Petition for Inter Partes Review of
`U.S. Patent No. 8,155,298 B2
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 8,155,298 B2
`Filing Date: Jul. 5, 2006
`Issue Date: Apr. 10, 2012
`
`TANDEM ACCESS CONTROLLER WITHIN THE PUBLIC SWITCHED
`TELEPHONE NETWORK
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,155,298 B2
`
`Inter Partes Review No. 2016-01252
`
`
`
`
`

`
`
`I.
`II.
`
`III.
`IV.
`V.
`
`VI.
`
`VII.
`
`TABLE OF CONTENTS
`
`PAGE
`
`A.
`B.
`C.
`D.
`
`INTRODUCTION ................................................................................ 1
`MANDATORY NOTICES UNDER 37 C.F.R ................................... 2
`Real Party-In-Interest under 37 C.F.R ................................................. 2
`Related Matters under 37 C.F.R ........................................................... 4
`Lead and Back-Up Counsel under 37 C.F.R ........................................ 5
`Service Information under 37 C.F.R .................................................... 6
`PAYMENT OF FEES - 37 C.F.R ........................................................ 6
`GROUNDS FOR STANDING UNDER 37 C.F.R .............................. 6
`REASONS FOR REQUESTED RELIEF (37 C.F.R ........................... 6
`Summary of the ’298 Patent ................................................................. 7
`A.
`Prosecution History .............................................................................. 9
`B.
`Claim Construction Under 37 C.F.R .................................................. 11
`C.
`D. A POSA’s Level of Skill in the Art ................................................... 11
`E.
`State of the Art ................................................................................... 12
`1.
`Circuit-Switched and Packet-Switched Communication
`Networks .................................................................................. 12
`PSTN Architecture ................................................................... 13
`2.
`PSTN Call Components – Signaling and Media ..................... 14
`3.
`PSTN Call Features and Intelligent Networks ......................... 15
`4.
`VoIP and Internet Telephony ................................................... 16
`5.
`6. Web-Based Call Feature Selection .......................................... 16
`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R ............ 18
`Challenged Claim and Statutory Grounds for Challenges ................. 18
`HOW THE CHALLENGED CLAIM ARE UNPATENTABLE
`(37 C.F.R ............................................................................................ 19
`Summary of Asserted References ...................................................... 19
`1.
`Archer ....................................................................................... 19
`2.
`Chang ....................................................................................... 20
`
`A.
`
`A.
`
`i
`
`

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`
`
`B.
`C.
`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`Combinability of Archer and Chang .................................................. 20
`Independent Claim 1 is Obvious Under Ground 1 ............................. 21
`1.
`Claim 1[pre] – preamble ([i]-[v] added) .................................. 21
`2.
`Claim limitation 1[a] – Facilitating access ([i]-[iii] added) ..... 42
`3.
`Claim limitation 1[b] – Executing control criteria ([i]-[ii]
`added) ....................................................................................... 51
`Claim limitation 1[c] – Receiving a message .......................... 53
`Claim limitation 1[d] – Validate and acknowledge
`request ...................................................................................... 54
`Claim limitation 1[e] – Determine control criteria .................. 57
`Claim limitation 1[f] – Select a routing path ........................... 58
`Claim limitation 1[g] – Route the communication .................. 59
`Claim limitation 1[h] – Complete the communication link ..... 59
`
`6.
`7.
`8.
`9.
`
`4.
`5.
