NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

CISCO SYSTEMS, INC.,

Appellant,

v.

MICHELLE K. LEE, Deputy Director, United States 

Patent and Trademark Office,

Appellee,

v.

TELES AG INFORMATIONSTECHNOLOGIEN,

Cross-Appellant.

______________________ 

2012-1513, -1514

______________________ 

Appeals from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences, 

in Reexamination No. 95/001,001.

- - - - - - - - - - - - - - - - - - - - - - - - - 

IN RE TELES AG 

INFORMATIONSTECHNOLOGIEN AND SIGRAM 

SCHINDLER BETEILIGUNGSGESELLSCHAFT 

MBH

______________________ 

2012-1297
2 CISCO SYSTEMS, INC. v. LEE

______________________ 

Appeal from the United States Patent and Trademark 

Office, Board of Patent Appeals and Interferences, in 

Reexamination No. 90/010,017.

______________________ 

Decided: February 21, 2014 

______________________ 

J. ANTHONY DOWNS, Goodwin Procter LLP, of Boston, 

Massachusetts, argued for appellant Cisco Systems, Inc. 

With him on the brief were LANA S. SHIFERMAN and 

KENNETH E. RADCLIFFE. 

AMY J. NELSON, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, 

argued for appellee. With her on the brief were NATHAN 

K. KELLEY, Deputy Solicitor, and SCOTT C.

WEIDENFELLER, Associate Solicitor. Of counsel was 

SYDNEY O. JOHNSON, JR., Associate Solicitor. 

 

MICHAEL D. KAMINSKI, Foley & Lardner LLP, of 

Washington, DC, argued for appellant and cross appellant

Teles AG Informationstechnologien, et al. With him on 

the brief were HOWARD N. SHIPLEY, GEORGE E. QUILLIN

and RYAN A. SCHMID. 

FRANK E. SCHERKENBACH, Fish & Richardson P.C., of 

Boston, Massachusetts, for amicus curiae Power Integrations in appeal no. 2012-1297. With him on the brief were

CRAIG E. COUNTRYMAN, of San Diego, California, and

HOWARD G. POLLACK and MICHAEL R. HEADLEY, of Redwood City, California. 

______________________ 

Before DYK, MOORE, and WALLACH, Circuit Judges.
CISCO SYSTEMS, INC. v. LEE 3

WALLACH, Circuit Judge. 

Third-party requester Cisco Systems, Inc. (“Cisco”) 

appeals from the Patent Trial and Appeal Board’s 

(“Board”) decision confirming the patentability of claims 

91 and 104 of U.S. Patent No. 7,145,902 (“the ’902 patent”). Teles AG Informationstechnologien (“Teles”)1 cross 

appeals from the Board’s rejections of claims 68, 69, 71, 

75, 77, 79, 82, 84, 87, 90, 92, 95, 98, 100, and 102. This 

court affirms-in-part and reverses-in-part. 

BACKGROUND

I. The ’902 Patent

The ’902 patent discloses a method and apparatus for 

transmitting data in a telecommunications network by 

line switching (also referred to as circuit switching) and 

packet switching. ’902 patent col. 1 ll. 19–22. It contemplates transfer of “any type of data,” including “audio 

data, video data or computer files,” id. col. 3 ll. 45–46, and

is particularly useful in Internet telephony, id. col. 4 ll. 3–

4. A conventional telephone transmission uses line 

switching, whereas the Internet uses packet switching. A 

line-switching connection has fixed bandwidth and transfers data continuously and without delay. Id. col. 1 ll. 46–

60. Line-switching connections are costly, however, 

because the connection must be maintained even when no 

data is being transferred. Id. col. 1 ll. 56–58. Packet 

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

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

18–25.

1 For convenience, this court will refer to former patent owner Teles, even though Sigram Schindler Beteiligungsgesellschaft MbH now owns the ’902 patent. 

 
4 CISCO SYSTEMS, INC. v. LEE

The ’902 patent teaches changing over between line 

switching and packet switching during an existing communication, so that each type of connection can be used 

when it is most beneficial. This is accomplished with 

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

a packet-switch.” Id. col. 3 ll. 47–50. Such a switch has 

“[(1)] a packeting device for packeting and unpacketing 

data, [(2)] an IP switching device for routing data packets, 

[(3)] a line-switching device for establishing connections 

for switching through data channels[, and (4)] a control 

device which directs incoming data.” Id. col. 3 ll. 51–55. 

