IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ORCKIT CORPORATION,
`
`Plaintiff,
`
`Civil Action No. 2:22-CV-00276-JRG
`
`v.
`
`JURY TRIAL DEMANDED
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`CISCO’S PRELIMINARY SUBJECT MATTER ELIGIBILITY CONTENTIONS
`
`Pursuant to the Court’s Standing Order Regarding Subject Matter Eligibility Contentions
`
`Applicable to All Patent Infringement Cases Assigned to Chief District Judge Rodney Gilstrap and
`
`the Court’s First Amended Docket Control Order (D.I. 46), Defendant Cisco Systems, Inc.
`
`(“Cisco”) hereby sets forth its Preliminary Eligibility Contentions concerning U.S. Patent Nos.
`
`7,545,740 (“the ’740 Patent”), 8,830,821 (“the ’821 Patent”), and 10,652,111 (“the ’111 Patent”)
`
`(collectively, the “Ineligible Patents”). Plaintiff Orckit Corporation (“Orckit”) has asserted claims
`
`1–31 of the ’740 Patent, claims 1–20 of the ’821 Patent, and claims 1–9, 12–24, and 27–31 of the
`
`’111 Patent (collectively, the “Asserted Claims”). Cisco contends that each Asserted Claim is
`
`invalid under 35 U.S.C. § 101, among other statutes, because the Asserted Claims are directed to
`
`abstract ideas, do not include an inventive concept, and do not claim patent eligible subject matter.
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 1 of 56
`
`

`

`Among the Asserted Claims, Cisco contends that the following claims are representative
`
`of the Asserted Claims for purposes of these Subject Matter Eligibility Contentions:
`
`Patent Representative
`Claims
`Claim 17
`
`’740
`Patent
`
`Represented
`Asserted Claims
`1–31
`
`Abstract Idea
`
`Chart
`
`Selecting two parts of a
`communications path based on the
`same computation
`Selecting and reselecting a pair of
`communications paths based on cost
`Routing data based on information
`received from a controller
`
`A-1
`
`A-2
`
`A-3
`
`Claim 1
`
`Claim 1
`
`1–20
`
`1–9, 12–24, and
`27–31
`
`’821
`Patent
`’111
`Patent
`
`
`I.
`
`SCOPE OF THESE PRELIMINARY SUBJECT MATTER ELIGIBILITY
`CONTENTIONS
`
`These Preliminary Subject Matter Eligibility Contentions: (i) identify each exception to
`
`eligibility to which each Representative Claim (and by extension Asserted Claim) is directed,
`
`including Cisco’s supporting factual and legal bases; (ii) describe the industry in which the
`
`Representative Claims (and by extension Asserted Claims) are alleged to be well understood,
`
`routine, and conventional, including Cisco’s supporting factual and legal bases; (iv) describe why
`
`each Representative Claim (and by extension Asserted Claim) was well understood, routine, and
`
`conventional in the relevant industry, including Cisco’s supporting factual and legal bases; and (v)
`
`provide Cisco’s other factual and legal bases for its contention that the Representative Claims (and
`
`by extension Asserted Claims) are invalid under 35 U.S.C. § 101. These contentions relate only
`
`to subject matter eligibility, and do not include any contention or position beyond this issue (e.g.,
`
`other forms of invalidity, non-infringement, or claim construction).
`
`Cisco’s discovery and investigation in this lawsuit is ongoing, and these contentions are
`
`based on the information Cisco has obtained to date. Cisco reserves the right to supplement and/or
`
`amend its Preliminary Eligibility Contentions consistent with the Federal Rules of Civil Procedure,
`
`2
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 2 of 56
`
`

