (limitations on devices) ..................... 55

7. Claim 24 (voice calls) ............................................................... 58

C. Ground 2: Claims 2-5, 8-10, 14-18, and 22-24 are Obvious Under 35 U.S.C. § 103 over Ejzak ’270 in View of Cisco ................. 58

IX. CONCLUSION .............................................................................................. 60


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LIST OF EXHIBITS1

1101 U.S. Patent No. 8,687,640 to Michael A. Lyons et al. (“the ’640 Patent”)

1102 Prosecution History of the ’640 Patent

1103 U.S. Patent Application Publication No. 2009/0010270 by Ejzak (“Ejzak ’270”)

1104 Declaration of James R. Bress

1105 Curriculum Vitae of James R. Bress

1106 Affidavit of Chris Butler

1107 Exhibit A to Affidavit of Chris Butler (including Exhibits 1108, 1109, and 1111-1117)

1108 Webtorials, “Cisco Briefings” (January 9, 2010), https://web.archive.org/web/20100109114426/http:/www.webtorials.c

1 In this Petition, references to Exhibit 1101 correspond to the column and line

number found within the document itself, rather than the page indicated by the

exhibit label. References to Exhibits 1102, 1105-1109, 1111-1118, and 1120-1132

correspond to the page indicated by the exhibit label. References to Exhibits

1103,1104, and 1119 correspond to the paragraph number found within the

document itself, rather than the page indicated by the exhibit label. References to

Exhibit 1110 correspond to the page number found within the document itself,

rather than the page indicated by the exhibit label.


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om/content/featured/cisco/ (also included in Exhibit 1107)

1109 Cisco “White Papers” (May 20, 2010), http://web.archive.org/web/20100520042945/http:/www.cisco.com/en/US/products/ps9343/prod_white_papers_list.html (also included in Exhibit 1107)

1110 Cisco Systems, Inc., Cisco Unified Border Element (SP Edition) on Cisco ASR 1000 Series (2009) (“Cisco”)

1111 Intel Corporation, Delivering Secure IP-Based Services (2005) (“Intel”) (also included in Exhibit 1107)

1112 Internet Engineering Task Force, Requirements from Session Initiation Protocol Session Border Control (SBC) Deployments (April 2010) (“RFC 5853”) (also included in Exhibit 1107)

1113 Internet Engineering Task Force, SDP: Session Description Protocol (April 1998) (“RFC 2327”) (also included in Exhibit 1107)

1114 Internet Engineering Task Force, SIP: Session Initiation Protocol (June 2002) (“RFC 3261”) (also included in Exhibit 1107)

1115 Internet Engineering Task Force, An Offer/Answer Model with the Session Description Protocol (June 2002) (“RFC 3264”) (also included in Exhibit 1107)

1116 Internet Engineering Task Force, SDP: Session Description Protocol (July 2006) (“RFC 4566”) (also included in Exhibit 1107)

1117 Internet Engineering Task Force, “Internet-Drafts Database Index” (February 3, 2010), https://web.archive.org/web/20100203050641/http:/datatracker.ietf.org/drafts/ind/E/ (also included in Exhibit 1107)

1118 3GPP TS 29.079 v.1.1.0 (2011-02), Optimal Media Routeing within the IP Multimedia Subsystem (2010) (“3GPP TS 29.079”)

1119 U.S. Patent Application Publication No. 2010/0098093 by Ejzak (“Ejzak ’093”)


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1120 Internet Engineering Task Force Internet-Draft, Extension to the Session Description Protocol for Bypass of Border Gateways, (December 17, 2008) (“IETF Draft”)

1121 About the IETF (May 11, 2015), https://www.ietf.org/about.

1122 Mission Statement (May 11, 2015), http://www.ietf.org/about/mission/html.

1123 Request for Comments (RFC) (May 11, 2015), http://www.ietf.org/rfc.html.

1124 Claim Limitation Numbering of the ’640 Patent

1125 Comparison of Claims 1 and 28 of the ’640 Patent

1126 Comparison of Computer Program Product Claims of the ’640 Patent

1127 Complaint in case 2:14-CV-744, filed July 7, 2014 in the Eastern District of Texas (“Complaint”)

1128 About IP Fabrics (May 13, 2015), http://www.ipfabrics.com/about-ip-fabrics/index.html.

1129 Webtorials.com (May 13, 2015), http://www.webtorials.com/content/index.html.

1130 Internet Engineering Task Force, Representing Trunk Groups in tel/sip Uniform Resource Identifiers (URIs) (June 2007) (“RFC 4904”)

1131 Internet Engineering Task Force, Address Allocation for Private Internets (February 1996) (“RFC 1918”)

1132 3GPP TS 29.079 Specification Detail (May 26, 2015), http://www.3gpp.org/DynaReport/29079.htm.


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I. INTRODUCTION

Genband US LLC and Genband Management Services Corp. (“GENBAND”

or “Petitioner”) request inter partes review (“IPR”) under 35 U.S.C. §§ 311–319

and 37 C.F.R. § 42.100 et seq. of Claims 2-5, 8-10, 14-18, and 22-24 of U.S.

Patent No. 8,687,640 (“the ’640 Patent”) to Lyons et al., titled “Controlling

Communication Sessions.” See Ex. 1101.

The ’640 Patent relates to a method for bypassing media gateways in a

telecommunications network including two endpoint devices (such as voice-over-

IP telephones) and one or more media gateways (e.g., included as one function of a

session border controller). See Ex. 1101, Abstract. The method occurs during the

setup of a communication session over the telephone communications network. Id.

The method involves including (within the Session Description Protocol (SDP)

information in a Session Initiation Protocol (SIP) message) information regarding

preceding media gateways in the media path, which an ensuing media gateway

may use to determine whether any preceding media gateways may be bypassed in

the media path. Id. at Abstract; 4:50-57; Ex. 1104 at ¶¶ 59-64, 122-126.

Media bypass using SIP and SDP, however, was already well-known in the

prior art. SIP and SDP signaling standards were well established before the ’640

Patent was filed. Ex. 1104 at ¶¶ 37-42, 81, 122-123. Moreover, U.S. Publ. No.

2009/0010270 to Ejzak (“Ejzak ’270”) taught a method for bypass of media


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gateways based on preceding border gateway information included in a “traversed

realm” SDP extension attribute. Ex. 1103 at Abstract; ¶ 0055; Ex. 1104 at ¶¶ 103-

106, and 127. Several other prior art references teach similar SIP/SDP-based

media bypass, including: the 3GPP TS 29.079 standard for“Optimal Media

Routeing;” U.S. Publ. No. 2010/0098093 to Ejzak; and R. Ejzak’s IETF Internet-

Draft published December 17, 2008, “Extension to the Session Description

Protocol for Bypass of Border Gateways.” See Ex. 1104 at ¶¶ 100, 127, 138; Exs.

1118-1120.

II. MANDATORY NOTICES AND FEES

Real Parties in Interest: The Petitioners are Genband US LLC and Genband

Management Services Corp., which are wholly-owned subsidiaries of Genband

Holdings Company. Genband International Holding Company is also a wholly-

owned subsidiary of Genband Holdings Company. Certain affiliates of JPMorgan

Chase & Co., JPMorgan Chase Bank, N.A., and OEP Capital Advisors, L.P. own

interests in Genband Holdings Company.2 Each of the parties identified in this

2 These affiliates include AN Holdings, Inc.; OEP II Partners Co-Invest, L.P.; OEP

III Co-Investors, L.P.; OEP GB Holdings; One Equity Partners III, L.P.; OEP II

Co-Investors, L.P.; One Equity Partners II, L.P.; J.P. Morgan Partners (BHCA),

L.P.; J.P. Morgan Partners Global Investors, L.P.; J.P. Morgan Partners Global


3

section is a real party in interest.

Related Matters: The ’640 Patent is currently involved in a pending lawsuit,

Metaswitch Networks Ltd. v. GENBAND US LLC et al., No. 2:14-CV-744 (E.D.

Tex.) (“the Genband Lawsuit”). Ex. 1127. In addition, Petitioner is also filing a

concurrent petition requesting inter partes review of Claims 1, 6-7, 11-13, 19-21,

and 25-31 of the ’640 Patent.

Lead & Back-Up Counsel: Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a),

Petitioner designates the following: Lead Counsel is Chad C. Walters (Reg. No.

48,022) of Baker Botts L.L.P.; Back-up Counsel are Barton E. Showalter (Reg. No.

38,302), Nick Schuneman (Reg. No. 62,088), and Brian W. Oaks (Reg. No.

44,981) of Baker Botts L.L.P.

Service Information: Service information is as follows: Baker Botts L.L.P.,

2001 Ross Avenue, Suite 600, Dallas, Texas 75201; Tel. (214) 953-6511; Fax

(214) 661-4511. Petitioner consents to service by electronic mail at:

[email protected], [email protected],

Investors A, L.P.; J.P. Morgan Partners Global Investors (Cayman), L.P.; J.P.

Morgan Partners Global Investors (Cayman) II, L.P.; J.P. Morgan Partners Global

Investors (Selldown), L.P.; and J.P. Morgan Partners Global Investors (Selldown)

II, L.P.


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[email protected], [email protected], and

[email protected].

A Power of Attorney is filed concurrently herewith under 37 C.F.R. § 42.10(b).

Fees: Under 37 C.F.R. § 42.103(a), the Office is authorized to charge the fee

set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 02-0384, as well as any

additional fees that might be due in connection with this Petition.

III. GROUNDS FOR STANDING

Petitioner certifies under 37 C.F.R. § 42.104(a) that the ’640 Patent is

available for IPR and that Petitioner is not barred or estopped from requesting IPR

of any claim of the ’640 Patent on the grounds identified. Petitioner requests IPR

of Claims 2-5, 8-10, 14-18, and 22-24 of the ’640 Patent and requests that each

claim be cancelled as unpatentable pursuant to 35 U.S.C. § 311(b) on these

grounds:

Ground 1: Claims 2-5, 8-10, 14-18, and 22-24 under § 103(a) over Ejzak

’270 and Intel

Ground 2: Claims 2-5, 8-10, 14-18, and 22-24 under § 103(a) over Ejzak

’270 and Cisco

As described below in Section VI.B, each reference qualifies as prior art under pre-

AIA 35 U.S.C. § 102 relative to the ’640 Patent. Reasons why the challenged

claims are unpatentable appear in the analysis below and are supported by the


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Bress Declaration (Ex. 1104).

IV. OVERVIEW OF THE ’640 PATENT

A. Summary of the Claimed Subject Matter

Claims 2-5, 8-10, 14-18, and 22-24 of the ’640 Patent relate generally to

media bypass for a media gateway in a telecommunications network. See, e.g., Ex.

1101, Abstract; Fig. 1 and description. Ex. 1104 at ¶ 64. As shown in Figure 1

below, the telecommunications network includes two endpoint devices 100, 112

(e.g., voice-over-Internet Protocol or “VoIP” telephones) and multiple media

gateways (e.g., session border controllers or “SBCs” 102, 108). Id. at 8:33-38 and

Abstract. Signaling information and media information may be transferred

between endpoint devices 100 and 112 through the media gateways 102, 108. Id.

at 8:54-61.