The control device responds to control signals, which can 

be triggered (1) automatically when a packet-switching 

transfer exceeds a certain bandwidth, (2) by a user, or (3) 

by the network management system. Id. col. 3 ll. 58–63. 

The method is designed to harness both the cost-saving 

benefits of packet switching and the speed and accuracy of

line switching. Id. col. 3 ll. 25–39. Importantly, the 

transfers between line switching and packet switching 

occur “without interrupting the connection” between the 

servers. Id. col. 3 ll. 25–28.

A telecommunications network according to the ’902 

patent includes multiple switches 7, each of which comprises a packet switch 72 and a line switch 73.
CISCO SYSTEMS, INC. v. LEE 5

Id. Fig. 4. Control device 71 produces internal control 

commands to direct data either through packet switch 72 

or line switch 73. Id. col. 8 ll. 59–65. The network management system or a user can use an end terminal or 

another switch to trigger control signals from the control 

device 71. Id. col. 9 ll. 29–33, 63–66. Alternatively, 

change-over control device 711 (depicted in Figure 4 as 

part of control device 71) monitors the transfer bandwidth 

and can automatically release a control command to 

change the type of transfer. Id. col. 9 ll. 41–47. For instance, when the control device 711 detects that packet 

switching is “understepping or exceeding a certain bandwidth and/or in the event of a time delay,” it can change 

over to line switching. Id.

Exemplary claim 68 recites:

68. Switching apparatus for selectively routing a 

telephone call from a first end terminal to a second end terminal, comprising:
6 CISCO SYSTEMS, INC. v. LEE

a device that provides access to a packet switching 

network through which data can be sent for delivery to the second end terminal;

means for transferring first data of the telephone 

call originated by the first terminal through the 

packet switching network for delivery to the second end terminal;

a device for establishing a connection to a lineswitching network through which data can be sent 

for delivery to the second end terminal;

means for transferring second data of the telephone call originated by the first terminal over 

the connection through the line-switching network 

for delivery to the second end terminal; and

means responsive to a control signal for changingover from a packet-switching mode of transfer of 

the first data of the telephone call to a lineswitching mode of transfer of the second data of 

the telephone call without interruption of a call-up 

procedure, wherein said control signal is produced 

by a network management system.

Id. col. 18 l. 58–col. 19 l. 14 (emphasis added to disputed 

limitations). Two dependent claims, 91 and 104 (which 

depend from claims 84 and 100, respectively), also feature 

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

connection through the line-switching network.”2 Id. col. 

21 ll. 38–40; see also id. col. 23 ll. 6–8 (substantially the 

same, except the connection must be “through the public 

telephone network”).

2 Claims 84 and 100 cover similar switching apparatuses, except that claim 100’s packet-switching network 

is limited to the Internet. ’902 patent col. 22 l. 27–29.

 
CISCO SYSTEMS, INC. v. LEE 7

II. Prior Art References

Cisco relied on multiple prior art references in its request for inter partes reexamination. Five references are 

most relevant to this appeal: Jonas,3 Farese,4 Matsukawa,5 Yoshida,6 and Focsaneanu.7 The Board found that 

the first four references disclose changing over between 

packet switching and line switching during an existing 

communication. Jonas discloses a system and method of 

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

a line-switched network to “bypass” packet switching 

when necessary. J.A. 11–12.

Farese teaches a system in which a host computer 

transfers an Integrated Services Data Network (“ISDN”) 

access path between a D-channel (which uses packet 

switching) and a B-channel (which is capable of using line 

switching) during an ongoing host session.8 Matsukawa’s 

network likewise uses an ISDN in both packet-switching 

and line-switching modes, and teaches changing over to 

line switching when a certain pre-determined time delay 

occurs during the packet-switching connection. Yoshida, 

again, teaches an ISDN network using line and packet 

switching. Yoshida focuses on a Local Area Network 

(“LAN”) with channels B1 and B2, which correspond to 

packet and line switches, respectively. When there is an 

increase in packet data per unit time (resulting in greater 

delays), Yoshida’s channel change signal causes a change 

over to transmission on the line-switching connection.