`

`the Local Rules, and any orders from the Court, including after the Court issues any Claim
`
`Construction Order.
`
`These Preliminary Eligibility Contentions are based upon Cisco’s present understanding of
`
`the Asserted Claims, Orckit’s November 3, 2022 Disclosure of Asserted Claims and Infringement
`
`Contentions Pursuant to P.R. 3-1, and Orckit’s January 19, 2023 First Amended Disclosure of
`
`Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1 (Orckit’s “Infringement
`
`Disclosures”). Cisco does not concede that any of Orckit’s (apparent) claim constructions are
`
`correct. If Orckit amends its Infringement Disclosures, Cisco reserves the right to update its
`
`Preliminary Eligibility Contentions.
`
`II.
`
`ORCKIT’S ALLEGED PRIORITY DATES
`
`Orckit contends that the ’740 Patent has a priority date of April 7, 2006, that the ’821 Patent
`
`has a priority date of June 22, 2011, and that the ’111 Patent has a priority date of April 22, 2014.
`
`See Orckit’s Infringement Disclosures at 3–4. Cisco contends that the Ineligible Patents can only
`
`claim priority to the respective filing dates of the earliest filed non-provisional application. In
`
`other words, the earliest possible priority date for the ’740 Patent is its filing date of April 7, 2006,
`
`the earliest possible priority date for the ’821 Patent is its filing date of December 5, 2011, and the
`
`earliest possible priority date for the ’111 Patent is its filing date of April 21, 2015.
`
`With respect to the ’821 and ’111 Patents, Orckit has not met its burden to demonstrate
`
`that these patents should be entitled to an earlier priority date than their filing dates.1 Pursuant to
`
`Local Patent Rule 3-2(b), Orckit is required to disclose “[a]ll documents evidencing the
`
`conception, reduction to practice, design, and development of each claimed invention, which were
`
`created on or before the date of application for the patent in suit … .” Orckit’s Infringement
`
`
`1 Orckit’s Infringement Disclosures treat the priority dates of the Ineligible Patents as a whole, and
`Orckit does not forward any claim-by-claim priority analysis.
`
`3
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 3 of 56
`
`

`

`Disclosures concede that Orckit has not identified any evidence corroborating a conception date
`
`earlier than the filing dates of the ’821 or ’111 Patents:
`
`
`
`Orckit’s Infringement Disclosures at 4 (annotation added).
`
`Orckit appears to claim priority to the provisional applications of the ’821 and ’111, but
`
`neither application supports priority of those patents because the provisional applications of the
`
`’821 and ’111 patents do not disclose each limitation of any claim of the ’821 or ’111 patents.
`
`For example, the provisional application of the ’821 Patent does not set forth an adequate
`
`written description or enable the claim scope alleged by Orckit of at least the following claim
`
`limitations: “determining an overall cost for each entity pair of said plurality of entities”;
`
`“selecting an entity pair from said plurality of transport entities based at least in part upon said
`
`overall cost; and”; “if an entity pair reselection event occurs, reselecting said entity pair from the
`
`group consisting of said entity pair and a replacement entity pair comprising at least one entity
`
`distinct from the entities of said entity pair”; “wherein said entity pair reselection event is selected
`
`from a group consisting of adding an entity to said plurality of transport entities, removing an
`
`entity from said plurality of transport entities, an operational status change for one of said plurality
`
`of transport entities, and a change in overall cost for one of said plurality of transport entities”;
`
`4
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 4 of 56
`
`

`

`“digital logic configured to select said working entity and said protection entity from said plurality
`
`of transport entity descriptors, comprising: logic configured to determine a probability of
`
`concurrent failure of said working entity and said protection entity”; “logic configured to
`
`determine an entity cost of said plurality of transport entity descriptors”; and “wherein said
`
`reselection event is selected from a group consisting of adding an entity to said plurality of
`
`transport entities, removing an entity from said plurality of transport entities, an operational status
`
`change for one of said plurality of transport entities, and a change in overall cost for one of said
`
`plurality of transport entities.”
`
`For example, the provisional application of the ’111 Patent does not set forth an adequate
`
`written description or enable the claim scope alleged by Orckit of at least the following claim
`
`limitations: “controller,” “instruction,” “sending, by the controller to the network node over the
`
`packet network, an instruction and a packet-applicable criterion”; “responsive to the packet not
`
`satisfying the criterion, sending, by the network node over the packet network, the packet to the
`
`second entity”; “responsive to the packet satisfying the criterion, sending the packet, by the
`
`network node over the packet network, to an entity that is included in the instruction and is other
`
`than the second entity”; “receiving, from the controller, the instruction and the criterion”;
`
`“checking if the packet satisfies the criterion; responsive to the packet not satisfying the criterion,
`
`sending over the packet network, the packet to the second entity”; and “responsive to the packet
`
`satisfying the criterion, sending the packet over the packet network, to an entity that is included in
`
`the instruction and is other than the second entity.”
`
`III.
`
`FACTUAL AND LEGAL BASES FOR SUBJECT MATTER ELIGIBILITY
`CONTENTIONS
`
`Cisco contends that the Representative Claims (and by extension Asserted Claims) are
`
`invalid under 35 U.S.C. § 101 because they are directed to abstract ideas and none of the elements,
`
`5
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 5 of 56
`
`

