NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

DIRECTPACKET RESEARCH, INC.,

Appellant

v.

POLYCOM, INC.,

Appellee

______________________ 

2021-1661

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

01233.

______________________ 

Decided: January 26, 2022

______________________ 

TERENCE P. ROSS, Katten Muchin Rosenman LLP, 

Washington, DC, argued for appellant. Also represented 

by CHRISTOPHER FERENC, ERIC THOMAS WERLINGER. 

 GEOFFREY P. EATON, Winston & Strawn LLP, Washington, DC, argued for appellee. Also represented by DAVID 

DALKE, Los Angeles, CA; NOOROSSADAT TORABI, San Francisco, CA. 

 ______________________ 

Case: 21-1661 Document: 39 Page: 1 Filed: 01/26/2022
2 DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 

Before MOORE, Chief Judge, DYK and REYNA, Circuit 

Judges. 

MOORE, Chief Judge. 

directPacket Research, Inc. appeals an inter partes review final written decision holding claims 1–23 of U.S. Patent No. 7,773,588 would have been obvious. For the 

following reasons, we vacate and remand.

BACKGROUND

directPacket owns the ’588 patent, which is titled “System and Method for Cross Protocol Communication.” That 

patent relates to facilitating multimedia communication 

between devices that use incompatible communication protocols. ’588 patent at 1:6–8; 2:3–5. To overcome incompatibility issues, the invention includes a communication 

controller, which receives a multimedia data stream from 

a communication device in a first protocol and converts the 

stream into an intermediate protocol. Id. at 2:5–10. The 

multimedia data stream in the intermediate protocol is

transmitted to a second communication controller, which 

converts the data stream to a second protocol that is compatible with the destination communication device. Id. at 

2:15–18. Claim 1 is representative for this appeal:

1. A method for multimedia communication comprising:

receiving a multimedia data stream at a 

communication controller in a first protocol

from a communication device, wherein the 

first protocol comprises a signaling protocol; 

detecting a type of said first protocol;

converting said first protocol into an intermediate protocol;

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DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 3

translating said intermediate protocol into 

a second protocol, wherein the second protocol comprises a signaling protocol; and

transmitting said multimedia data stream 

in said second protocol to a target communication device;

wherein said first protocol comprises one of 

a text-based protocol and a binary protocol 

and wherein said second protocol comprises 

one of a binary protocol and a text-based 

protocol.

(emphasis on disputed language). 

Polycom, Inc. petitioned for inter partes review of all 

claims of the ’588 patent, which the Board instituted. 

Throughout the proceedings, the parties agreed the 

claimed multimedia data stream could include signaling 

messages used to establish communications, but they disputed whether the stream must include media messages. 

Polycom, Inc. v. Directpacket Rsch., Inc., No. IPR2019-

01233, 2021 WL 96053, at *5–6 (P.T.A.B. Jan. 11, 2021). 

The Board held that a multimedia data stream “does not 

have to consist of both signaling and media messages, and 

may be a signaling message only.” Id. at *8. Based on that 

construction, the Board determined that all claims of the 

’588 patent would have been obvious. Id. at *33. directPacket appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

We review claim construction de novo and any subsidiary factual findings based on extrinsic evidence for substantial evidence. Cisco Sys., Inc. v. Int’l Trade Comm’n, 

873 F.3d 1354, 1360 (Fed. Cir. 2017). Claim terms are generally given their plain and ordinary meaning, which is the 

meaning one of skill in the art would ascribe to a term 

when read in the context of the claims, written description, 

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4 DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 

and prosecution history. See Phillips v. AWH Corp., 415 

F.3d 1303, 1313–14 (Fed. Cir. 2005) (en banc). 

A multimedia data stream is a data stream that includes multiple forms of media data (e.g., sound, video, and

text data). This meaning is clear from the adjective multimedia that modifies “data stream” and, as Polycom admits, 

means more than one media. Oral Arg. at 18:00–06, 

https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21

-1661_12092021.mp3. Polycom does not dispute that the 

plain meaning of the term requires media data. Instead, it 

argues the claimed “multimedia data stream” must encompass a data stream that contains only signaling data for 

two reasons. First, Polycom argues the claim language facilitates communication with “a signaling protocol” only, 

which is incapable of communicating media messages. Second, Polycom argues any contrary construction would exclude a preferred embodiment. We do not agree. 

The multimedia data stream is received “in a first protocol . . . wherein the first protocol comprises a signaling 

protocol,” but that doesn’t limit the data stream to signaling data only. Comprises is an open-ended word that does 

not foreclose the first protocol from containing other nonsignaling protocols capable of communicating media. See, 

e.g., Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 

1396, 1409 (Fed. Cir. 2004). Furthermore, the written description explains that a communication protocol may “rely 

on multiple other protocols . . . for sending and receiving 

multimedia traffic.” ’588 patent at 1:32–35 (emphasis 

added). Thus, just because the first protocol includes a signaling protocol does not mean it does not also contain other 

protocols capable of communicating media. See, e.g., id. at 

1:48–53 (listing VoIP as an example of a communication 

protocol). For the same reasons, the claim language requiring translation of an intermediate protocol into a second 

protocol that also “comprises a signaling protocol” does not 

limit the multimedia data stream. 

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DIRECTPACKET RESEARCH, INC. v. POLYCOM, INC. 5

Construing “multimedia data stream” to require media 

does not read out an embodiment. Polycom argues that the 

embodiment in figure 1A uses only the Session Initiation 

Protocol (SIP), a signaling protocol, and, therefore, construing multimedia data stream to require media would read 

out that embodiment. However, figure 1A does not disclose 

a SIP-only embodiment. Indeed, the figure does not mention SIP; it merely shows the embodiment uses text-based 

and binary communication protocols. And the associated 

written description identifies SIP as just one example of a 

text-based protocol. ’588 patent at 3:25–39. The written 

description also clarifies that “[o]ther protocols may be 

used as well.” Id. Thus, requiring the multimedia data 

stream to contain media does not read out the embodiment 

of figure 1A. 

We construe the term multimedia data stream according to its plain and ordinary meaning, which must include

media. Because the Board applied an erroneous construction that affects every independent claim and, under the 

correct construction, factual issues exist on the proper outcome, we vacate the Board’s final written decision and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

Costs to directPacket.

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