3 U.S. Patent No. 6,137,792.

4 U.S. Patent No. 4,996,685.

5 U.S. Patent No. 5,598,411.

6 U.S. Patent No. 5,347,516.

7 U.S. Patent No. 5,610,910.

8 ISDN is a data system that enables digital transmission over the public telephone network. 

 
8 CISCO SYSTEMS, INC. v. LEE

The fifth reference, Focsaneanu, discloses a multiservice access platform that allows a plurality of computers (or other communications equipment) to interface with 

a plurality of networks. Focsaneanu col. 1 ll. 7–14, col. 4 

l. 40–col. 5 l. 12. Focsaneanu also teaches the use of a 

multiplexer to combine multiple signals in a single 

transmission to the network. Id. col. 8 ll. 24–26, col. 10 ll. 

47–49. 

III. Procedural History

In 2007, Cisco requested inter partes reexamination of 

claims 36, 37, 41, 54–58, 60–62, 64, 66, 68, 69, 71, 75, 77, 

79, 82, 84, 87, 90–92, 95, 98, 100, 102, 104, and 118–125 

of the ’902 patent.9 After the U.S. Patent and Trademark 

Office (“PTO”) granted the request, the Examiner rejected 

all but two of the reexamined claims based on anticipation, with some claims being anticipated by multiple prior 

art references. The Examiner confirmed the patentability 

of claims 91 and 104, rejecting all of Cisco’s proposed 

obviousness and anticipation rejections. Teles appealed 

the rejections to the Board, and Cisco cross appealed the 

Examiner’s decision to allow claims 91 and 104. The 

Board affirmed in all respects.

In particular, the Board affirmed the Examiner’s 

claim construction of “network,” as used in claim terms 

“packet-switching network” and “line-switching network.” 

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

9 Teles and Cisco are also involved in an infringement action in the U.S. District Court for the District of 

Delaware involving, inter alia, the ’902 patent. Cisco 

Sys., Inc. v. Sigram Schindler Beteiligungsgesellschaft, 

C.A. No. 09-232-SLR & No. 09-072-SLR (D. Del.). That 

case is currently stayed pending final decision in this and 

other reexamination proceedings.

 
CISCO SYSTEMS, INC. v. LEE 9

ISDN, and rejected Teles’s argument “that the separate 

channels of the ISDN cannot constitute ‘two distinct 

networks.’” J.A. 19. The Board also found unpersuasive 

Teles’s argument that “telephone call” and “real-time 

properties,” as recited in the apparatus claims of the ’902 

patent, require actually making a telephone call or transferring data in real time; rather, the Board determined 

the apparatus claims only require a structure capable of 

performing those functions. 

Finally, the Board construed the “means responsive to 

a control signal” limitation in the last paragraph of claim 

68 as a means-plus-function claim. The Board agreed 

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

first data of the telephone call to a line-switching mode of 

transfer of the second data of the telephone call without 

interruption of a call-up procedure.” J.A. 22 (internal 

quotation marks omitted). The Board determined the 

corresponding structure was the change-over control unit 

711. J.A. 23. 

Based on these claim constructions, the Board affirmed the Examiner’s rejections of claims 68, 69, 71, 75, 

77, 79, 82, 84, 87, 90, 92, 95, 98, 100, and 102 as anticipated by Jonas. Some of these claims were also rejected 

as anticipated by Farese, Matusaka, and Yoshida, although claims 100 and 102 were rejected solely on the 

basis of Jonas. The Board also affirmed the Examiner’s 

decision not to adopt Cisco’s proposed anticipation rejections based on Focsaneanu. It determined Focsaneanu 

does not meet the limitation of changing-over between 

packet and line switching during an active communication, but instead requires disconnecting the data transfer 

before making such a change. 
10 CISCO SYSTEMS, INC. v. LEE

Finally, the Board affirmed the allowance of claim 91, 

holding it would not have been obvious over Focsaneanu 

in view of Lucent10 and, inter alia, Jonas or Yoshida, and 

likewise affirmed that claim 104 would not have been 

obvious over the combination of Focsaneanu, Lucent, and 

Jonas. Although Focsaneanu discloses a multiplexer as 

required by claims 91 and 104, the Board found it does 

not disclose a multiplexer that supports changing-over 

between packet switching and line switching during an 

ongoing phone call. 