`

`or an ordered combination thereof, include an inventive concept. Exhibits A-1 through A-3
`
`identify in chart form: (i) each exception to eligibility to which each Representative Claim (and
`
`by extension Asserted Claim) is directed, including Cisco’s supporting factual and legal bases; (ii)
`
`which Representative Claim (and by extension Asserted Claim) is representative, including which
`
`Asserted Claims are represented by which Representative Claims; (iii) the industry in which the
`
`Representative Claims (and by extension Asserted Claims) are alleged to be well understood,
`
`routine, and conventional, including Cisco’s supporting factual and legal bases; (iv) why each
`
`Representative Claim (and by extension Asserted Claim) was well understood, routine, and
`
`conventional in the relevant industry, including Cisco’s supporting factual and legal bases; and (v)
`
`Cisco’s other factual and legal bases for its contention that the Representative Claims (and by
`
`extension Asserted Claims) are invalid under 35 U.S.C. § 101.
`
`IV. ACCOMPANYING DOCUMENT PRODUCTION
`
`Subject to the Court’s Standing Order Regarding Subject Matter Eligibility Contentions
`
`Applicable to All Patent Infringement Cases Assigned to Chief District Judge Rodney Gilstrap,
`
`Cisco has produced and/or made available for inspection—or will be producing and/or making
`
`available for inspection—the documents referenced in Exhibits A-1 through A-3.
`
`6
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 6 of 56
`
`

`

`
`
`
`
`Dated: February 2, 2023
`
`By:
`
`
`
`7
`
`/s/ Michael R. Rhodes .
`Tamir Packin (pro hac vice)
`tpackin@desmaraisllp.com
`Leslie Spencer (pro hac vice)
`lspencer@desmaraisllp.com
`Jordan Owens (pro hac vice)
`jowens@desmaraisllp.com
`Deborah Mariottini (pro hac vice)
`dmariottini@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Tel: (212) 351-3400
`Fax: (212) 351-3401
`
`Michael R. Rhodes (pro hac vice)
`mrhodes@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Tel: (415) 573-1900
`Fax: (415) 573-1901
`
`Jonathan Lewis (pro hac vice)
`jlewis@desmaraisllp.com
`DESMARAIS LLP
`1899 Pennsylvania Avenue, NW
`Washington, DC 20006
`Tel: (202) 415-4900
`Fax: (202) 415-4901
`
`Lead Counsel for Defendant CISCO
`SYSTEMS, INC.
`
`Melissa R. Smith
`GILLIAM & SMITH LLP
`303 South Washington Avenue
`Marshall, TX 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`melissa@gillamsmithlaw.com
`
`Local Counsel for Defendant CISCO
`SYSTEMS, INC
`
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 7 of 56
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that all counsel of record who are deemed to have
`
`consented to electronic service are being served with a copy of this document via email per Local
`
`Rule CV-5(a)(3) on February 2, 2023.
`
`
`Dated: February 2, 2023
`
`
`
`
`/s/ Michael R. Rhodes
`Michael R. Rhodes
`E-mail: mrhodes@desmaraisllp.com
`DESMARAIS LLP
`101 California Street
`San Francisco, CA 94111
`Telephone: 415-573-1900
`Facsimile: 415-573-1901
`
`8
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 8 of 56
`
`