Endpoint devices 100, 112 and media gateways 102, 108 collectively form a

signaling path (for the transmission of signaling information) and a media path (for

the transmission of media information). Id. at Abstract; 8:54-58. The ’640 Patent


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describes a method in which one or more media gateways may be bypassed in (i.e.,

removed from) the media path, while remaining in the signaling path. Id. at 11:24-

29. An exemplary method disclosed in the ’640 Patent employs a Session

Description Protocol (SDP) field and extension field to retain information about

preceding media gateways. Id. at 4:50-57. The information regarding preceding

media gateways may be altered by media gateways during set-up of a media

communications session to enable bypassing one or more preceding media

gateways. Id. at 13:47-14:12; 15:35-39. See generally Ex. 1104 at ¶ 65.

The claimed method is carried out by media gateways 102 and 108 when

setting up a communication session, such as a VoIP telephony session, between

endpoint devices 100 and 112. The ’640 Patent specification discloses using the

well-known Session Initiation Protocol (SIP) to establish communication between

endpoints. Ex. 1101 at 1:26-46. A SIP session is initiated when a first endpoint

device 100 sends a SIP Invite message to a second endpoint device 112, which is

edited and forwarded along the signaling path by the media gateways (e.g., SBCs

102 and 108). Id. at 13:29-14:64. The SIP Invite message eventually reaches the

second endpoint device, which responds by transmitting a SIP response message

(such as a “200 OK” message) back through the signaling path to the first endpoint

device. Id. at 14:65-15:34. The SIP messages include SDP data, including the IP

address and connectivity data of the device that transmitted the SIP message. Id. at


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4:50-57; 13:29-39. The SDP data identifies, for the device receiving the SIP Invite

message, the preceding device to which it should communicate media. Id. at 4:40-

57; 13:40-46. See generally Ex. 1104 at ¶¶ 66-68.

The ’640 Patent alleges that in the prior art SIP Invite / SDP offer message

processing each media gateway in the signaling path would replace the preceding

device’s SDP data with its own before forwarding the SIP Invite message to the

next device. Ex. 1101 at 9:7-48; Fig. 2. Thus, allegedly, each prior art media

gateway had access to SDP information about only the device immediately

preceding it in the signaling path. This is illustrated in annotated Fig. 2 below,

which shows the alterations to the SDP data made by devices in the signaling path.


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For example, SBC 102 receives SIP Invite message 2a from endpoint 100

containing SDP data for endpoint 100. Before forwarding SIP Invite message 2b to

SBC 2 (via SIP Registrar 114), SBC 1 replaces the SDP data for Phone 1 (i.e.,

endpoint 100) with the SDP data for SBC 1. This process continues through the

signaling path, with each SBC device sending a SIP Invite message to the next

device in the signaling path, including SDP data with an address associated with

the sending SBC device, for the transmittal of media data during the

communications session. After the terminating endpoint device (Phone 2) receives

SIP Invite message 2d from SBC 2, Phone 2 sends SIP response message 2e,


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including its own address for the transmittal of media data included in the SDP

information to SBC 2. This processing of the SIP response message continues

back through the signaling path, with each device sending a SIP response message

identifying an address associated with itself for the transmittal of media data

during the communications session. Id. at 9:7-10:29. As a result, each device will

communicate media to its immediately adjacent devices. In other words, according

to the ’640 Patent, the prior art media path included all devices in the signaling

path (Phone 1, SBC 1, SBC 2, and Phone 2). Id. See Ex. 1104 at ¶¶ 69-71.

To allow media bypass, the ’640 Patent suggests retaining SDP information

regarding preceding devices, including the preceding devices’ connectivity data, in

an SDP extension field of the forwarded SIP Invite message. Ex. 1101 at 4:43-57;

14:1-22. The preceding device connectivity data indicates a media connectivity

setting that describes the parts, domains or regions of the telecommunications

network to which the preceding device has media connectivity. Id. at 11:17-37.

An ensuing media gateway can examine preceding device connectivity data

contained in the SDP extension field to determine whether it (or another device)

can communicate media directly with a compatible preceding device. Id. at

Abstract; Claim 1; 14:36-41. The ensuing media gateway may then bypass itself

and/or any devices located between itself and the compatible preceding device by:

(1) “compar[ing] the media connectivity settings of the next ensuing device in the


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signaling path . . . with those of previous device(s) in the signaling path in order to

identify the ‘best device’ entry for media bypass purposes”; (2) rewriting the SDP

data in the request setup message with an address associated with the best device

identified in step (1); and (3) removing the intermediate devices’ connectivity data

from the SDP extension field. Id. at 22:48-23:7. See generally Ex. 1104 at ¶ 72.

Figure 3 of the ’640 Patent illustrates an example of media bypass. Ex. 1101

at 14:45-52. SBC 1 receives SIP Invite message 3a from Phone 1 (in which Phone

1’s offered address for transmittal of media data is included in the SDP data) and,

in response, SBC 1 creates SIP Invite message 3b (in which the media connectivity

settings for SBC 1 are inserted in the SDP extension field and the media

connectivity settings associated with preceding device Phone 1 are inserted in the

SDP extension field) and transmits it to SBC 2. Id. at 13:29-14:12. Upon

receiving SIP Invite message 3b, SBC 2 examines the SDP extension information

and determines that Phone 1 can connect directly to Phone 2. Id. at 14:23-52.

SBC 2 thus creates a new SIP Invite message 3d (which includes an address for

Phone 1 in the SDP data and omits preceding device information from the SDP

extension field), and forwards it to Phone 2. Id. at 14:53-64; 22:48-23:7. Thus,

SIP Invite message 3d tells Phone 2 to communicate media directly to Phone 1. Id.

Phone 2 responds with a SIP response message, which is transmitted back through

the signaling path. Id. at 14:65-15:4. In this case, however, the SIP response


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messages all include the address for Phone 2 as the SDP data, which tells Phone 1

to communicate media data directly to Phone 2. Id. at 15:9-39. The media path

will thus include only Phone 1 and Phone 2, bypassing SBC 1 and SBC 2 (shown

by media path 300). Id. at 15:35-39. See Ex. 1104 at ¶¶ 73-76.

B. Prosecution History of the ’640 Patent

The application for the ’640 Patent was filed on March 22, 2011. See Ex.

1101. The Examiner issued only two office actions during prosecution of the ’640

Patent, each time rejecting all claims. See generally Ex. 1102. In response,


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applicants made limited amendments and argued that their claims were patentable

over the cited art. Id. A notice of allowance was then mailed on November 14,

2013 (Ex. 1102 at p. 16), and the ’640 Patent issued on April 1, 2014 (Ex. 1101).

Importantly, the Examiner did not consider any of the art relied upon in this

Petition (including the IETF SIP and SDP standards documents). Only three

references—all patents—are cited on the face of the ’640 Patent. Ex. 1101.

Applicants did not file an IDS. See generally Ex. 1102.

V. CLAIM CONSTRUCTION

A claim in an IPR proceeding is given its “broadest reasonable construction

in light of the specification.” See 37 C.F.R. § 42.100(b). Thus, the words of the

claim are given their plain meaning unless inconsistent with the specification. In

re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).

The phrase “media connectivity setting” as used in Claims 1, 2, 4, 15 and 22

should be construed as “information describing one or more parts, domains or

regions of a telecommunications network to which a device has media

connectivity.” This construction is the broadest reasonable construction in view of

the intrinsic record. See Ex. 1104 at ¶¶ 0078-80. For example, the ’640 Patent

specification states that “[a] media gateway has one or more media connectivity

settings including one or more parts of telecommunications network 1 via which a

respective device is able to transmit and receive media data. A device will


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typically not have access to all parts of telecommunications network 1 so media

connectivity settings for the device describes the parts, domains or regions of

telecommunications network 1 to which the device does have media connectivity.”

Ex. 1101 at 11:30-37 (emphasis added); see also id. at 11:38-48 (“media

connectivity settings may include . . . any other part of telecommunications

network 1 to which a device (endpoint device or media gateway) is able to connect

to transmit and receive media data.”) (emphasis added). Therefore, under the

broadest reasonable interpretation, the construction proposed above is proper. See

Ex. 1104 at ¶¶ 0078-80.

Petitioner does not believe any other terms require construction. However,

any remaining terms that are construed should also be given their “broadest

reasonable construction in light of the specification.” See 37 C.F.R. § 42.100(b).

VI. SUMMARY OF PRIOR ART

The ’640 Patent was filed on March 22, 2011 and does not claim priority to

any earlier application. See Ex. 1101. Therefore, the earliest possible priority date

of the ’640 Patent is March 22, 2011.

A. Ejzak ’270 Disclosed Media Bypass of Media Gateways by use of an SDP Extension Field

U.S. Patent No. 8,520,687 to Ejzak, entitled “Method and Apparatus for

Internet Protocol Multimedia Bearer Path Optimization Through a Succession of

Border Gateways,” was filed on July 6, 2007, published January 8, 2009 as U.S.


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Patent Application Pub. No. 2009/0010270 (“Ejzak ’270”), and issued August 27,

2013. Ex. 1103. Thus, Ejzak ’270 qualifies as prior art to the ’640 Patent under 35

U.S.C. § 102(b).

Ejzak ’270 discloses a method for bypassing border gateways (“BGs”) in an

Internet Multimedia Subsystem (“IMS”) network. Ex. 1103 at Abstract; ¶ 0037.

The method is described in application to a SIP-based network in which two VoIP

telephones (137 and 139 in Figure 1 of Ejzak ’270, below) may communicate via a

signaling path and a media path. Id. at ¶ 0003; Fig. 1. SIP signaling is transmitted

between the VoIP telephones via user agent (“UA”) endpoints UA 101 and UA

131 and application layer gateways (“ALGs”) 103, 109, 115, and 121 over the

signaling path, while media information is transmitted between the telephones via

the UA endpoints and BGs 105, 111, 117, and 123, and optionally via residential

gateway (“RG”) 129, over the media path. Id. at ¶ 0042. Each BG is controlled

by a corresponding ALG. Id. See generally Ex. 1104 at ¶¶ 82-88.


15

Each border gateway has access to at least two IP realms (such as R1, R2,

etc.), one on its inbound side and another on its outbound side. Ex. 1103 at ¶ 0042;

see also Ex. 1104 at ¶ 89. A border gateway in an IP realm can connect to every

other border gateway in the same IP realm. Ex. 1103 at ¶ 0043; Ex. 1104 at ¶ 89.

Thus, a border gateway’s IP realm information specifies to which other devices the

border gateway can connect. Ex. 1104 at ¶¶ 84-89. If a border gateway has access

to another IP realm on the path, it is possible to create a shorter media path by

bypassing unnecessary border gateways. Ex. 1103 at ¶ 0044; Ex. 1104 at ¶ 90.

Ejzak ’270 discloses a method for media bypass in which ALGs in the

signaling path receive and transmit SDP offer messages (i.e., messages requesting

the initiation of a communication session), based on IETF RFC 4566, which is the

SDP standard. Ex. 1103 at ¶ 0053; Ex. 1104 at ¶ 91. Each SDP offer message of

Ejzak ’270 includes at least two types of information. First, “connection and port

data” for a preceding device (usually the device sending the SDP offer), including

the device’s address and IP realm information, is included in the SDP “media line.”