Cisco filed a timely appeal challenging the Board’s allowance of claims 91 and 104. Teles cross appealed the 

Board’s rejections. This court has jurisdiction pursuant to 

35 U.S.C. §§ 141 and 144 and 28 U.S.C. § 1295(a)(4)(A). 

DISCUSSION

On appeal, Teles contests the Board’s constructions of 

“network,” “telephone call,” and “real-time properties.” It 

further argues the Board improperly failed to interpret 

the terms “control signal” and “communications connection.” According to Teles, these allegedly incorrect claim 

constructions require reversal of the Board’s rejections 

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

assuming those constructions are correct, Teles contends 

there is not substantial evidence to support the Board’s 

rejections of claims 100 and 102 as anticipated by Jonas. 

Cisco, in turn, challenges the Board’s decision confirming

claims 91 and 104. Each argument is addressed in turn. 

I. Standard of Review

During reexamination, “claims . . . are to be given 

their broadest reasonable interpretation consistent with 

10 Lucent Technologies, Lucent Technologies announces Internet telepathy servers to put voice, fax, and 

mail on the Internet (Sept. 17, 1996) (“Lucent”). 

 
CISCO SYSTEMS, INC. v. LEE 11

the specification, and . . . claim language should be read 

in light of the specification as it would be interpreted by 

one of ordinary skill in the art.” In re Am. Acad. of Sci. 

Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal 

quotation marks and citation omitted). “‘[C]laim construction by the PTO is a question of law that we review 

de novo . . . .’” Rambus Inc. v. Rea, 731 F.3d 1248, 1252 

(Fed. Cir. 2013) (quoting In re Baker Hughes Inc., 215 

F.3d 1297, 1301 (Fed. Cir. 2000)).

Anticipation under 35 U.S.C § 102 is a question of 

fact. In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012). 

Obviousness under 35 U.S.C. § 103 is a legal conclusion 

based on underlying factual findings, including “[t]he 

scope and content of the prior art” and “whether the prior 

art teaches away from the claimed invention.” In re 

Mouttet, 686 F.3d 1322, 1330 (Fed. Cir. 2012). The 

Board’s factual findings are reviewed for substantial 

evidence, and questions of law are reviewed without 

deference. Id. at 1330–31. 

II. Teles’s Cross Appeal

A. The Board Correctly Construed “Network”

Exemplary claim 68 recites, inter alia, (1) “a device 

that provides access to a packet switching network,” (2) “a 

device for establishing a connection to a line-switching 

network,” and (3) “means responsive to a control signal for 

changing-over” between the packet-switching network and 

the line-switching network. ’902 patent col. 18 l. 61–col. 

19 l. 11 (emphases added). On appeal, Teles argues the 

packet-switched network and the line-switched network 

must be “two independent and distinct networks.” Teles’s 

Br. 28. Teles maintains the Board therefore erred in 

holding that the D- and B-channels of a single ISDN 

network can constitute packet- and line-switching networks, respectively, because the D- and B-channels are 
12 CISCO SYSTEMS, INC. v. LEE

part of the same network, not two independent networks.11 

In holding the claimed packet- and line-switching 

networks can be part of one network, the Board relied on 

the ’902 patent’s statement that it is “‘possible to divide 

up a single coupling network depending, on requirements, 

dynamically into a line-switching network and a packetswitching network.’” J.A. 9 (quoting ’902 patent col. 3 ll. 

10–13) (emphasis added). While this statement is made 

in the context of discussing prior art, the rest of the 

specification does not require a narrower meaning. 

Contrary to Teles’s argument that a person of ordinary 

skill “always understands the ISDN to be a single lineswitching network,” Teles’s Br. 19 (emphasis added), the 

“Summary of the Invention” portion of the ’902 patent

refers to ISDN’s D-channel as one type of packetswitching network, thus confirming that packet switching 

and line switching can take place in one network. See

’902 patent col. 4 l. 66–col. 5 l. 2 (describing an example of 

“a packet-switching transfer to the access point” as “e.g., 

through an ISDN D channel”). 

Teles counters that “[t]he ’902 Patent makes clear 

that two independent and distinct networks are required 

to make up the ‘Packet- and Line-switching Network’: one 

being a packet-switched network, such as the Internet; 

and the other being a line-switched network, such as the 

[public switched telephone network] or ISDN.” Teles’s Br. 

28 (citing ’902 patent col. 7 ll. 49–52). The portion of the 

specification that Teles cites for this proposition, however, 

11 The finding that D- and B-channels in an ISDN 

network can meet the “packet” and “line-switching network” limitations is necessary to the Board’s anticipation 

findings regarding prior art references Farese, Yoshida, 

and Matsukawa, which disclose changing over between 

packet and line switching in an ISDN network.