`

`EXHIBIT A-1
`Cisco’s Preliminary Subject Matter Eligibility Contentions
`Orckit Corporation v. Cisco Sys., Inc., 2:22-cv-00276-JRG-RSP
`____________________________________________________________________________________________________________
`
`Subject Matter Eligibility Chart for U.S. Patent 7,545,740 (“the ’740 Patent”)
`
`
`As shown in the chart below, all Asserted Claims of the ’740 Patent are invalid under 35 U.S.C. § 101 because considered as a whole,
`they are directed to the abstract idea of selecting two parts of a communications path based on the same computation, and none of the
`elements, or an ordered combination thereof, include an inventive concept. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 218-24 (2014).
`More specifically, the asserted claims of the ’740 Patent were well understood, routine, and conventional, in the computer networking
`industry by April 7, 2006, the alleged earliest priority date of the ’740 Patent.
`
`These subject matter eligibility contentions are based on Cisco’s present understanding of the asserted claims, and Orckit’s apparent
`construction of the claims in its November 3, 2022 Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1,
`and its January 19, 2023 First Amended Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1 (Orckit’s
`“Infringement Disclosures”), which are deficient at least insofar as they fail to cite any documents or identify accused structures, acts,
`or materials in the Accused Products with particularity. Cisco does not agree with Orckit’s application of the claims, or that the claims
`satisfy the requirements of 35 U.S.C. § 112. Cisco’s contentions herein are not, and should in no way be seen as, admissions or adoptions
`as to any particular claim scope or construction, or as any admission that any particular element is met by any accused product in any
`particular way. Cisco objects to any attempt to imply claim construction from this chart. Cisco’s contentions are made in a variety of
`alternatives and do not represent its agreement or view as to the meaning, definiteness, written description support for, or enablement
`of any claim contained therein.
`
`The following contentions are subject to revision and amendment pursuant to Federal Rule of Civil Procedure 26(e), the Local Rules,
`and the Orders of record in this matter subject to further investigation and discovery regarding the prior art and the Court’s construction
`of the claims at issue.
`
`These Subject Matter Eligibility Contentions rely on evidence from the following sources:
`
`
` U.S. Patent App. No. 2006/0221974 to Hilla (CISCO00002754);
` U.S. Patent App. No. 2003/0147387 to Devi (CISCO00002642);
`
`1
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 9 of 56
`
`

`

` U.S. Patent App. No. 2004/0228278 to Bruckman (CISCO00061641);
` U.S. Patent App. No. 2003/0210688 to Basso (CISCO00061703);
` U.S. Patent App. No. 2006/0039366 to Ghosh (CISCO00002140);
` U.S. Patent App. No. 2004/0042448 to Lebizay (CISCO00061662);
` U.S. Patent No. 6,081,530 to Wiher (CISCO00001673);
`
`IEEE 802.3 Part 3: Carrier sense multiple access with collision detection (CSMA/CD) access method and physical layer
`specifications (CISCO00002820);
` Various references describing the Cisco EtherChannel System (see Cisco’s Preliminary Infringement Contentions at Chart C-3);
`and
` Various references describing the Cisco EtherSwitch System (see Cisco’s Preliminary Infringement Contentions at Chart C-5).
`
`
`
`
`
`
`2
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 10 of 56
`
`