See Ex. 1103 at ¶ 0075; Ex. 1104 at ¶ 104. This media line information identifies,

for the ALG receiving the SDP offer, to which device its BG should communicate

media data. Ex. 1104 at ¶ 104. Second, the addresses and IP realms corresponding

to preceding border gateways can be included in an SDP extension attribute known

as “traversed-realm.” Ex. 1103 at ¶¶ 0055, 0122-131; Ex. 1104 at ¶ 91.


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After receiving an SDP offer, an ALG determines whether a preceding BG’s

outgoing IP realm (listed in the “traversed-realm” extension field of the SDP offer

received by the ALG) matches the IP realm of either the ALG’s associated BG or a

BG between the traversed realm instance on the list and the ALG’s associated BG.

Ex. 1103 at ¶¶ 0070-71; Ex. 1104 at ¶¶ 91, 101-104. If there is no match, the ALG

will not bypass any BGs. The ALG inserts the media connection and port

information for its associated BG in the SDP media line for the SDP offer, updates

the “traversed-realm” list of preceding device connection and port information, and

forwards the offer. Id. at ¶ 0079; Ex. 1104 at ¶¶ 91-99.

If there is a match between a preceding BG’s IP realm and the next IP realm

after the ALG, however, the ALG can bypass one or more BGs. To do so, the

ALG enters the connection and port information for the matching preceding BG

into the SDP media line, deletes from the SDP extension every traversed-realm

instance after the matching preceding BG, and forwards the SDP offer. Id. at ¶

0073; Ex. 1104 at ¶¶ 93-95. To illustrate, Ejzak ’270 discloses an example in

which ALG3 determines that UA1 and BG4 of Figure 1 both connect to the same

IP realm (UA1 on its outgoing side, and BG4 on its incoming side), and thus

border gateways BG1, BG2, and BG3 can be bypassed:

An example of Case 1, using FIG. 1 as reference, is that upon

receiving an SDP offer from the direction of UA1, ALG3 determines


17

that R4 125 and R1 107 are instances of the same IP realm. ALG3

substitutes the connection and port information from UA1 into the

outgoing SDP offer and deletes the traversed-realm instances for R2

113 and R3 119 from the SDP before forwarding. After the end-to-

end SDP offer/answer transaction is completed, the media path will

bypass BG1 105, BG2 111, and BG3 117.

Id. at ¶ 0074 (describing “SDP Offer Case 1: Bypass Controlled BG and Prior

BGs”); see also id. at ¶ 0077 (describing “SDP Offer Case 3: Bypass Prior BGs”).

The example above is just one of the four SDP Offer Cases discussed in Ejzak

’270, which relate to the four possible outcomes for each ALG: (1) bypass the

controlled BG and prior BGs; (2) bypass only the controlled BG; (3) bypass only

prior BGs; and (4) bypass no BGs. See id. at ¶¶ 0073-80 and Ex. 1104 at ¶¶ 92-98.

In sum, Ejzak ’270 disclosed a method for media gateway bypass in which

media gateways receive and transmit SDP offers including an SDP extension field

that contains media connectivity and address information about preceding border

gateways, where the SDP extension field entry for a preceding gateway can be

used to enable bypass of one or more media gateways in the media path. Ex. 1104

at ¶ 99. Thus, as explained in more detail below, Ejzak ’270 discloses the same

method claimed in the ’640 Patent. Id. at ¶ 91.

B. The SBC References Disclosed Session Border Controllers That Unify Signaling and Media Communication Functions Into a Single Device


18

The white papers entitled “Delivering Secure IP-Based Services” (“Intel”)

and “Cisco Unified Border Element (SP Edition) on Cisco ASR 1000 Series”

(“Cisco”) (collectively, “the SBC References”) each teach that a single gateway,

such as an SBC, can conduct SIP and SDP signaling and media communication.

Intel was published by Intel in the United States in June, 2005. Ex. 1111 at

p. 8. Intel indicates that it was copyrighted in 2005. Ex. 1111 at p. 8. As

supported by the testimony of Christopher Butler, Office Manager at the Internet

Archive, and archived web pages from the Internet Archive’s Wayback Machine,

Intel was publicly available on the Internet at least as early as March 22, 2006 via

the website www.ipfabrics.com. See Ex. 1106; see also Ex. 1107 at pp. 5-13.

Having been published on the IP Fabrics website, Intel was publicly available and

could be easily located by individuals interested and ordinarily skilled in the art of

telecommunications. Ex. 1104 at ¶ 117. Thus, Intel qualifies as prior art to the

’640 Patent under 35 U.S.C. § 102(b). Intel discloses an SBC that “intercept[s]

and process[es] calls on a VoIP network, allowing a single element to monitor not

only the signaling traffic but also the media traffic.” Ex. 1111 at p. 2; see also

Figure 1. See generally Ex. 1104 at ¶¶ 115-118.

Cisco was published by Cisco in the United States in May, 2009. Ex. 1110

at p. 13. Thus, Cisco qualifies as prior art to the ’640 Patent under 35 U.S.C.

§ 102(b). As supported by the testimony of Christopher Butler, Office Manager at


19

the Internet Archive, and archived web pages from the Internet Archive’s Wayback

Machine, Cisco was available publicly at least as early as January 9, 2010 via the

website www.webtorials.com. See Ex. 1106; see also Ex. 1107 at pp. 2-3. The

Internet Archive Wayback Machine also includes archived web pages showing that

Cisco was available publicly at least as early as May 20, 2010 via the website

www.cisco.com. Ex. 1106; see also Ex. 1107 at p. 4. Having been published on

these websites, Cisco was publicly available and could be easily located by

individuals interested and ordinarily skilled in the art of telecommunications. Ex.

1104 at ¶ 121. Cisco discloses a session border controller (SBC). Ex. 1110 at p. 1.

In particular, Cisco teaches that a single, physical SBC may be deployed in a

“unified SBC model” to perform the functions of both a “signal path border

element (SBE) and data path border element (DBE).” Id. at p. 2. The SBE logical

element, like the ALG of Ejzak ’270, handles signaling communications such as

SIP signaling, and the DBE logical element, like the BG of Ejzak ’270, handles

media communications. Id. See generally Ex. 1104 at ¶¶ 119-121.

VII. LEVEL OF ORDINARY SKILL IN THE ART

As of the priority date of the ’640 Patent of March 22, 2011, a person of

ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s

Degree in electrical engineering, computer science, or a related scientific field, and

at least two years of work or research experience in the telecommunications


20

industry, which could include telecommunications device design,

telecommunications software development, or related areas. Alternatively, a

POSITA in the relevant timeframe would have been someone with an advanced

degree, such as a Master’s Degree, in electrical engineering, computer science, or a

related scientific field, focusing on telecommunications technology. Alternatively,

a POSITA in the relevant timeframe could have been someone lacking formal

technical education but having experience in the telecommunications industry that

would be equivalent to such education. See Ex. 1104 at ¶ 128.

VIII. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE

Pursuant to 37 C.F.R. § 42.104(b)(4)-(5), Claims 2-5, 8-10, 14-18, and 22-

24 are unpatentable for the reasons set forth in detail below.

A. A person of ordinary skill in the art would have been motivated to combine Ejzak ’270 with any one or more of the SBC References

A POSITA would have been motivated to combine Ejzak ’270 with any one

or more of the SBC References. Ejzak ’270 disclosed a method for media path

optimization through a succession of border gateways (BGs) in a network, where

each BG is controlled by a corresponding application layer gateway (ALG) that

conducts SIP and SDP signaling. The ’640 Patent does not specify that the

signaling path processing and media path processing need be implemented in one

device; rather, “[e]ach media gateway 102, 108 could for example take the form of


21

an SBC, a computer server that includes hardware and/or software implementing a

SIP proxy server, a Softswitch, and other forms.” Ex. 1101 at 8:61-65.

It was well-known in the art that both the signaling and media functions of

the ALG and the BG, respectively, could be implemented in a single media

gateway. See Ex. 1104 at ¶¶ 130-132. Ejzak ’270 states that “in this example the

method takes place in the ALG, however, it should be appreciated that this method

may take place in a variety of hardware and/or software configurations.” Ex. 1103

at ¶ 0068. Furthermore, Ejzak ’270 discloses:

These functions may be performed by some or all of the network

elements in conjunction or separate from one another and may be

implemented using a variety of hardware configuration and/or

software techniques.

Ex. 1103 at ¶ 0132. Thus, it would have been obvious in view of Ejzak ’270 alone

that the ALG and BG could be implemented in a single physical device, such as a

media gateway or SBC. See Ex. 1104 at ¶¶ 133, 135.

Moreover, each of the SBC references taught that signaling and media

functions could be performed by a single media gateway, such as an SBC. See,

e.g, Ex. 1111 at p. 2; Ex. 1110 at p. 2; Ex. 1104 at ¶ 134. Thus, it would have been

obvious to implement the ALG and BG functionality disclosed in Ejzak ’270 in a

single device, such as an SBC.

It would have been obvious to practice the method taught by Ejzak ’270


22

using a single device integrating both the signaling and media functions, as taught

in each of the SBC References, because the proposed modification involves:

• merely incorporating the signaling function (ALG) and media

function (BG) of Ejzak ’270 into a single piece of hardware, such as an SBC as

disclosed in the SBC References. See, e.g., MPEP § 2144.V (“the use of a one

piece construction instead of the structure disclosed in [the prior art] would be

merely a matter of obvious engineering choice”) (citing In re Larson, 340 F.2d

965, 968, 144 USPQ 347, 349 (CCPA 1965)). Furthermore, “[t]he mere

aggregation of a number of old . . . elements which, in the aggregation perform or

produce no new or different function or operation than that theretofore performed

or produced by them, is not patentable invention.” Chore-Time Equip., Inc. v.

Cumberland Corp., No. CIV-1-80-137, 1982 WL 51040, at *5 (E.D. Tenn. Sept.

14, 1982) aff’d, 713 F.2d 774 (Fed. Cir. 1983) (citing Great Atl. & Pac. Tea Co. v.

Supermarket Equip. Corp., 340 U.S. 147, 151 (1950)).

• an “obvious to try” solution (Ejzak ’270’s method involves an ALG

for signaling, and a BG for media communications. It would have been obvious to

unify these two functions into a single physical device.) See Ex. 1104 at ¶ 136.

Moreover, it would have been obvious to apply the teachings of the SBC

References to the method of Ejzak ’270 for the following additional reasons:

• Ejzak ’270 does not explicitly teach that the ALG and BG are separate


23

hardware and explicitly contemplates that each BG is controlled by a

corresponding ALG. See, e.g., Ex. 1104 at ¶ 137; Ex. 1103 at ¶¶ 0043, 0070-71. It

would have been obvious to one of ordinary skill in the art, reading Ejzak ’270

alone or in combination with one or more of the SBC References, that each

ALG/BG pair of Ejzak ’270 could be implemented as different logical functions of

a single physical device. See Ex. 1104 at ¶ 137.