 
CISCO SYSTEMS, INC. v. LEE 13

refers to only one network: “The switches 7a and 7b[, 

representing a packet switch and a line switch, respectively,] can be mounted . . . at different points in the 

telecommunications network.” ’902 patent col. 7 ll. 48–49 

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

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

separate networks are required. 

Nor is there an unmistakable disavowal of claim 

scope, as Teles argues, in the description that “‘[i]f an 

ISDN network exists, then an ISDN B channel is used as 

the data channel.’” Teles’s Br. 31 (quoting ’902 patent col. 

5 ll. 2–6). This simply describes a preferred embodiment 

in which “the same data channel is used for transferring 

the data packets from the first switch” to both the packetswitching network and the line-switching network. ’902 

patent col. 4 ll. 51–60. This embodiment is meant to 

ensure “a larger and fixed bandwidth . . . up to the access 

point [of the packet-switching network],” id. col. 5 ll. 1–2, 

but does not state that the packet-switching network 

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

networks,” the Board correctly determined that “the 

networks in the instant claims” can “be read onto an 

ISDN under a broadest reasonable interpretation.” J.A. 

20. This court therefore affirms that the claimed packetswitching network and line-switching network includes a 

single telecommunications network with multiple channels, such as an ISDN network. 

B. The Board Correctly Construed “Telephone Call” and 

“Data Transfer with Real-Time Properties”

The contested claims of the ’902 patent require “a telephone call” and/or “data transfer with real-time properties.” Claim 68, for example, recites a “[s]witching 

apparatus for selectively routing a telephone call,” comprising, inter alia, “means for transferring first data of the
14 CISCO SYSTEMS, INC. v. LEE

telephone call” and “means for transferring second data of 

the telephone call.” ’902 patent col. 18 l. 58–col. 19 l. 4 

(emphases added). Claim 84 requires a control device 

that maintains “respective communications connections 

for data transfer with real-time properties.” Id. col. 20 ll. 

63–64 (emphasis added). The Board determined that both 

limitations require only “a structure capable of performing the function” of sustaining a telephone call or providing real-time properties. J.A. 21 (citing Hewlett-Packard 

Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 

1990) (“[A]pparatus claims cover what a device is, not 

what a device does.”)).

Teles argues the Board should have construed both 

terms to mean “end-terminal-to-end-terminal communications connections with a communications time delay of 

less than 0.5 seconds.” Teles’s Br. 40. The proper construction, according to Teles, must “exclude the transfer of 

anonymous bulk data with unspecified/non-real-time 

delay requirements.” Id. Teles bases its argument on the 

portion of the specification stating that “‘[w]ith Internet 

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

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

ll. 19–21). 

This statement is set forth in the “Background of the 

Invention,” and provides context by describing the difficulties typically associated with packet switching; it does 

not limit the otherwise plain meaning of “telephone call” 

or “data transfer with real-time properties.” Nearby 

portions of the specification further describe “delays . . . of 

considerable significance,” especially when the Internet is 

overloaded. Id. col. 2 l. 18–25 (“When the Internet is 

overloaded, the time delay of the individual packets 

becomes so great that an acceptable conversation connection between telephone partners is no longer possible.”). 

Nor does the specification even mention the 0.5-second 

time delay in the context of line switching. Teles is there-
CISCO SYSTEMS, INC. v. LEE 15

fore incorrect that the broadest reasonable interpretation 

of “telephone call” and “real-time” data transfer requires a 

specific time delay limit. See Toshiba Corp. v. Imation 

Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012) (“We do not 

read limitations from the specification into claims.”). This

court affirms the Board’s construction of the terms as any 

“structure capable of sustaining a telephone call or 

providing real-time properties.”12 J.A. 21.

C. Teles Waived Its Proposed Constructions of “Control 

Signal” and “Communications Connection”

Claim 84 recites, inter alia, a “control device” that is 

“responsive to a control signal for changing-over from 

packet-switching transfer of first data of a communications connection to line-switching transfer of second data 

of the communication connection without interruption of 

the communications connection.” ’902 patent col. 20 l. 66–

col. 21 l. 4 (emphases added). The Board did not construe 

“control signal” or “communications connection,” because 

Teles did not dispute the meaning of those terms. Teles 

now argues that “[u]pon de novo review, the Court should 

find legal error in the [Board’s] failure to construe the 

terms ‘Control Signal’ and ‘Communications Connection.’” 