`
`ii
`
`

`
`
`
`Exhibit Number
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`
`1030
`1031
`
`1032
`
`List of Exhibits Cited in this Petition
`
`Document
`U.S. Patent No. 8,115,298 (“the ’298 patent”)
`Expert Declaration of Dr. Thomas La Porta (“TLP”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`U.S. Patent No. 7,764,777 (“the ’777 patent”)
`U.S. Patent No. 8,457,113 (“the ’113 patent”)
`File history of U.S. Patent No. 8,115,298
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`WO 97/23899 to Harris (“Harris”)
`U.S. Patent No. 5,802,160 to Kugell
`U.S. Patent No. 5,206,901 to Harlow
`U.S. Patent No. 6,353,660 to Burger
`WO 98/54913 to Arkko
`U.S. Patent No. 5,434,852 to La Porta
`U.S. Patent No. 6,463,145 to O’Neal
`ITU-T Recommendation H.323 (“H.323”) (02/98)
`ITU-T Recommendation H.225 (“H.225”) (09/99)
`ITU-T Recommendation Q.1211 (“Q.1211”) (03/93)
`ITU-T Recommendation Q.1215 (“Q.1215”) (10/95)
`ITU-T Recommendation Q.1221 (“Q.1221”) (09/97)
`ITU-T Recommendation H.245 (“H.245”) (09/98)
`Request for Comments - SIP: Session Initiation Protocol
`(March 1999) (“SIP”)
`Tech Report CUCS-002-99 Implementing Intelligent
`Network Services with the Session Initiation Protocol
`Low, The Internet Telephony Red Herring (1996)
`Modarressi, An Overview of Signaling System No. 7 (1992)
`Crumlish, The ABCs of the Internet
`Helmstetter, Increasing Hits and Selling More on your Web
`Site (1997)
`Comer, Internetworking with TCP/IP 2d, Vol. I (1991)
`Judson, netmarketing – How Your Business Can Profit from
`the Online Revolution (1996)
`Newton’s Telecom Dictionary 15th ed. (Aug. 1999)
`
`iii
`
`

`
`Document
`Random House Webster’s Computer & Internet Dictionary
`3rd ed. (1999)
`Request for Comments – The TLS Protocol (Jan. 1999)
`Request for Comments – Hypertext Transfer Protocol –
`HTTP/1.1 (June 1999)
`ITU-T Recommendation Q.931 (“Q.931”) (05/98)
`Engineering and Operations in the Bell System (1984)
`Thӧrner, Intelligent Networks (1994)
`U.S. Patent No. 5,473,679 (“La Porta”)
`U.S. Patent No. 5,509,010 (“La Porta”)
`U.S. Patent No. 5,563,939 (“La Porta”)
`U.S. Patent No. 5,659,544 (“La Porta”)
`U.S. Patent No.5,943,408 (“Chen”)
`U.S. Patent No. 6,081,715 (“La Porta”)
`U.S. Patent No. 6,298,039 (“Buskens”)
`SEC Form S-1, Net2Phone, Inc. (May 1999)
`Terplan, The Telecommunications Handbook (1999)
`Lakshmi-Ratan, The Lucent Technologies Softswitch—
`Realizing the Promise of Convergence (April-June 1999)
`Tanenbaum, Computer Networks 3rd ed. (1996)
`IBM PCjr The easy one for everyone (1983)
`PacketCable™ 1.0 Architecture Framework Technical
`Report (1999)
`Table of pending applications related to the ’298 patent
`
`
`
`iv
`
`
`
`
`
`Exhibit Number
`1033
`
`1034
`1035
`
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`1048
`
`1049
`1050
`1051
`
`1052
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
`
`I.
`
`INTRODUCTION
`Petitioners request inter partes review of claim 1 (“Challenged Claim”) of
`
`U.S. Patent No. 8,155,298 (EX1001) (“’298 patent”), assigned to Focal IP, LLC.
`
`Petitioners respectfully submit that the Challenged Claim is unpatentable as
`
`obvious over the prior art references discussed herein. This Petition demonstrates
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`by a preponderance of the evidence that there is a reasonable likelihood that
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`Petitioners will prevail with respect to this claim. Accordingly, it is respectfully
`
`requested that the Board institute an inter partes review of the Challenged Claim
`
`pursuant to 37 C.F.R. § 42.108.