• Ejzak ’270 explicitly teaches that the disclosed method for media path

optimization could occur in a number of hardware or software configurations. Ex.

1103 at ¶ 0068 (“it should be appreciated that this method may take place in a

variety of hardware and/or software configurations.”); see also id. at ¶ 0132

(“These functions may be performed by some or all of the network elements in

conjunction or separate from one another and may be implemented using a variety

of hardware configuration and/or software techniques”); Ex. 1104 at ¶ 137. Thus,

Ejzak ’270 alone provides the teaching, suggestion, or motivation that would have

led one of ordinary skill to implement the invention using a single physical piece

of hardware such as the SBC disclosed in the SBC References. See 1104 at ¶ 137.

• The 3GPP TS 29.079, v1.1.0 standard provides an explicit motivation

to conduct media bypass with a single gateway device having both signaling and

media functionality. 3GPP TS 29.079, v1.1.0 was publicly available February 22,

2011. Ex. 1132 at p. 2; Ex.1101 at ¶ 138. 3GPP TS 29.079 describes a standard


24

for Optimal Media Routeing (OMR), which is a method for media gateway bypass

using SIP signaling and preceding device information carried in an SDP extension

field. See Ex. 1118 at pp. 6, 14 (sections 1 and 6.1.4); see also Ex. 1104 at ¶ 138.

In particular, 3GPP TS 29.079 teaches that a signaling entity (such as an ALG)

determines whether to bypass a “controlled media resource,” which may be merely

a “media function” of the same signaling entity. See Ex. 1118 at p. 6 (section 1);

see also Ex. 1104 at ¶ 138. Thus, 3GPP TS 29.079 contains an explicit teaching of

media bypass performed by a single entity performing both media and signaling

functionality. See Ex. 1104 at ¶ 138.

• Ejzak ’270 and the SBC References are from the same and/or

analogous art, relate to the same field of endeavor, and describe the same or similar

technology. Ex. 1104 at ¶ 139. For example, Ejzak ’270 and the SBC References

discuss SIP signaling and SIP-based networks. See, e.g., Ex. 1103 at ¶¶ 0002-4;

Ex. 1111 at p. 4; Ex. 1110 at pp. 1-2. Specifically, Ejzak ’270 and the SBC

References relate to technology for voice-over-IP (VoIP) telephony. See, e.g., Ex.

1103 at ¶ 0003; Ex. 1111 at pp. 1-2; Ex. 1110 at p. 1. Ejzak ’270 and the SBC

References discuss media bypass / media path optimization in such networks. See,

e.g., Ex. 1103 at ¶ 0002; Ex. 1111 at Figure 1; Ex. 1110 at p. 11. Ejzak ’270 and at

least Cisco explicitly refer to the RFC 3261 and RFC 3264 standards, which relate

to SIP and SDP signaling. See, e.g., Ex. 1103 at ¶ 0045; Ex. 1110 at p. 11.


25

• The combination of Ejzak ’270 and any of the SBC References merely

requires applying a known device (a single device having media and signaling

functions) to a known method (Ejzak ’270’s method for media path optimization,

including bypass of media gateways) ready for improvement to yield predictable

results (optimization of the media path through media bypass). See KSR Int’l Co.

v. Teleflex, Inc., 550 U.S. 398, 417 (2007). See also Ex. 1104 at ¶ 139.

• There would have been a reasonable expectation that a single device,

such as an SBC, could be successfully implemented in the SIP network of Ejzak

’270, given that it was well-known to integrate signaling and media functions into

a single device. See Ex. 1104 at ¶ 140.

• Using a single physical device to provide the ALG and BG functions

of Ejzak ’270 would have been obvious to try because it was one of only two

possible configurations: the ALG and BG functions may be provided by either (1)

different hardware or (2) a single piece of hardware. See KSR, 550 U.S. at 421

(“When there is a design need or market pressure to solve a problem and there are

a finite number of identified, predictable solutions, a person of ordinary skill has

good reason to pursue the known options within his or her technical grasp.”) See

also Ex. 1104 at ¶ 141. In view of Ejzak ’270’s teaching that media path

optimization “may take place in a variety of hardware and/or software

configurations” (Ex. 1103 at ¶ 0068), it would have been obvious to a POSITA that


26

either of the two possible configurations could be used. See Ex. 1104 at ¶ 141.

B. Ground 1: Claims 2-5, 8-10, 14-18, and 22-24 are Obvious Under 35 U.S.C. § 103 over Ejzak ’270 in view of Intel

As described below, Claims 2-5, 8-10, 14-18, and 22-24 would have been

obvious in light of Ejzak ’270 in combination with Intel, and it would have been

obvious to combine these references. Petitioner thus submits that Claims 2-5, 8-10,

14-18, and 22-24 are unpatentable as obvious in view of Ejzak ’270 and Intel.

1. Claim 1

The challenged claims all depend from Claim 1, which relates to a method

of enabling media bypass for a media gateway in a telecommunications network.

More particularly, a plurality of media gateways provide a signaling path via which

signaling information is transferred for setup of a communication session between

two endpoints, and provide a media path via which media data is transferred

between the endpoints during the communication session.

Claim 1 requires a media gateway to receive an inbound communication

session setup request message and transmit an outbound communication session

setup request message, which outbound message includes preceding device

connectivity data.

The preceding device connectivity data of Claim 1 indicates at least one

media connectivity setting for the preceding device. The media connectivity


27

setting identifies one or more other devices to which the preceding device is

configured to be connectable in a media path, to enable bypass of the media

gateway in the media path. As discussed above, the media connectivity setting

“describes the parts, domains or regions of telecommunications network 1 to which

the device does have media connectivity.” Id. at 11:30-37 and Claim 15.

Ejzak ’270 discloses all features of Claim 1 of the ’640 Patent including

Limitation [1a], “[a] method of enabling media bypass for a media gateway in a

telecommunications network.” Ex. 1104 at ¶¶ 53-58, 143-147. For example, Ejzak

’270 discloses a method that allows “Session Initiation Protocol (SIP) based

networks to bypass one or more border gateways that would otherwise be included

in a media path.” Ex. 1103 at ¶ 0002. Ejzak ’270 also discloses that a call

configuration between IP endpoints includes SIP signaling communicated between

two endpoints via at least one application layer gateway (ALG), and Real time

Transport Protocol (RTP) multimedia flow communicated between the user agent

endpoints via the border gateways. Ex. 1103 at ¶ 0042; see also Ex. 1104 at ¶¶

143-147.

Ejzak ’270 discloses Limitation [1b] “receiving, at said media gateway, an

inbound communication session setup request message…” Ex. 1104 at ¶¶ 143,

148-151. Specifically, Ejzak ’270 discloses an ALG receiving an SDP offer, which

is a message requesting setup of a communications session. Ex. 1103 at Abstract;


28

¶¶ 0057, 0069; see also Ex. 1104 at ¶¶ 143, 148-151. Ejzak ’270 also discloses

Limitation [1c], “transmitting, from said media gateway, an outbound

communication session setup request message…” Ex. 1104 at ¶¶ 143, 152-155.

After the ALG receives and modifies the SDP offer as detailed above, the ALG

may then forward the modified SDP offer. Ex. 1103 at ¶¶ 0073, 0075, 0077-79;

Fig. 2, box 221 and Ex. 1104 at ¶¶ 143, 152-155.

Ejzak ’270 discloses Limitation [1d], “including preceding device

connectivity data in said outbound communication session setup request

message…” Ex. 1104 at ¶¶ 143, 156-164. Specifically, Ejzak ’270 discloses

including IP realm information about prior BGs in the traversed-realm SDP

extension of an outbound SDP offer. Id. at ¶ 157. After receiving an SDP offer,

the ALG of Ejzak ’270 determines whether any IP realm instance in the traversed-

realm extension field of the received SDP offer matches the IP realm on the

outgoing side (“the next IP realm associated with the connection information in the

forwarded SDP offer”) of the ALG. Ex. 1103 at ¶¶ 0070-71. In other words, the

ALG determines whether any preceding BG can connect to the next IP realm in the

path. If there is no match, the ALG will not bypass any BGs. Id. at ¶¶ 0070-71,

0078-80. The ALG modifies the SDP offer by adding a new traversed-realm

instance including IP realm information corresponding to a preceding BG’s

connection and port information that was included in the media line in the


29

incoming SDP offer. Id. at ¶ 0079. An IP realm “identif[ies] when one network

entity is reachable from another via a fully interconnected common IP address

space” and thus indicates connectivity. Id. at ¶ 0057; see also id. at ¶¶ 0042-44.

Ex. 1104 at ¶¶ 84-89, 157. If there is a match, the ALG may replace “the

connection and port information for the media line in the SDP offer with the

connection and port information from the side of its BG directed toward the

recipient of the forwarded SDP offer.” Ex. 1103 at ¶¶ 0077-78 and Ex. 1104 at ¶¶

158-163.

Ejzak ’270 discloses Limitation [1e], “said preceding device connectivity

data indicating at least one media connectivity setting for at least one preceding

device . . . the at least one media connectivity setting identifying one or more other

devices to which the preceding device is configured to be connectable in said

media path.” Ex. 1104 at ¶¶ 143, 165-169. As discussed above, the ALG can

modify an SDP offer to include IP realm information in the “traversed-realm” SDP

extension field including a realm identifier, media connection information, port

data, and other information about the previously traversed IP realms. Id. at ¶¶

0055, 0122-131. The IP realm information of Ejzak ’270 therefore indicates a

“media connectivity setting,” because it describes one or more parts, domains or

regions of a telecommunications network to which a preceding BG (i.e., a BG in a

previously traversed IP realms) has media connectivity. Id. and Ex. 1104 at ¶¶


30

166-169.

Ejzak ’270 discloses Limitation [1f], “...to enable bypass of said media

gateway in said media path if an ensuing device in said outbound signaling path

determines that such bypass should be conducted.” Ex. 1104 at ¶¶ 143, 170-179.

If an ensuing ALG determines, based on preceding device IP realm information

included in the traversed-realm extension of the forwarded SDP offer (see

limitations [1c]-[1e] above), that the IP realm of a preceding device matches the IP

realm on the outgoing side of the ensuing ALG, the ensuing ALG can bypass one

or more border gateways (including the BG associated with the ALG that

forwarded the SDP offer). Ex. 1103 at ¶¶ 0070-79; see also Ex. 1104 at ¶¶ 143,

170-179. This is disclosed in the example of “SDP Offer Case 3: Bypass Prior

BGs,” in which, based on preceding IP realm information received in an SDP offer

from a preceding ALG, ALG4 determines to bypass BG2 and BG3. Ex. 1103 at ¶¶

0077-78 and Ex. 1104 at ¶¶ 143, 170-179.

The application of Ejzak ’270 to Claim 1 can also be understood in terms of

Ejzak ’270’s “SDP Offer” Cases. Ex. 1103 at ¶¶ 0073-80; Ex. 1104 at ¶¶ 143, 158-

163, 174-176. Specifically, an ALG applying either SDP Offer Case 3 or 4 (in

which the ALG does not bypass its controlled BG) performs all limitations of

Claim 1, and enables an ensuing ALG applying either SDP Offer Case 1 or 3 (in

which an ensuing ALG bypasses a prior BG) to bypass the ALG’s controlled BG.