Teles’s Br. 45. It contends “[t]hese terms address key 

inventive concepts of the patent,” and “provide the solu12 Teles’s claim construction arguments rely, in part, 

on its contention that the Supreme Court’s decision in 

Mayo requires “that a ‘baseline’ has to be identified, in 

view of the specification, by identifying the ‘inventive 

concepts’ of the claimed invention as disclosed by the 

patent’s specification.” Teles’s Br. 26 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 

1294 (2012)). This court discerns nothing in the Board’s 

claim constructions that is contrary to Mayo, however, 

which addresses patentable subject matter under 35 

U.S.C. § 101, rather than principles of claim construction.

 
16 CISCO SYSTEMS, INC. v. LEE

tion to the problem present in prior art systems.” Id. at 

45–46. According to Teles, “[a]ll of the appealed claims 

were carefully and deliberately limited to structure or 

acts of ‘changing-over’ . . . from the packet-switched 

network to the line-switched network ‘without interruption’ of ‘the communications connection’ / ‘the call set-up 

procedure.’” Id. at 46. 

Contrary to Teles’s argument, the Board had no obligation to consider claim construction challenges that were 

not actually raised before it. See 37 C.F.R. 

§ 41.67(c)(1)(vii). The Board did construe the “means 

responsive to a control signal” limitation in claim 68, 

finding it was a means-plus-function term and that the 

“control device 711” was corresponding structure. J.A. 22 

(emphasis added). Teles now contends that “control 

signal” requires “the real-time changing-over of an ongoing telephone call from a packet-switched network to a 

line-switched network without interruption of end-to-end 

communications connection,” and that “[c]ommunications 

[c]onnection should be construed as an end-terminal-toend-terminal link.” Teles’s Br. 45. These arguments have 

been waived. Moreover, Teles’s one-and-a-half pages of 

argument on this issue do not cite to any intrinsic or 

extrinsic evidence to support its proposed constructions. 

To the extent Teles contests the Board’s construction of 

“means responsive to a control signal,” the Board properly 

treated it as a means-plus-function term with corresponding structure of the “control device 711.”

Teles’s claim construction arguments are its sole challenges to the rejections of claims 68, 69, 71, 75, 77, 79, 82, 

84, 87, 90, 92, 95, and 98 as anticipated by one or more of 

Jonas, Farese, Yoshida, and Matsukawa. Because the 

Board’s claim constructions are correct, this court also 

affirms these otherwise unchallenged anticipation rejections.
CISCO SYSTEMS, INC. v. LEE 17

D. Teles’s New Challenges to Claims 100 and 102 Are 

Unpersuasive

The Board affirmed the Examiner’s rejections of independent claim 100 and its dependent claim 102 as anticipated by Jonas. Claim 100 recites, inter alia, “a control 

device,” 

the control device being responsive to the data 

packet headers for controlling the packet switching device and the line switching device for establishing and maintaining respective 

communication connections for data transfer with 

real-time properties between origin end terminals 

and destination end terminals, and the control device also being responsive to an overload in the Internet for automatically changing-over from 

packet-switching transfer of first data of a communications connection to line-switching transfer 

of second data of the communication connection 

without interruption of the communications connection when a data blockage occurs in the routing 

of data packets of the first data of the communications connection through the Internet. 

’902 patent col. 22 ll. 33–51 (emphases added to disputed 

language). On appeal, Teles argues that Jonas does not 

disclose (1) an “end terminal,” (2) a “communications 

connection,” or (3) a control device that is responsive to 

“data packet headers” and “an overload on the Internet.” 

Teles’s Br. 52, 56. Teles did not raise these arguments 

before the Board, however, where it challenged the rejection of claims 100 and 102 based only on its arguments 

with respect to exemplary claim 68. See, e.g., J.A. 7174–

75 (“real-time properties” and “telephone call” arguments), 7154–56 (arguing Jonas does not disclose the 

limitations of claim 68). “Absent exceptional circumstances,” this court does not consider arguments not 
18 CISCO SYSTEMS, INC. v. LEE

raised before the Board. In re Baxter Int’l, Inc., 678 F.3d 

1357, 1362 (Fed. Cir. 2012). 