`

`Notes
`
`Representative
`Claim
`For
`Claims 1–31;
`Direct To The
`Computer
`Networking
`Industry
`
`Exception
`
`Abstract
`Idea
`
`ʼ740 Patent
`Claim 17
`Apparatus
`for
`connecting
`a
`network
`node
`with
`a
`communication
`network,
`comprising: one
`or
`more
`interface
`modules, which
`are arranged to
`process
`data
`frames having
`frame attributes
`sent between the
`network
`node
`and
`the
`communication
`network at least
`one
`of
`said
`interface
`modules being
`operative
`to
`communicate in
`both
`an
`upstream
`direction and a
`downstream
`direction; a first
`group of first
`physical
`links
`
`Factual And Legal Bases
`
`The Supreme Court has set forth a two-step framework for evaluating whether an
`invention claims patent eligible subject matter. First, a court must “determine
`whether the claims at issue are directed to one of those patent-ineligible concepts”
`such as abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
`Second, if the claims are directed to an abstract idea, then a court must determine
`whether there is an “inventive concept,” which is an “element or combination of
`elements that is ‘sufficient to ensure that the patent in practice amounts to
`significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18.
`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
`(2012).)
`
`Here, all of the Asserted Claims of the ’740 Patent, including representative Claim
`17, are invalid. First, Claim 17 of the ’740 Patent is directed to the abstract idea of
`selecting two parts of a communications path based on the same computation. The
`elements of Claim 17 were well understood, routine, and conventional within the
`computer networking industry by April 7, 2006. Claim 17 is representative of the
`other Asserted Claims, Claims 1–16 and 18–31, because these claims are also all
`directed to the abstract idea of selecting two parts of a communications path based
`on the same computation and do not recite any inventive concepts beyond this
`abstract idea. Second, neither the other elements of Claim 17 (or the other asserted
`claims), nor the ordered combination of these other elements, include an inventive
`concept. Thus, representative Claim 17, and other asserted claims of the ’740 Patent,
`are invalid for claiming patent ineligible subject matter.
`
`Alice Step 1:
`Considered as a whole, Claim 17 of the ’740 Patent is directed to the abstract idea
`of selecting two parts of a communications path based on the same computation.
`
`Claim 17’s preamble recites an “[a]pparatus for connecting a network node with a
`communication network” and is directed to a communication path.
`
`
`3
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 11 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`in
`arranged
`parallel so as to
`couple
`the
`network node to
`the one or more
`interface
`a
`modules;
`second group of
`second physical
`links arranged
`in parallel so as
`to couple
`the
`one or more
`interface
`modules to the
`communication
`network; and a
`control module,
`which
`is
`arranged
`to
`select for each
`data frame sent
`between
`the
`communication
`network and the
`network node,
`in
`a
`single
`computation
`based on at least
`one of the frame
`attributes, a first
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`The next limitation of Claim 17 recites “one or more interface modules, which are
`arranged to process data frames having frame attributes sent between the network
`node and the communication network, at least one of said interface modules being
`operative to communicate in both an upstream direction and a downstream
`direction” and is directed to a well-known type of network device that can process
`well-known data frames and forward them in well-known network directions. This
`limitation does not contain any allegedly inventive concepts.
`
`The next limitation of Claim 17 recites “a first group of first physical links arranged
`in parallel so as to couple the network node to the one or more interface modules”
`and is directed to a first potential part of a communication path.
`
`The next limitation of Claim 17 recites “a second group of second physical links
`arranged in parallel so as to couple the one or more interface modules to the
`communication network” and is directed to a second potential part of a
`communication path.
`
`The next limitation of Claim 17 recites “and a control module, which is arranged to
`select for each data frame sent between the communication network and the network
`node” and is directed to selecting a communications path .
`
`The next limitation of Claim 17 recites “and the network node, in a single
`computation based on at least one of the frame attributes, a first physical link out of
`the first group and a second physical link out of the second group over which to
`send the data frame” and is directed to selecting two parts of a communications path,
`e.g., a first portion and a second portion, based on the same computation.
`
`The final limitation of Claim 17 recites “at least one of said first physical links and
`at least one of said second links being bi-directional links operative to communicate
`in both said upstream direction and said downstream direction” and is directed to
`using well-known links that send traffic in well-known network directions. This
`
`4
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 12 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`physical link out
`of the first group
`and a second
`physical link out
`of
`the second
`group
`over
`which to send
`the data frame;
`at least one of
`said
`first
`physical
`links
`and at least one
`of said second
`links being bi-
`directional links
`operative
`to
`communicate in
`both
`said
`upstream
`direction
`said
`downstream
`direction.
`
`and
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`limitation does not contain any allegedly inventive concepts.
`
`Thus, considered as a whole, representative Claim 17 of the ’740 Patent is directed
`to selecting two parts of a communications path based on the same computation.
`
`The computer networking elements recited in Claim 17 of the ’740 Patent were all
`well-known before April 7, 2006. The ’740 Patent itself explains that link
`aggregation, frame transmittal, bi-directional traffic, and organizing frames by
`frame attributes were all known before the purported invention of the ’740 Patent:
`“Link aggregation (LAG) is a technique by which a group of parallel physical links
`between two endpoints in a data network can be joined together into a single logical
`link (referred to as the “LAG group”). Traffic transmitted between the endpoints is
`distributed among the physical links in a manner that is transparent to the clients
`that send and receive the traffic. For Ethernet™ networks, link aggregation is
`defined by Clause 43 of IEEE Standard 802.3ad, Carrier Sense Multiple Access with
`Collision Detection (CSMA/CD) Access Method and Physical Layer Specifications
`(2002 Edition), which is incorporated herein by reference. Clause 43 defines a link