31

To the extent that Claim 1 is found to require that a single media gateway

perform both signaling and media functions, it would have been obvious to one of

ordinary skill in the art that the ALG and BG functions of Ejzak ’270 perform the

same functions as the ’640 Patent media gateway and could be performed by a

single device. See Ex. 1104 at ¶¶ 180-185. Ejzak ’270 teaches that each BG is

controlled by its corresponding ALG and that the disclosed media bypass method

may take place in a variety of hardware and/or software configurations. See Ex.

1103 at ¶¶ 0042, 0068, 0132-133. Furthermore, the ’640 Patent teaches that the

media gateway recited in Claim 1 could be an SBC. See, e.g., Ex. 1101 at Claim

23 (“wherein the media gateway comprises a session border controller”). It was

well-known in the prior art to combine the signaling and media functions into a

single media gateway, such as an SBC. See Ex. 1104 at ¶ 184. Intel discloses an

SBC having both media and signaling capabilities. Ex. 1111 at p. 2 (teaching a

“session border controller . . . created to intercept and process calls on a VoIP

network, allowing a single element to monitor not only the signaling traffic but

also the media traffic,” and having media bypass capability). Thus, one of

ordinary skill in the art would look to the well-known prior art techniques, such as

those disclosed by Intel, to implement the method of Claim 1 of the ’640 Patent in

a single media gateway such as a session border controller. Ex. 1104 at ¶¶ 183-

185.


32

Claims Ejzak ’270 and Intel

[1a] A method of enabling media bypass for a media gateway in a telecommunications network which includes a plurality of media gateways via which a signaling path for transfer of signaling information for setup of a communication session between endpoint devices can be established and via which a media path for transfer of media data between said endpoint devices during said communication session can be established, said method comprising:

See, e.g., Ex. 1103 at Abstract, “A method for identifying alternate end-to-end media paths through internet protocol realms using substitute session description protocol parameters is disclosed. The method includes receiving an session description protocol offer, including a list of previously traversed through internet protocol realms. The method continues with determining the next internet protocol realm for a media path based on unspecified signaling criteria. Finally, the method includes that if the next internet protocol realm to be traversed through is on the list of previously traversed through internet protocol realms, bypassing at least one border gateway associated with the current and previously traversed through internet protocol realms.” (emphasis added)

See also Ex. 1103 at ¶ 0003, “A SIP based network call has a call signaling path and a bearer path. The call signaling path handles call control data which is used to set up, connect and process the call. The bearer path is the voice data connection over which a conversation takes place, and is also referred to as a multimedia session path or media path in this disclosure.”

See also Ex. 1103 at ¶ 0042, “FIG. 1 shows a typical call configuration between IP endpoints UA1 101 and UA2 131. SIP signaling goes between the UAs via at least one ALG and a variety of other SIP servers, which are not


33


shown.”

See also Ex. 1103 at ¶ 0043, “An Application Layer Gateway (ALG) controls each border gateway to allocate new IP addresses and transport protocol ports as necessary for each SDP media line and updates the SDP connection and port information in each forwarded SDP offer and SDP answer to effectively insert the border gateway into the end-to-end multimedia session path.”

See also Ex. 1103 at ¶ 0068, “Generally, in this example, the method takes place in the ALG, however, it should be appreciated that this method may take place in a variety of hardware and/or software configurations.”

See also Ex. 1103 at Abstract; ¶¶ 0001; 0002; 0003-04; 0007; 0020; Fig. 1 and corresponding description; 0036; 0037; 0042-43; 0068-80.

See Ex. 1111 at 2, “Session border controllers were created to intercept and process calls on a VoIP network, allowing a single element to monitor not only the signaling traffic but also the media traffic … the session border controller has the ability to intelligently route media – for example, directly between endpoints.”

See also Ex. 1111 at Figure 1.

[1b] receiving, at said media gateway, an inbound communication session setup request message requesting setup of a communication session between an originating endpoint device and a terminating endpoint device in said

See, e.g., Ex. 1103 at ¶ 0069, “When an ALG receives an SDP offer from a UA or another ALG (at step 201)…” (emphasis added)

See also Ex. 1103 at ¶ 0045, “RFC 3264 describes the SDP offer/answer model, which enables SIP networks to establish end-to-end media paths for multimedia sessions. This disclosure describes an SDP extension attribute and some extensions to ALG procedures for forwarding SDP offers and SDP answers.” (emphasis added)

See also Ex. 1103 at Claim 1, “receiving a message including a list of previously traversed through internet


34


telecommunications network, said inbound communication session setup request message being transmitted along an inbound signaling path to said media gateway;

protocol realms.” (emphasis added)

See also Ex. 1103 at Fig. 2 and corresponding description, including box 201:

See also Ex. 1103 at ¶ 0042, “FIG. 1 shows a typical call configuration between IP endpoints UA1 101 and UA2 131. SIP signaling goes between the UAs via at least one ALG and a variety of other SIP servers, which are not shown.”

See also Ex. 1103 at Abstract; Fig. 1; ¶¶ 0003; 0008; 0010; 0020; 0051; 0055; 0068-80; Claim 1.

[1c] transmitting, from said media gateway, an outbound communication session setup request message in response to receiving said inbound communication session setup message, said outbound communication session setup request message being transmitted along an outbound signaling path from said media

See, e.g., Ex. 1103 at ¶ 0079, “The ALG may also add a traversed-realm instance for the IP realm associated with the connection and port information for the media line in the forwarded SDP offer, and forward the modified SDP offer (at steps 219, 221).” (emphasis added)

See also Ex. 1103 at Fig. 2 and corresponding description, including box 221 (“Forward modified SDP offer”).

See also Ex. 1103 at ¶ 0042, “FIG. 1 shows a typical call configuration between IP endpoints UA1 101 and UA2 131. SIP signaling goes between the UAs via at least one ALG and a variety of other SIP servers, which are not shown.”

See also Ex. 1103 at Abstract; Fig. 1 and corresponding description; ¶¶ 0020; 0069-80.


35


gateway; and [1d] including preceding device connectivity data in said outbound communication session setup request message,

See, e.g., Ex. 1103 at ¶ 0079, “The ALG may also add a traversed-realm instance for the IP realm associated with the connection and port information for the media line in the forwarded SDP offer....” (emphasis added)

See also Ex. 1103 at ¶ 0055, “This disclosure defines an SDP extension attribute ‘traversed-realm’ that provides connection and port information for a prior IP realm traversed through on the signaling path. Each instance of traversed-realm has an instance number, realm identifier, connection and port data, and optional cryptographic signature computed using an algorithm private to each IP realm so as to ensure the integrity of the traversed-realm data.” (emphasis added)

See also Ex. 1103 at ¶ 0004, “In IMS and other SIP based networks, border gateways are deployed between IP realms defined by each network. Within an IP realm every IP endpoint is reachable from every other IP endpoint using a common IP address space.”

See also Ex. 1103 at ¶ 0057 (“An IP realm has two purposes: … 2) to identify when one network entity is reachable from another via a fully interconnected common IP address space.”); (emphasis added)

See also Ex. 1103 at Abstract; Figs. 1-2 (including boxes 215 and 217) and corresponding description; ¶¶ 0008; 0010; 0020-21; 0070-72; 0042-46; 0053-55; 0069-80; 0122-130; Claim 1.

[1e] said preceding device connectivity data indicating at least one media connectivity setting for at least one preceding device which is located

See, e.g., Ex. 1103 at ¶ 0055, “This disclosure defines an SDP extension attribute ‘traversed-realm’ that provides connection and port information for a prior IP realm traversed through on the signaling path. Each instance of traversed-realm has an instance number, realm identifier, connection and port data, and optional cryptographic signature computed using an algorithm private to each IP realm so as to ensure the integrity of the


36


before said media gateway in said inbound signaling path, the at least one media connectivity setting identifying one or more other devices to which the preceding device is configured to be connectable in said media path,

traversed-realm data.” (emphasis added)

See also Ex. 1103 at ¶ 0057 (“An IP realm has two purposes: … 2) to identify when one network entity is reachable from another via a fully interconnected common IP address space.”); (emphasis added)

See also Ex. 1103 at ¶ 0071, “The ALG then determines if a BG under its control has access both to the next IP realm associated with the connection information in the forwarded SDP offer and to an IP realm associated with a prior traversed-realm instance in the received SDP offer (at step 211).” (emphasis added)

See also Ex. 1103 at ¶ 0004, “In IMS and other SIP based networks, border gateways are deployed between IP realms defined by each network. Within an IP realm every IP endpoint is reachable from every other IP endpoint using a common IP address space.”

See also Ex. 1103 at Abstract; Fig. 1; ¶¶ 0020; 0042-44; 0070-72; 0073; 0075; 0077; 0079; 0122-131.

[1f] to enable bypass of said media gateway in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted.

See, e.g., Ex. 1103 at Fig. 2 and corresponding description, including box 215:

See also Ex. 1103 at ¶ 0071, “The ALG then determines if a BG under its control has access both to the next IP realm associated with the connection information in the


37


forwarded SDP offer and to an IP realm associated with a prior traversed-realm instance in the received SDP offer (at step 211). In this case the ALG can bypass one or more BGs, including the one it controls. The ALG should select the earliest IP realm accessible from the BG and determine the number of BGs that can be bypassed by substituting the connection and port information from this earliest IP realm into the forwarded SDP offer (at step 213).” (emphasis added)

See also Ex. 1103 at Abstract; Fig. 1 and corresponding description; ¶¶ 0020; 0070-79.

Thus, Ejzak ’270 in combination with Intel disclose each and every

limitation of Claim 1. In particular, Ejzak ’270 discloses a method of media

bypass in a telecommunications network including a plurality of media gateways

(ALG for signaling / BG for media), in which a media gateway (ALG/BG)

receives an inbound communication session setup request message (received SDP

offer), transmits an outbound communication session setup request message

(forwarded SDP offer), includes in the outbound message connectivity data (IP

realm information in the traversed-realm extension) for a preceding device (a

preceding ALG/BG), indicating a media connectivity setting (information about to

which devices the preceding BG has connectivity) for the preceding device, which

enables bypass of the media gateway in the media path if an ensuing device (a later

ALG/BG) determines that such bypass should be conducted.

2. Claims 2, 3 and 15 (media connectivity settings)


38

Claims 2, 3, and 15 recite additional limitations relating to preceding device

connectivity data and/or media connectivity settings included in the outbound

communication session setup request. Claim 2 differs from Claim 1 in that it

further requires that the preceding device connectivity data in the outbound

communication session setup request message indicates at least one media

connectivity setting for each of a plurality of preceding devices. See Ex. 1101 at

Claim 2 (“said preceding device connectivity data indicates at least one media

connectivity setting for each of a plurality of preceding devices”).

Ejzak ’270 discloses all features of Claim 2. For example, Ejzak ’270

teaches an example of SDP Offer Case 3 in which ALG4 receives an SDP offer

from ALG3, including traversed-realm instances for R3 and R4, which correspond

to preceding devices BG2 and BG3, respectively. Id. at ¶¶ 0077-78. See Ex. 1104

at ¶¶ 187-195.