Even if this court considers the merits of these new 

arguments, they are unpersuasive.13 Without deciding 

whether the above three limitations are required by 

claims 100 and 102, it is evident from the Board’s fact 

finding that Jonas discloses all three. Jonas describes 

monitoring a packet-switching transmission from a source 

computer to a destination computer and dynamically 

switching to a line-switching connection during an existing transmission. Jonas col. 5 ll. 53–58. The Board found 

that Jonas discloses “‘dynamically tak[ing] advantage of 

both the inherent cost benefit of [a] . . . packet-switched 

[network] and the minimal delay time of [a] [line]-

switched . . . network[ ]’” by monitoring transmission 

delay, and switching to the line-switched network when 

the delay exceeds a predetermined value. J.A. 13 (quoting 

Jonas col. 5 ll. 53–56). Jonas also features “data packet 

headers” and describes that packets transmitted over the 

bypass line-switched network may contain labels in the IP 

header. J.A. 12 (citing Jonas col. 4 ll. 43–45). Based on 

the Board’s fact findings, Jonas thus discloses an “end 

terminal,” a “communications connection,” and a control 

device responsive to data packet headers and Internet 

13 In its reply brief, Teles argues that Cisco and the 

PTO waived their argument that Teles’s arguments are 

waived. Teles Reply Br. 25 (citing Riemer v. Ill. Dep’t of 

Transp., 148 F.3d 800, 809 (7th Cir. 1998) for the proposition that “[a] defense of waiver can itself be waived by not 

being raised”). This argument overlooks that this is Cisco 

and the PTO’s first opportunity to respond to Teles’s new 

arguments on claims 100 and 102. 

 
CISCO SYSTEMS, INC. v. LEE 19

overload. Accordingly, the rejections of claims 100 and 

102 are affirmed.14 

III. Cisco’s Appeal

A. The Board Erred in Confirming the Patentability of 

Claims 91 and 104

Claims 91 and 104 depend from claims 84 and 100, 

respectively, and add the limitation of “a multiplexer 

device for multiplexing data of several origin end terminals over a single line connection through the lineswitching network.” ’902 patent col. 21 ll. 37–40 (claim 

91); id. col. 23 ll. 4–8 (claim 104 reciting substantially the 

same, except that the line-switching network must be a 

public telephone network). Cisco’s request for reexamination argued these claims should be rejected as anticipated 

by Focsaneanu, or, alternatively, as obvious over Focsaneanu alone or in combination with multiple prior art 

references. In particular, Cisco argued claim 91 would 

have been obvious over Focsaneanu and Lucent and 

either Jonas or Yoshida. It argued claim 104 would have 

been obvious over the combination of Focsaneanu, Lucent, 

and Jonas. 

The Board found that claims 91 and 104 were not anticipated by Focsaneanu. It agreed with Cisco that 

Focsaneanu discloses a multiplexer, but nevertheless 

found Focsaneanu does not disclose switching networks 

without interrupting an active communication, as required by claims 91 and 104. J.A. 25 (“The one embodiment of Foscaneanu [sic] that clearly talks about changeover while a call is transpiring discloses that ongoing call 

is terminated.”); see also J.A.11 (citing Focsaneanu col. 10 

14 Because the Board’s rejections are affirmed, there 

is no need to determine whether the Board erred in declining to adopt Cisco’s alternative proposed bases for 

rejection. See Cisco’s Br. 3–4.

 
20 CISCO SYSTEMS, INC. v. LEE

ll. 32–34) (stating “‘a data service request initiated by the 

user during a [Plain Old Telephone Service] call will 

disconnect the phone and present a carrier to the user’s 

modem’”) (emphasis added)). The Board also affirmed the 

Examiner’s decision that claim 91 would not have been 

obvious over Focsaneanu, Lucent, and either Jonas or 

Yoshida, and that claim 104 would not have been obvious 

over Focsaneanu, Lucent, and Jonas. 

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

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

changing-over between packet and line switching during 

an active transmission, and that the Board lacked substantial evidence in finding otherwise. Cisco relies on the 

portion of Focsaneanu’s specification stating “‘the access 

module can dynamically select a different network from 

the one prescribed in the user profile, to carry the packetized data traffic.’” Cisco’s Br. 40 (quoting Focsaneanu col. 