`aggregation protocol sub-layer, which interfaces between the standard Media
`Access Control (MAC) layer functions of the physical links in a link aggregation
`group and the MAC clients that transmit and receive traffic over the aggregated
`links. The link aggregation sub-layer comprises a distributor function, which
`distributes data frames submitted by MAC clients among the physical links in the
`group, and a collector function, which receives frames over the aggregated links and
`passes them to the appropriate MAC clients.” ’740 Patent at 1:10–30.
`
`The ’740 Patent’s purported invention is within the field of computer networking.
`The references that invalidate the ’740 Patent also relate to the field of computer
`networking. See generally Defendant’s Preliminary Invalidity Contentions at Exs.
`C-1 through C-10 and E-3.
`
`Under Alice step one, an idea is abstract if it has “no particular concrete or tangible
`
`5
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 13 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`form.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). Claims
`covering “generalized steps to be performed on a computer using conventional
`computer activity,” rather than a specific improvement to computer functionality,
`are directed to an abstract idea. In re TLI Commc’ns LLC Patent Litig., 823 F.3d
`607, 612 (Fed. Cir. 2016). Claim 17 recites a series of components that were well-
`known in the computer networking field from before the purported invention of the
`’740 Patent: network nodes, communication networks, interface modules, data
`frames, frame attributes, physical links, control modules, and bi-directional links.
`The ’740 Patent itself and other prior art references confirm that these network
`elements were well-known and not part of the purported inventive concept of the
`’740 Patent. See generally Defendant’s Preliminary Invalidity Contentions Exs. C-
`1 through C-10 and E-3.
`
`Claim 17 is not directed to the improvement of the network nodes, communication
`networks, interface modules, data frames, frame attributes, physical links, control
`modules, or bi-directional links. Instead, Claim 17 is directed to the abstract idea
`of selecting two parts of a communications path based on the same computation.
`The Federal Circuit has recognized that to test if an idea is abstract, it is instructive
`to compare the claims at issue to claims already found to be directed to an abstract
`idea in previous cases. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
`1359, 1362 (Fed. Cir. 2015).
`
`Other courts have found that similar technologies are directed to patent ineligible
`abstract ideas. Some examples of cases that found similar abstract ideas include:
`Magnacross LLC v. OKI Data Americas, Inc., No. 3:20-CV-01959-M, 2022 WL
`992595, (N.D. Tex. Mar. 31, 2022); Two-Way Media Ltd. v. Comcast Cable
`Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017); Elec. Power Grp., LLC v.
`Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Intellectual Ventures I LLC v.
`Symantec Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016); and Intellectual Ventures II
`LLC v. Sprint Spectrum, L.P., 2019 WL 7580245, at *4 (E.D. Tex. 2019).
`
`
`6
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 14 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`Thus, the ’740 Patent’s allegedly inventive concept, selecting two parts of a
`communications path based on the same computation, is an abstract idea that is not
`directed to an improvement in any of the well-known networking devices recited in
`Claim 17, and the ’740 Patent is invalid under Alice step 1.
`
`Alice Step 2:
`
`Neither the other elements of Claim 17, nor the ordered combination of these other
`elements, include an inventive concept. As explained above, all of the claimed
`elements, including the network nodes, communication networks, interface
`modules, data frames, frame attributes, physical links, control modules, or bi-
`directional links, were well-known in the field of computer networking at the time
`of the ’740 Patent. As further explained above, the ’740 Patent admits that these
`elements were well-known, and the prior art confirms that fact.
`
`Additionally, the claimed architecture and order of claim elements was also well-
`known at this time. As shown below, this ordered combination of elements was
`well-known in the prior art:
`
`For example, Hilla discloses this architecture and combination from before the ’740
`Patent.
`
`
`7
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 15 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`Hilla Fig. 2 (annotation added).
`
`As another example, Devi discloses this architecture and combination from before
`the ’740 Patent.
`
`
`
`8
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 16 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`
`
`Factual And Legal Bases
`
`Notes
`
`
`
`Devi Fig. 1 (annotation added).
`
`As another example, the Cisco EtherChannel System discloses this architecture and
`combination from before the ’740 Patent.
`
`9
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 17 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`
`
`Factual And Legal Bases
`
`Notes
`
`Cisco EtherChannel System (citing Cisco Catalyst 6500 Data Sheet at Figure 6;
`annotated).
`
`As another example, IEEE 802.3 discloses this architecture and combination from
`before the ’740 Patent.
`
`
`
`
`10
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 18 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`IEEE 802.3 at Figure 43-2 (annotation added)
`
`As another example, Bruckman discloses this architecture and combination from
`before the ’740 Patent.
`
`
`
`
`11
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 19 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`“communication
`network”
`
`“interface modules”
`
`“second
`group of
`second
`physical
`links”
`
`“first group of
`first physical links”
`
`Bruckman Fig. 1 (annotation added).
`
`As another example, Basso discloses this architecture and combination from before
`the ’740 Patent.
`
`
`12
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 20 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`Basso Fig. 4 (annotation added).
`
`An another example, Ghosh discloses this architecture and combination from before
`the ’740 Patent..
`
`
`
`
`13
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 21 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`Ghosh Fig. 8 (annotation added).
`
`As another example, Lebizay discloses this architecture and combination from
`before the ’740 Patent.
`
`
`
`
`14
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 22 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`Lebizay Fig. 4 (annotation added).
`
`As another example, Wiher ’530 discloses this architecture and combination from
`before the ’740 Patent.
`
`
`
`
`15
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 23 of 56
`
`