2. The method according to claim 1, wherein said preceding device connectivity data indicates at least one media connectivity setting for each of a plurality of preceding devices which are located

See, e.g., discussion of Claim 1, above.

See also Ex. 1103 at ¶ 0078, “An example of case 3, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG4 121 determines that BG4 123 has access to R2 113. ALG4 121 substitutes its BG connection and port information into the SDP offer, uses the connection and port information from the traversed-realm instance for R2 113 as the remote connection and port information for the UA1 101 side of BG4 123, deletes the traversed-realm instances for R3 119 and R4 125 from the SDP offer, and adds the


39


before said media gateway in said inbound signaling path, the connectivity setting for each respective preceding device identifying one or more other devices to which said respective preceding device is configured to be connectable in said media path, to enable bypass of said media gateway and at least one other preceding device in said media path if an ensuing device in said outbound signaling path determines that such bypass should be conducted.

traversed-realm instance for R5 127 before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG2 111 and BG3 123.”

See also Ex. 1103 at ¶ 0008, “In one aspect of the disclosure, the method includes receiving a session description protocol offer, including a list of previously traversed through internet protocol realms”

See also Ex. 1103 at ¶ 0020, “In accordance with yet another aspect of the present disclosure, a system for identifying end-to-end media paths and internet protocol multimedia subsystems comprises a list of instances including information identifying internet protocol realms that a session description protocol message has traversed through in order to establish a call...” (emphasis added)

See also Ex. 1103 at Figs. 1-2 and corresponding description.

See also Ex. 1103 at ¶¶ 0008; 0021; 0055; 0057; 0066; 0070-75; 0076-78; 0079; 0122-130.

Ejzak ’270 discloses Claim 3, which depends from Claim 1 and further

requires that the “inbound communication session setup request message

comprises at least some of [the] connectivity data.” As described above in relation

to Claim 2, Ejzak ’270 discloses an ALG receiving an SDP offer having

“connection and port information for a prior IP realm.” See Ex. 1103 at ¶ 0055;

see also id. at ¶¶ 0020, 0077-78, 0123-130; Ex. 1104 at ¶¶ 196-198.


40


3. The method according to claim 1, wherein said inbound communication session setup request message comprises at least some of said connectivity data.

See also Ex. 1103 at ¶ 0055, “This disclosure defines an SDP extension attribute ‘traversed-realm’ that provides connection and port information for a prior IP realm traversed through on the signaling path. Each instance of traversed-realm has an instance number, realm identifier, connection and port data, and optional cryptographic signature computed using an algorithm private to each IP realm so as to ensure the integrity of the traversed-realm data.” (emphasis added)

See, e.g., Ex. 1103 at ¶ 0020, “In accordance with yet another aspect of the present disclosure, a system for identifying end-to-end media paths and internet protocol multimedia subsystems comprises a list of instances including information identifying internet protocol realms that a session description protocol message has traversed through in order to establish a call, an application level gateway configured to receive a session description protocol offer having media path connection information and port information,” (emphasis added)

See also discussion of Claim 1, above.

See also Ex. 1103 at Fig. 2; ¶¶ 0007; 0008; 0020; 0021; 0073-80; 0122-130.

Claim 15 depends from Claim 1 and further requires that “the media

connectivity settings comprise one or more of a domain identifier, a network

identifier, and a gateway identifier.” Ejzak ’270 discloses all features of Claim 15.

For example, Ejzak ’270 discloses that the received SDP offer includes the

“<realm>” identifier as part of the traversed-realm extension. This <realm>

identifier identifies at least a domain and, in some special cases, a network. See

Ex. 1103 at ¶ 0126 (“Each realm also defines a protection domain” and “A public


41

IP address reachable from the open internet may be associated with the special

realm “IN”); Ex. 1104 at ¶¶ 199-203. The SDP offer also includes an IP

connection address, such as an address identifying a BG corresponding to a

traversed realm. See Ex. 1103 at ¶¶ 0014, 0128; Ex. 1104 at ¶¶ 199-203.

3. Claims 4 and 5 (ensuing device data)

Claim 4 depends from Claim 1, and further requires retrieving connectivity

data for an ensuing device—i.e., a device located after the media gateway in the

outbound signaling path. Ex. 1101 at Claim 4. The ensuing device connectivity

data indicates at least one media connectivity setting for the ensuing device and

identifies one or more other devices that the ensuing device is configured to be

connectable to in the media path. Id. Claim 4 further requires comparing the

preceding device connectivity data and the ensuing device connectivity data, and

determining from the comparison whether the media gateway may be bypassed.

Id.

Ejzak ’270 discloses “retrieving ensuing device connectivity data for an

ensuing device located after said media gateway,” as recited in Limitation [4a].

Ex. 1104 at ¶¶ 204-214. Specifically, Ejzak ’270 discloses that “[w]hen an ALG

receives an SDP offer from a UA or another ALG . . . it first determines the IP

realm for the next segment of the media path.” Ex. 1103 at ¶ 0069 (emphasis

added). The ALG may do this by “examining [a] list of instances for the next


42

internet protocol realm that the media path may traverse through.” Id. at ¶ 0027;

Ex. 1104 at ¶¶ 204, 210-211. Ejzak ’270 also discloses that “since the extension

does not incorporate end-to-end connectivity checks of the media path, it takes

advantage of accurate provisioning of the IP realms,” and that “IP realms may be

provisioned to correctly identify mutually reachable IP addresses.” Id. at ¶¶ 0048,

0066. See also Ex. 1104 at ¶¶ 206-209. Furthermore, Ejzak ’270 discloses “said

ensuing device connectivity data indicating at least one media connectivity setting

for said ensuing device, the connectivity setting identifying one or more other

devices to which said ensuing device is configured to be connectable in said media

path,” as recited in Limitation [4a]. As discussed in connection with Claim 1, IP

realm information identifies to which devices the ensuing border gateway is

configured to be connectable.

Ejzak ’270 further discloses “comparing said preceding device connectivity

data and said ensuing device connectivity data, and determining from said

comparison, whether said media gateway may be bypassed,” as recited in

Limitation [4b]. Ex. 1104 at ¶¶ 212-214. Specifically, Ejzak ’270 discloses that an

ALG may determine, based on a traversed-realm instance in the SDP extension of

a received SDP offer, that a preceding BG can connect to the next IP realm in the

path, and replace connection and port information in the media line in the SDP

offer with the connection and port information from the preceding BG to bypass


43

one or more gateways. Ex. 1103 at ¶¶ 0071-74 and ¶ 0077 (“In case 3, the ALG

determines that a BG under its control has access both to the next IP realm and to

an IP realm associated with a prior traversed-realm instance for a media line in the

received SDP offer”).


[4a]. The method according to claim 1, further comprising: retrieving ensuing device connectivity data for an ensuing device which is located after said media gateway in said outbound signaling path, said ensuing device connectivity data indicating at least one media connectivity setting for said ensuing device, the connectivity setting identifying one or more other devices to which said ensuing device is configured to be connectable in said media path; and

See, e.g., Ex. 1103 at ¶ 0069 (“When an ALG receives an SDP offer from a UA or another ALG (at step 201), it first determines the IP realm for the next segment of the media path (at step 203 and step 205).”). (emphasis added)

See also Ex. 1103 at ¶ 0027, “examining [a] list of instances for the next internet protocol realm that the media path may traverse through.” (emphasis added)

See also Ex. 1103 at ¶ 0073, “In case 1, the ALG determines that there exists a traversed-realm instance for a media line in the received SDP offer that does not correspond to the current IP realm for that media line but does match the IP realm to be used for the media line in the forwarded SDP offer.”


See also Ex. 1103 at Fig. 2 and corresponding description (e.g., box 205); ¶¶ 0020-25; 0027; 0042-44; 0048; 0057; 0066; 0069; 0070-79.

[4b] comparing said preceding device connectivity data

See, e.g., Ex. 1103 at ¶ 0071, “The ALG then determines if a BG under its control has access both to the next IP realm associated with the connection information in the


44


and said ensuing device connectivity data, and determining, from said comparison, whether said media gateway may be bypassed in said media path.

forwarded SDP offer and to an IP realm associated with a prior traversed-realm instance in the received SDP offer (at step 211). In this case the ALG can bypass one or more BGs, including the one it controls.” (emphasis added)

See also Ex. 1103 at ¶ 0077, “In case 3, the ALG determines that a BG under its control has access both to the next IP realm and to an IP realm associated with a prior traversed-realm instance for a media line in the received SDP offer.”

See also Ex. 1103 at ¶ 0020, “[I]f the next internet protocol realm that the media path may traverse through is on the list of instances of traversed through internet protocol realms, the media path connection information and port information is substituted to facilitate a border gateway bypass.”


See also Ex. 1103 at Fig. 2 and corresponding description (e.g., boxes 207 and 209); ¶¶ 0027; 0070-79.

Ejzak ’270 also discloses “ensuing device connectivity data is retrieved from

storage in said gateway,” the additional limitation of Claim 5. Ex. 1104 at ¶¶ 215-

220. As an initial matter, Ejzak ’270 teaches that the ALG includes memory. Ex.

1103 at ¶ 0082 (the ALG may “keep information about which of the four cases it

selected for handling of BG bypass” and “use[] this information in the processing

of the corresponding SDP answer”). It would have been obvious to a person of

ordinary skill in the art to keep the “information about which of the four cases it

selected for handling of BG bypass” in memory, and therefore it would also be


45

obvious to store other types of information in memory, such as provisioned

ensuing device connectivity data. Ex. 1104 at ¶¶ 217-218.

Furthermore, as described above in relation to Claim 4, Ejzak ’270 discloses

that the disclosed method “takes advantage of accurate provisioning of the IP

realms.” Ex. 1103 at ¶ 0048 (emphasis added); see also id. at ¶ 0066 (“IP realms

may be provisioned to correctly identify mutually reachable IP addresses.”).

Provisioning, as it relates to a media gateway, refers to the process of configuring

or entering information (such as connectivity data for devices on both sides of the

gateway) so that the media gateway functions properly. Ex. 1104 at ¶¶ 206-208,

217. A person of ordinary skill in the art would understand that in the process of

building a network, a media gateway would need to be provisioned, for example,

with the connectivity data for devices on both sides of the gateway. Id. at ¶ 209.

The provisioning information for the media gateway would necessarily be stored in

memory. Id. at ¶ 217. This is further supported by Ejzak ’270’s disclosure that

there are IP addresses “known” to the border gateways (Ex. 1103 at ¶ 0047), and

that a “list of instances which represents the internet protocol realms that a media

path may traverse through” may be “established” and “examined” (id. at ¶ 0027).

See also Ex. 1103 at Abstract; ¶¶ 0020, 0027, 0021-23, 0068-69, 0082, 0122-130,

0132. One of ordinary skill in the art would have understood that this information

could be stored in the ALG’s memory. Ex. 1104 at ¶ 217.


