NOTE: This disposition is nonprecedential.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 Trade-
mark 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 Pa-
tent 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 Integra-
tions 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 Red-
wood 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 pa-
tent”). 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 contem-
plates transfer of “any type of data,” including “audio
data, video data or computer files,” 

ll. 45–46, and
is particularly useful in Internet telephony, 

ll. 3–
4.    A conventional telephone transmission uses line
switching, whereas the Internet uses packet switching. A
line-switching connection has fixed bandwidth and trans-
fers data continuously and without delay. 

ll. 46–
60.    Line-switching connections are costly, however,
because the connection must be maintained even when no
data is being transferred. 

ll. 56–58. Packet
switching transmits data in data packets. It is less ex-
pensive, but can cause significant time delays when there
is a large amount of data to be transmitted. 

ll.
18–25.




    1   For convenience, this court will refer to former pa-
tent owner Teles, even though Sigram Schindler Be-
teiligungsgesellschaft 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 com-
munication, 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 packet-
switching, and combine the functions of a line-switch and
a packet-switch.” 

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.” 

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. 

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. 

ll. 25–39. Importantly, the
transfers between line switching and packet switching
occur “without interrupting the connection” between the
servers. 

ll. 25–28.
    A telecommunications network according to the ’902
patent includes multiple switches 7, each of which com-
prises a packet switch 72 and a line switch 73.
CISCO SYSTEMS, INC.   v. LEE                             5

Control device 71 produces internal control
commands to direct data either through packet switch 72
or line switch 73. 

ll. 59–65. The network man-
agement system or a user can use an end terminal or
another switch to trigger control signals from the control
device 71. 

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. 

ll. 41–47. For in-
stance, when the control device 711 detects that packet
switching is “understepping or exceeding a certain band-
width and/or in the event of a time delay,” it can change
over to line switching. 

68 recites:
    68. Switching apparatus for selectively routing a
    telephone call from a first end terminal to a sec-
    ond 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 deliv-
    ery 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 sec-
    ond end terminal;
    a device for establishing a connection to a line-
    switching network through which data can be sent
    for delivery to the second end terminal;
    means for transferring second data of the tele-
    phone 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 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, wherein said control signal is produced
    by a network management system.

8 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 multiplex-
ing data of several origin end terminals over a single line
connection through the line-switching network.” 2 

1 ll. 38–40; see also 

ll. 6–8 (substantially the
same, except the connection must be “through the public
telephone network”).



    2    Claims 84 and 100 cover similar switching appa-
ratuses, 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 re-
quest for inter partes reexamination. Five references are
most relevant to this appeal: Jonas, 3 Farese, 4 Matsuka-
wa, 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 packet-
switched 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 trans-
mission over the public telephone network.
8                                  CISCO SYSTEMS, INC.   v. LEE



    The fifth reference, Focsaneanu, discloses a multi-
service access platform that allows a plurality of comput-
ers (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. 

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 anticipa-
tion, 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 interpre-
tation of those terms includes D- and B- channels of



    9   Teles and Cisco are also involved in an infringe-
ment 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 trans-
ferring 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 “chang-
ing-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 af-
firmed the Examiner’s rejections of claims 68, 69, 71, 75,
77, 79, 82, 84, 87, 90, 92, 95, 98, 100, and 102 as antici-
pated by Jonas. Some of these claims were also rejected
as anticipated by Farese, Matusaka, and Yoshida, alt-
hough 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 rejec-
tions based on Focsaneanu. It determined Focsaneanu
does not meet the limitation of changing-over between
packet and line switching during an active communica-
tion, 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 Lucent 10 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 al-
lowance 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 connec-
tion.” 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



     10Lucent Technologies, Lucent Technologies an-
nounces 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., 

, 1364 (Fed. Cir. 2004) (internal
quotation marks and citation omitted). “‘[C]laim con-
struction by the PTO is a question of law that we review
de novo . . . .’” Rambus Inc. v. Rea, 

, 1252
(Fed. Cir. 2013) (quoting In re Baker Hughes Inc., 

, 1301 (Fed. Cir. 2000)).
    Anticipation under 35 U.S.C § 102 is a question of
fact. In re Rambus, 

, 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, 

, 1330 (Fed. Cir. 2012). The
Board’s factual findings are reviewed for substantial
evidence, and questions of law are reviewed without
deference. 