`

`ʼ740 Patent
`Claim 17
`
`Exception
`
`Factual And Legal Bases
`
`Notes
`
`
`
`Wiher ’530 at Fig. 2 (annotation added).
`
`
`
`16
`
`Orckit Exhibit 2020
`Cisco Systems v. Orckit Corp.
`IPR2023-00554, Page 24 of 56
`
`

`

`EXHIBIT A-2
`Cisco’s Preliminary Subject Matter Eligibility Contentions
`Orckit Corporation v. Cisco Sys., Inc., 2:22-cv-00276-JRG-RSP
`____________________________________________________________________________________________________________
`
`Subject Matter Eligibility Chart for U.S. Patent 8,830,821 (“the ’821 Patent”)
`
`
`As shown in the chart below, all Asserted Claims of the ’821 Patent are invalid under 35 U.S.C. § 101 because considered as a whole,
`they are directed to the abstract idea of selecting and reselecting a pair of communications paths based on cost, and none of the elements,
`or an ordered combination thereof, include an inventive concept. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 218-24 (2014). More
`specifically, the asserted claims of the ’821 Patent were well understood, routine, and conventional, in the computer networking industry
`by June 22, 2011, the alleged earliest priority date of the ’821 Patent.
`
`These subject matter eligibility contentions are based on Cisco’s present understanding of the asserted claims, and Orckit’s apparent
`construction of the claims in its November 3, 2022 Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1,
`and its January 19, 2023 First Amended Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1 (Orckit’s
`“Infringement Disclosures”), which are deficient at least insofar as they fail to cite any documents or identify accused structures, acts,
`or materials in the Accused Products with particularity. Cisco does not agree with Orckit’s application of the claims,