46

Moreover, Ejzak ’270 discloses that an ALG can “use the connection and

port information from the earliest traversed-realm instance accessible from the BG

as the remote connection and port information for the side of the BG directed

towards the source of the received SDP offer.” Ex. 1103 at ¶ 0077. The “remote

connection and port information” is stored by the ALG/BG as the information used

to send media packets in the terminating endpoint to originating endpoint direction

when the media session is eventually established. See Ex. 1104 at ¶ 219. From the

perspective of the controlled BG, the “remote connection and port” correspond to

an ensuing gateway where media packets will be sent. Id. The stored “remote

connection and port information” is therefore “ensuing device connectivity data []

retrieved from storage in said media gateway” as recited in Claim 5.

4. Claims 8-10 (bypass mode data)

Claim 8 depends from Claim 1, and Claims 9 and 10 depend from Claim 8.

Claims 8-10 generally relate to bypass mode data. For example, Claim 8 requires

that bypass mode data be retrieved for the media gateway. The bypass mode data

indicates a bypass mode setting for the media gateway. Claim 8 further requires

that the outbound communication session setup request message be configured in

dependence on the bypass mode setting.

Ejzak ’270 discloses retrieving bypass mode data as recited in Claim 8, in

the form of “local policy.” Ex. 1104 at ¶¶ 238-243. The ALG “use[s] local policy


47

to determine” whether to modify the information in the forwarded SDP offer. Ex.

1103 at Fig. 2, boxes 215, 217; ¶ 0072. The local policy indicates a bypass mode

setting, such as that the ALG should “select the case that bypasses the largest

number of BGs” or signal that it is unwilling to be bypassed. Id. at ¶ 0072.

Depending on local policy, the ALG may or may not decide to bypass the BG. Id.

Compare Ex. 1101 at Claim 8 (“retrieving bypass mode data for said media

gateway, said bypass mode data indicating a bypass mode setting for the media

gateway”). If the ALG decides to bypass its own BG, it edits the SDP offer

accordingly before forwarding. Ex. 1103 at ¶ 0071; Fig. 2, box 217. The ALG

may also signal that it is unwilling to be bypassed (consistent with the local policy)

by “removing all traversed-realm instances from the forwarded SDP offer.” Id. ¶

0072; Fig. 2, boxes 215, 217; ¶¶ 0070-72, 0122-131 and Ex. 1104 at ¶ 241.

Compare Ex. 1101 at Claim 8 (“configuring said outbound communication session

setup request message in dependence on said indicated bypass mode setting”).

Claim 9 depends from Claim 8 and further requires determining from the

bypass mode data that the media gateway may be bypassed in the media path, and

including the preceding device connectivity data in the outbound communication

session setup request message in response to that determination. See Ex. 1101 at

Claim 9. As described above, Ejzak ’270 discloses that, based on local policy, the

ALG may bypass its own BG or prior BGs. Ex. 1103 at ¶ 0072; Fig. 2, box 215


48

and Ex. 1104 at ¶¶ 244-247. Compare Ex. 1101 at Claim 9 (“determining from

said bypass mode data that said media gateway may be bypassed”). Ejzak ’270

further discloses that “[t]he ALG may replace the connection and port information

for the media line in the SDP offer with the connection and port information from

the earliest traversed-realm instance associated with the next IP realm.” Ex. 1103

at ¶ 0073. This is further disclosed in Ejzak ’270’s description of “SDP Offer Case

2: Bypass Controlled BG.” In that case, the ALG determines to bypass its BG, and

may include IP realm information corresponding to a preceding BG in a traversed-

realm instance of the forwarded SDP offer. Id. at ¶ 0075.


9. The method according to claim 8, further comprising determining from said bypass mode data that said media gateway may be bypassed in said media path, and including said preceding device connectivity data in said outbound communication session setup request message in response to said determination.

See, e.g., Ex. 1103 at ¶ 0072, “The ALG may then select one of the following four cases depending on applicability and local policy (at step 215). The most common local policy will be to select the case that bypasses the largest number of BGs.

1. Bypass the controlled BG and one or more prior BGs.

2. Bypass the controlled BG.

3. Bypass prior BGs.

4. Bypass no BGs. SDP Offer Case 1: Bypass Controlled BG and Prior BGs.”

See also Ex. 1103 at ¶¶ 0074-76, “SDP Offer Case 2: Bypass Controlled BG

“In case 2 (bypass the controlled BG), the ALG determines that the next IP realm is accessible from the current IP realm represented by the IP connection and port information for the media line in the received SDP offer. If there is a traversed-realm instance for the current


49


IP realm associated with the media line in the received SDP offer, the ALG may forward the received SDP offer without change. Otherwise the ALG may construct a new traversed-realm instance from the connection and port information for the media line in the incoming SDP offer and may add this traversed-realm instance to the SDP offer before forwarding (at steps 217-221).” (emphasis added)

See also Ex. 1103 at ¶¶ 0073-74 (discussing “Offer Case 1”).

See also discussion of Claims 1 and 8, above.

See also Ex. 1103 at Fig. 2 and corresponding description, boxes 215 and 217; ¶¶ 0064; 0070-72; 0072-76; 0122-131.

Claim 10 depends from Claim 8 and further requires determining from the

bypass mode data that the media gateway must be bypassed in the media path, and

including preceding device connectivity data in the outbound communication

session setup request message in response to the determination. See Ex. 1101 at

Claim 10. Claim 10 also requires including in the outbound communication

session setup request message an address associated with the preceding device as

an offered address for transmittal of media data during the communication session

and that the media path can bypass the media gateway. Id.

As described above, Ejzak ’270 discloses that local policy may influence the

actions of the ALG and, in certain circumstances, the “most common local policy

will be to select the case that bypasses the largest number of BGs.” Ex. 1103 at ¶


50

0072 and Ex. 1104 at ¶ 250. Compare Ex. 1101 at Claim 10 (“determining from

said bypass mode data that said media gateway must be bypassed”). And as

discussed in connection with Claim 9 above, Ejzak ’270 further discloses an ALG

bypassing one or more BGs and including IP realm port and connectivity data for a

preceding BG in the forwarded SDP offer. Ex. 1103 at ¶¶ 0071-73, 0075 and Ex.

1104 at ¶¶ 248-253. Compare Ex. 1101 at Claim 10 (“including said preceding

device connectivity data in said outbound communication session setup request

message in response to said determination”).

More particularly, Ejzak ’270, in reference to Fig. 1, discloses that “upon

receiving an SDP offer . . . ALG3 determines that” the next IP realm (R4 125) and

a preceding IP realm (R1 107) “are instances of the same IP realm.” Ex. 1103 at ¶

0074. Upon making this determination, “ALG3 substitutes the connection and port

information from UA1 into the outgoing SDP offer and deletes the traversed-realm

instances for R2 113 and R3 119 from the SDP before forwarding.” Id. Compare

Ex. 1101 at Claim 10 (“including in said outbound communication session setup

request message an address associated with said preceding device as an offered

address for transmittal of media data during said session”). Ejzak ’270 further

discloses that “[a]fter the end-to-end SDP offer/answer transaction is completed,

the media path will bypass BG1 105, BG2 111, and BG3 117.” Compare Ex. 1103

at ¶ 0074 and Ex. 1104 at ¶¶ 248-253. Compare Ex. 1101 at Claim 10 (“wherein


51

the media path for said communication session can bypass said media gateway”).


10. The method according to claim 8, further comprising determining from said bypass mode data that said media gateway must be bypassed in said media path, including said preceding device connectivity data in said outbound communication session setup request message in response to said determination, and including in said outbound communication session setup request message an address associated with said preceding device as an offered address for transmittal of media data during said session, wherein the media path for said communication session can bypass said media gateway.

See evidence cited for Claim 9, above.

See also Ex. 1103 at ¶ 0074, “An example of case 1, using FIG. 1 as reference, is that upon receiving an SDP offer from the direction of UA1, ALG3 determines that R4 125 and R1 107 are instances of the same IP realm. ALG3 substitutes the connection and port information from UA1 into the outgoing SDP offer and deletes the traversed-realm instances for R2 113 and R3 119 from the SDP before forwarding. After the end-to-end SDP offer/answer transaction is completed, the media path will bypass BG1 105, BG2 111, and BG3 117.”

See also discussion of Claims 1, 8, and 9 above.

See also Ex. 1103 at Fig. 2 and ¶¶ 0002; 0014-15; 0030; 0064; 0070-73; 0074-76; 0122-130.

5. Claim 14 (response messages)

Claim 14 depends from Claim 1 and requires receiving, at the media

gateway, a first communication session setup response message. Ex. 1101 at

Claim 14. The first communication session setup response message indicates that

the terminating endpoint device has agreed to conduct the communication session

with the originating endpoint. Id. Claim 14 further requires transmitting a second

communication session setup response message, including a bypass confirmation


52

parameter, to a device located in the inbound signaling path. Id. The bypass

confirmation parameter confirms to devices located in the inbound signaling path

that the media gateway has been bypassed in the media path. Id.

Ejzak ’270 discloses all features of Claim 14. Ex. 1104 at ¶¶ 281-295. For

example, Ejzak ’270 discloses an ALG “receiving an [sic] session description

protocol answer with a valid internet protocol address as connection information.”

Ex. 1103 at ¶ 0030 and Ex. 1104 at ¶¶ 281, 283. Compare Ex. 1101 at Claim [14a]

(“receiving, at said media gateway, a first communication session setup response

message”). The SDP answer is part of the SDP offer/answer model disclosed in

Ejzak ’270 for establishing a call between two endpoints. Ex. 1103 at ¶¶ 0002-3,

0050-51 and Ex. 1104 at ¶ 288. Compare Ex. 1101 at Claim [14a] (“indicating that

said terminating endpoint device has agreed to conduct said communication

session with said originating endpoint device”). Ejzak ’270 further discloses the

ALG revising and forwarding the SDP answer. Ex. 1103 at ¶ 0106 and Ex. 1104 at

¶¶ 287-291. Compare Ex. 1101 at Claim [14b] (“transmitting a second

communication session setup response message to a device located in the inbound

signaling path”). Ejzak ’270 further discloses that the ALG may insert an

“unspecified address” into the connection information for the media line in the

forwarded SDP answer. Ex. 1103 at ¶ 0083; see also id. at ¶ 0084; Ex. 1104 at ¶

292. For example, the ALG may “provide a valid IP address . . . when the IP


53

realm of the IP address matches the IP realm of the connection information for the

media line in the previously received SDP offer (at step 305). Otherwise the ALG

may include the unspecified address to indicate that the receiving ALG is to extract

the connection and port information from a traversed-realm instance in the SDP

answer, if one is present (at step 309).” Ex. 1103 at ¶ 0084.

Therefore, the ALG’s forwarded SDP answer includes a parameter for

confirming the BG controlled by the ALG sending the forwarded SDP offer

message has been bypassed, and the forwarded SDP answer is sent to the ensuing

ALG (i.e., “devices located in the inbound signaling path” of Claim 14). Ex. 1104

at ¶ 293. For example, in Sub-case (c) – Case-3, “since the ALG already bypassed

at least one prior BG in the SDP offer, but did not bypass its own BG when

processing the SDP offer, it will now signal the forwarded SDP answer to bypass

its own BG.” Ex. 1103 at ¶ 0105 (emphasis added). Id. at ¶¶ 0083-85, 0105-106,

0111 and Ex. 1104 at ¶ 294. Compare Ex. 1101 at Claim [14b] (“said second

communication session setup response message comprising a bypass confirmation

parameter confirming, to devices located in the inbound signaling path, that said

media gateway has been bypassed in the media path established for said

communication session”).