                 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 net-
works, respectively, because the D- and B-channels are
12                                 CISCO SYSTEMS, INC.   v. LEE



part of the same network, not two independent net-
works. 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 packet-
switching 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 line-
switching 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 packet-
switching 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 net-
work” 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, respec-
tively,] can be mounted . . . at different points in the
telecommunications network.” ’902 patent col. 7 ll. 48–49
(emphasis added). Moreover, the fact that packet switch-
ing and line switching are “quite different[ ]” from each
other, 

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 packet-
switching 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],” 

ll. 1–2,
but does not state that the packet-switching network
cannot be another channel in the ISDN network. Alt-
hough “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 packet-
switching network and line-switching network includes a
single telecommunications network with multiple chan-
nels, 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 tel-
ephone call” and/or “data transfer with real-time proper-
ties.” Claim 68, for example, recites a “[s]witching
apparatus for selectively routing a telephone call,” com-
prising, 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.” 

0 ll.
63–64 (emphasis added). The Board determined that both
limitations require only “a structure capable of perform-
ing the function” of sustaining a telephone call or provid-
ing real-time properties. J.A. 21 (citing Hewlett-Packard
Co. v. Bausch & Lomb Inc., 

, 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 communica-
tions connections with a communications time delay of
less than 0.5 seconds.” Teles’s Br. 40. The proper con-
struction, according to Teles, must “exclude the transfer of
anonymous bulk data with unspecified/non-real-time
delay requirements.” 

its argument on the
portion of the specification stating that “‘[w]ith Internet
telephony, a cost-conscious caller uses the normal Inter-
net with approximately 8 kbit/s bandwidth and a time
delay of 0.5 seconds.’” 

(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 diffi-
culties 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. 

l. 18–25 (“When the Internet is
overloaded, the time delay of the individual packets
becomes so great that an acceptable conversation connec-
tion 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., 

, 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 communica-
tions 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 solu-


    12  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 Collab-
orative Servs. v. Prometheus Labs., Inc., 

,
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.” 

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 interrup-
tion’ of ‘the communications connection’ / ‘the call set-up
procedure.’” 

    Contrary to Teles’s argument, the Board had no obli-
gation 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 ongo-
ing 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-to-
end-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 correspond-
ing structure of the “control device 711.”
     Teles’s claim construction arguments are its sole chal-
lenges 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 rejec-
tions.
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 inde-
pendent claim 100 and its dependent claim 102 as antici-
pated by Jonas. Claim 100 recites, inter alia, “a control
device,”
    the control device being responsive to the data
    packet headers for controlling the packet switch-
    ing device and the line switching device for estab-
    lishing      and       maintaining         respective
    communication connections for data transfer with
    real-time properties between origin end terminals
    and destination end terminals, and the control de-
    vice also being responsive to an overload in the In-
    ternet for automatically changing-over from
    packet-switching transfer of first data of a com-
    munications connection to line-switching transfer
    of second data of the communication connection
    without interruption of the communications con-
    nection when a data blockage occurs in the routing
    of data packets of the first data of the communica-
    tions 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 rejec-
tion 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” argu-
ments), 7154–56 (arguing Jonas does not disclose the
limitations of claim 68). “Absent exceptional circum-
stances,” this court does not consider arguments not
18                                CISCO SYSTEMS, INC.   v. LEE



raised before the Board. In re Baxter Int’l, Inc., 

, 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 exist-
ing 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., 

, 809 (7th Cir. 1998) for the proposi-
tion 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 termi-
nals over a single line connection through the line-
switching network.” ’902 patent col. 21 ll. 37–40 (claim
91); 

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 reexamina-
tion argued these claims should be rejected as anticipated
by Focsaneanu, or, alternatively, as obvious over Focsa-
neanu 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 an-
ticipated 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 re-
quired by claims 91 and 104. J.A. 25 (“The one embodi-
ment of Foscaneanu [sic] that clearly talks about change-
over 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 de-
clining 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 antici-
pated by Focsaneanu, and would have been obvious over
Focsaneanu, Jonas (or Yoshida), and Lucent. With re-
spect to anticipation, Cisco argues Focsaneanu discloses
changing-over between packet and line switching during
an active transmission, and that the Board lacked sub-
stantial 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 packet-
ized 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 continu-
ous 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.” 

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 ele-
ment” of those claims. In re Gleave, 

, 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 multiplex-
ing 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 “sup-
port changing-over between switching networks,” howev-
er. 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 line-
switching network.” ’902 patent col. 21 ll. 36–40; 

ll. 4–9 (emphases added). There is no requirement
that the multiplexer itself trigger or support changing-
over between line switching and packet switching. Ac-
cording to the claim language, the multiplexer’s operation
is limited to the line-switching network. That independ-
ent 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 line-
switching network. The Board found that Focsaneanu’s
multiplexer is “used for multiplexing signals from differ-
ent line interfaces,” J.A. 43, and claim 91 and 104’s mul-
tiplexer 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 Focsa-
neanu, 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.,

, 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




     15Because claims 91 and 104 would have been obvi-
ous 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.