11 ll. 7–10); see also Focsaneanu col. 11 ll. 15–16 (“The 

voice service [quality of service] is maintained by continuous monitoring of the transmission delay.”). According to 

Cisco, these portions of the specification show that the 

“change between the network originally selected for the 

voice call and the different network on which the call is 

routed is dynamically carried out within a single call and 

does not require the user to initiate a new call set-up 

procedure or to re-dial the number.” Cisco’s Br. 40. In 

finding otherwise, Cisco maintains the Board improperly 

focused on a single embodiment in Focsaneanu, and 

ignored other embodiments that meet the claim limitation 

of changing over in real time. 

The PTO and Teles respond that the Board’s findings 

on Focsaneanu are supported by substantial evidence. 

According to the PTO, “[n]one of the other disclosures in 

Focsaneanu cited by Cisco disclose[s] a change-over 

between modes during an active communication.” PTO 
CISCO SYSTEMS, INC. v. LEE 21

Br. 47. It maintains the “dynamic” selection occurs prior 

to placing a telephone call, and that the quality of service 

disclosure “simply permits the most appropriate channel 

to be selected after a call is made.” Id. 

This court need not resolve the parties’ arguments on 

anticipation; even if the Board was supported in finding 

Focsaneanu does not anticipate claims 91 and 104, it 

nevertheless erred in holding those claims are not invalid 

as obvious. According to the Board, the one limitation of 

underlying dependent claims 84 and 100 that is not 

disclosed in Focsaneanu is the change-over between line 

and packet switching during an existing communication, 

a limitation the Board found was disclosed by Jonas. 

Indeed, independent claims 84 and 100 are anticipated by 

Jonas, which therefore “disclose[s] each and every element” of those claims. In re Gleave, 560 F.3d 1331, 1334 

(Fed. Cir. 2009). Dependent claims 91 and 104 add only a 

multiplexer to their respective independent claims, and 

Cisco argued to the Board that “[t]here is nothing novel 

about a multiplexer.” J.A. 6847.

The Board nonetheless reasoned that claims 91 and 

104 would not have been obvious because “[t]he multiplexing disclosed in Focsaneanu is not disclosed to support 

changing-over between switching networks for data 

transfers having real-time properties.” J.A. 43. Claims 

91 and 104 do not require the multiplexer itself to “support changing-over between switching networks,” however. The claimed multiplexer resides in “the line switching 

device” and “multiplex[es] data of several origin end 

terminals over a single line connection through the lineswitching network.” ’902 patent col. 21 ll. 36–40; id. col. 

23 ll. 4–9 (emphases added). There is no requirement 

that the multiplexer itself trigger or support changingover between line switching and packet switching. According to the claim language, the multiplexer’s operation 

is limited to the line-switching network. That independent claims 84 and 100 recite changing-over between 
22 CISCO SYSTEMS, INC. v. LEE

packet switching and line switching does not mean claim 

91 and 104’s multiplexer must do the same, especially 

when the multiplexer is expressly limited to the lineswitching network. The Board found that Focsaneanu’s 

multiplexer is “used for multiplexing signals from different line interfaces,” J.A. 43, and claim 91 and 104’s multiplexer requires no more, especially under the broadest 

reasonable interpretation. Nor did the Board identify any 

other unique aspect of the ’902 patent’s multiplexer; 

rather, “[t]he technologies used [in the ’902 patent] are 

known per se.” ’902 patent col. 6 l. 56. 

Because the Board’s improper limitation of the 

claimed multiplexer was its sole reason for finding claims 

91 and 104 not obvious, the Board’s allowance of claims 

91 and 104 is reversed. Once the proper scope of claim 91 

and 104’s multiplexer is understood, it is apparent that 

including such a multiplexer in the combination of Focsaneanu, Lucent, and, inter alia, Jonas, is no more than “the 

predictable use of prior art elements according to their 

established functions.”15 KSR Int’l Co. v. Teleflex Inc., 

550 U.S. 398, 417 (2007). 

CONCLUSION

For the foregoing reasons, this court reverses the 

Board’s decision confirming the patentability of claims 91 

and 104, and affirms the Board in all other respects. 

AFFIRMED-IN-PART AND REVERSED-IN-PART

Costs to Cisco

15 Because claims 91 and 104 would have been obvious over the combination of Focsaneanu, Jonas, and 

Lucent, this court need not determine whether claim 91 

would also have been obvious over Focsaneanu, Yoshida, 

and Lucent.