[14a]. The method See, e.g., Ex. 1103 at Fig. 3 and corresponding


54


according to claim 1, further comprising: receiving, at said media gateway, a first communication session setup response message indicating that said terminating endpoint device has agreed to conduct said communication session with said originating endpoint device; and

description (e.g., box 301, “Receive SDP answer”).

See also Ex. 1103 at ¶ 0030, “In accordance with another aspect of the present disclosure, the method includes receiving an session description protocol answer with a valid internet protocol address as connection information...”.


See also Ex. 1103 at ¶¶ 0002-3; 0050-51; 0090; 0101-102; 0106-107; Claims 1 and 11.

[14b] transmitting a second communication session setup response message to a device located in the inbound signaling path, said second communication session setup response message comprising a bypass confirmation parameter confirming, to devices located in the inbound signaling path, that said media gateway has been bypassed in the media path

See, e.g., Ex. 1103 at Fig. 3 and corresponding description (e.g., boxes 317 (“According to recalled case and applicable sub-case: if appropriate, modify connection information and/or visited IP realm instance data in forwarded IP answer[;] if appropriate, update border gateway connection information”) and 319 (“Forward modified SDP answer”)).

See also Ex. 1103 at ¶ 0083, “To help distinguish the additional sub-cases when processing the SDP answer, the ALG may insert into the connection information for


55


established for said communication session.

the media line in the forwarded SDP answer either (at step 305): 1) a valid IP address for the corresponding IP realm or 2) an unspecified address. The unspecified address for IPv4 is ‘0.0.0.0’ and for IPv6 is ‘0::0’.”

See also Ex. 1103 at ¶ 0084, “The ALG may provide a valid IP address in the connection information for the media line in a forwarded SDP answer when the IP realm of the IP address matches the IP realm of the connection information for the media line in the previously received SDP offer (at step 305). Otherwise the ALG may include the unspecified address to indicate that the receiving ALG is to extract the connection and port information from a traversed-realm instance in the SDP answer, if one is present (at step 309).”

See also Ex. 1103 at ¶ 0106, “In case 4, since the ALG did not bypass any BGs when processing the SDP offer, it will now signal the forwarded SDP answer to bypass its own BG. The ALG may replace the connection and port information for the media line in the SDP answer with the connection and port information from the traversed-realm instance for the media line in the received SDP answer, may delete the traversed-realm instance from the SDP answer, and may forward the modified SDP answer.”


See also Ex. 1103 at ¶¶ 0030; 0083-85, 0093; 0101-106; 0106-111; Claim 22.

6. Claims 16-18 and 22-23 (limitations on devices)

Claims 16-18 and 22-23 generally recite additional limitations further

defining the various components of Claim 1. For example, Claim 16 depends from

Claim 1 and requires that the preceding device be an originating endpoint device.

Ex. 1101 at Claim 16. Claim 17 requires the preceding device to be a media


56

gateway. Id. at Claim 17. And Claim 18 requires that the ensuing device be a

media gateway. Id. at Claim 18.

Ejzak ’270 discloses all features of Claims 16-18 of the ’640 Patent. Ex.

1104 at ¶¶ 296-301. For example, Ejzak ’270 discloses that “an ALG [e.g., ALG3]

receives an SDP offer from a UA or another ALG [e.g., ALG2].” Ex. 1103 at ¶

0069. The UAs are endpoint devices. Ex. 1103 at ¶ 0042. In the signaling path,

from the perspective of ALG3, the UA1 and ALG2 are preceding devices, from

which an SDP offer is received. Ex. 1103 at ¶¶ 0042, 0044, 0069 and Ex. 1104 at

¶¶ 299-300. Compare Ex. 1101 at Claim 16 (“preceding device comprises said

originating endpoint device”) and Claim 17 (“preceding device comprises a media

gateway”). From the perspective of ALG2, however, ALG3 is an ensuing device

to which an SDP offer is transmitted. See Ex. 1104 at ¶ 300; see also Ex. 1103 at ¶

0069 (“When an ALG receives an SDP offer from a UA or another ALG (at step

201), it first determines the IP realm for the next segment of the media path (at

steps 203 and 205. For example, in FIG. 1, if UA1 101 initiates an SDP offer

towards UA2 131, then the next IP realm for ALG1 103 is R2 113, the next IP

realm for ALG2 109 is R3 119, and the next IP realm for ALG4 121 is R5 127.”).

Ex. 1103 at ¶¶ 0003-4, 0036, 0042, 0072-80 and Ex. 1104 at ¶ 300. Compare Ex.

1101 at Claim 18 (“ensuing device comprises a media gateway”).

As discussed above, to the extent that a “media gateway,” as recited in


57

Claims 17 and 18, includes both signaling and media capability in a single device,

it would have been obvious to modify Ejzak ’270 to utilize a single device to

provide both capabilities, such as a session border controller as disclosed by Intel.

See Ex. 1104 at ¶ 301.

Claim 22 requires that a given media gateway include a plurality of input

and output communication trunks via which communication sessions can be

conducted. Id. at Claim 22. Each trunk is capable of having different associated

media connectivity settings. Claim 23 requires that the media gateway be a session

border controller. Id. at Claim 23.

Ejzak ’270, in combination with Intel, discloses all features of Claims 22 and

23. Ex. 1104 at ¶¶ 302-309. Ejzak ’270 discloses that the border gateways may

have “access to additional IP realms on the path; this is an opportunity to create a

shorter media path.” Ex. 1103 at ¶ 0004; see also Ex. 1103 at ¶¶ 0004, 0042, 0044;

Ex. 1104 at ¶ 305. One of ordinary skill in the art would recognize based on this

disclosure that the border gateways of Ejzak ’270 therefore have a plurality of

input and output trunks, and that each trunk would be capable of having different

associated media connectivity settings. See Ex. 1104 at ¶¶ 305-306. Furthermore,

as discussed above in Section VIII.A, it would have been obvious to combine

Ejzak ’270 with Intel, which discloses a session border controller. One of ordinary

skill in the art at the time would recognize that an SBC such as the one disclosed in


58

Intel would have multiple input/output trunks. Ex. 1104 at ¶¶ 306-309. Compare

Ex. 1111 and Ex. 1104 at ¶¶ 302-309 with Ex. 1101 at Claim 22 (“plurality of

input and output communication trunks via which communication sessions can be

conducted”) and Claim 23 (“said media gateway comprises a session border

controller”).

7. Claim 24 (voice calls)

Claim 24 requires that the communication session comprises a voice call.

Ejzak ’270 discloses establishing a call between two associated voice-over-IP

telephones. See Ex. 1103 at ¶ 0038 (“The system also includes two associated

VoIP telephones 137, 139. The VoIP telephones 137, 139 are in communication

with the IMS 135 which contains the above-referenced network elements.”); see

also id. at ¶¶ 0003, 0020, 0040; Fig. 1; Ex. 1104 at ¶¶ 310-311.

C. Ground 2: Claims 2-5, 8-10, 14-18, and 22-24 are Obvious Under 35 U.S.C. § 103 over Ejzak ’270 in View of Cisco

As shown in Section VIII.A above, it would be obvious to combine Ejzak

’270 and any of the SBC References, including Cisco. The application of Ejzak

’270 to the claims of the ’640 Patent is discussed in Section VIII.B above. To the

extent that Ezjak ’270 is found not to disclose a single media gateway that

performs the steps of Claims 2-5, 8-10, 14-18, and 22-24, this would have been

obvious in view of Cisco. As discussed in Section VI.B above, Cisco teaches an


59

SBC having both media and signaling capabilities. See Ex. 1110 at 1 (disclosing a

session border controller that “provides a network-to-network demarcation

interface for signaling interworking, media interworking, address and port

translations”). It would have been obvious to one of ordinary skill in the art that

the method disclosed in Ejzak ’270 could be employed by a single device such as

an SBC as disclosed by Cisco. Ex. 1104 at ¶¶ 130-141, 336-344.

Moreover, to the extent that Ejzak ’270 is found not to disclose a “media

gateway compris[ing] a plurality of input and output communication trunks via

which communication sessions can be conducted, each trunk being capable of

having different associated media connectivity settings” as recited in Claim 22, this

claim would have been obvious in view of Cisco. Cisco teaches that its SBC

“supports dynamic route selection across multiple trunks.” Ex. 1110 at 11; Ex.

1104 at ¶ 339.

Finally, to the extent that Ejzak ’270 is found not to disclose “a session

border controller” as recited in Claim 23, this claim would have been obvious in

view of Cisco, which teaches a session border controller. See Ex. 1110 at 1; Ex.

1104 at ¶¶ 119-121, 338.

Thus, as described above, all limitations of Claims 2-5, 8-10, 14-18, and 22-

24 are disclosed by Ejzak ’270 in combination with Cisco, and it would have been

obvious to combine these references. Ex. 1104 at ¶¶ 130-141, 342. Petitioner thus


60

submits that Claims 2-5, 8-10, 14-18, and 22-24 are unpatentable as obvious in

view of Ejzak ’270 and Cisco.

IX. CONCLUSION

Petitioner respectfully requests that inter partes review of the ’640 Patent be

instituted and that Claims 2-5, 8-10, 14-18, and 22-24 be cancelled as unpatentable

under 35 U.S.C. § 318(b).

Respectfully submitted, BAKER BOTTS L.L.P. Attorneys for Petitioners

Chad C. Walters Reg. No. 48,022

Date: June 22, 2015

CERTIFICATE OF SERVICE

In accordance with 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned

certifies that on the 22nd day of June, 2015, a complete and entire copy of the

PETITION FOR INTER PARTES REVIEW OF CLAIMS 2-5, 8-10, 14-18,

and 22-24 OF U.S. PATENT NO. 8,687,640 UNDER 35 U.S.C. §§ 311-319 and

37 C.F.R. §§ 42.100 ET SEQ (“petition”) and related documents were served on

the patent owner at the correspondence address of record for the subject patent,

EIP US LLP 2468 Historic Decatur Road

Suite 200 San Diego, CA 92106

via Express Mail or by means at least as fast and reliable as Express Mail.

Additionally, the same were also served upon counsel for the subject patent’s

owner, Metaswitch Networks, Ltd,

Charles K. Verhoeven Quinn Emanuel Urquhart & Sullivan, LLP

50 California Street, 22nd Floor San Francisco, California 94111

because that is likely to effect service.

In accordance with § 42.51(b)(1), the undersigned certify that Petitioner is

not aware of, and therefore does not provide any “relevant information that is

inconsistent with a position advanced by petitioner[].”

2

CERTIFICATE OF SERVICE

June 22, 2015 _____________________________ Date Chad C. Walters (Reg. No. 48,022)

Baker Botts L.L.P. 214.953.6500 2001 Ross Avenue, Suite 600 Dallas, Texas 75201

Attorneys for Petitioner, Genband US LLC

united states patent and trademark office before …filed: march 22, 2011 : issued: april 1, 2014 :...

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