`
`The ’298 patent relates to user-selected call features in telephone
`
`communications, such as call forwarding or call blocking. The Challenged Claim
`
`of the ’298 patent discloses methods to allow users to set these call features using a
`
`web server, rather than the traditional way—by dialing “star codes,” such as “*72”
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`to forward calls. During prosecution of the ’298 patent, the applicants also
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`distinguished over prior art references that disclosed implementing the call features
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`using a web server in a user’s local telephone office, rather than at a central
`
`location in the telephone network. See, e.g. EX1008, 1685-86.
`
`Years prior to the ’298 patent’s earliest filing date, web-based systems that
`
`allowed users to set call features were known. EX1003, EX1004, EX1005. These
`
`systems allowed users to access and set call features like call forwarding and call
`
`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`blocking over the Internet. Id. These same systems also implemented the control of
`
`these user-set call features outside of the user’s local edge switch. Id. Much of this
`
`art, unfortunately, was not in front of the Patent Office during prosecution of the
`
`’298 patent. If this art had been before the Patent Office, the Challenged Claim
`
`would not have issued.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Petitioner Bright House Networks, LLC identifies Bright House Networks,
`
`LLC and Charter Communications, Inc. as real parties in interest. Additionally,
`
`Bright House Networks, out of an abundance of caution based on certain decisions
`
`from the PTAB describing the test for real-parties-in-interest, identifies Cisco
`
`Systems, Inc., Broadsoft, Inc., Siemens Communications, Inc. Petitioner Bright
`
`House is aware of a number of related entities, including predecessor, and
`
`successor entities: Nokia Solutions and Networks US, LLC, Nokia Siemens
`
`Networks US, LLC, Nokia Corp., Nokia Solutions and Networks Holdings USA,
`
`NS Networks, LLC, Nokia Networks Inc., Nokia USA Inc., Nokia, Inc., Alcatel-
`
`Lucent USA Inc., Alcatel-Lucent Holdings Inc., Alcatel USA Holdings Corp.), and
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`Sonus Networks, Inc. as potential real parties in interest to Petitioner Bright House
`
`Networks, LLC. However, none of these companies have participated in any way
`
`in the preparation of, the funding of, or the evaluation of the present Petition; nor
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`2
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`have any of these companies attempted to exercise control over the related
`
`litigation nor the present Petition nor contributed funding to the present Petition. It
`
`should also be noted that none of these companies have agreed to be listed as a real
`
`party in interest for this Petition.
`
`Petitioners WideOpenWest Finance, LLC (“WOW”) and Knology of
`
`Florida, Inc. (“KOF”) identify WideOpenWest Finance, LLC, Knology of Florida,
`
`Inc., and Data Connection Ltd. d/b/a Metaswitch Networks as real parties in
`
`interest. Additionally, WOW and KOF, out of an abundance of caution based on
`
`certain decisions from the PTAB describing the test for real-parties-in-interest,
`
`identify WOW’s parent company Racecar Holdings, LLC and majority equity
`
`holders Avista Capital Partners and Crestview Partners, and KOF’s parent
`
`companies Knology, Inc. and Kite Parent Corp., as potential real-parties in interest
`
`to WOW and KOF. However, none of these companies have participated in any
`
`way in the preparation of, the funding of, or the evaluation of the present Petition;
`
`nor have any of these companies attempted to exercise control over the related
`
`litigation nor the present Petition nor contributed funding to the present Petition. It
`
`should also be noted that none of these companies have agreed to be listed as a real
`
`party in interest for this Petition.
`
`Petitioner Birch Communications, Inc. identifies Birch Communications,
`
`Inc. and Birch Communications Holdings, Inc. as real-parties-in-interest.
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`Additionally, Birch Communications, Inc., out of an abundance of caution based
`
`on certain decisions from the PTAB describing the test for real-parties-in-interest,
`
`identifies Broadsoft, Inc., Sonus Networks, Inc., Data Connection Ltd. d/b/a
`
`Metaswitch Networks, Acme Packet, Inc. (Petitioner Birch Communications is
`
`aware of successor Oracle Corp. through acquisition), Holcombe T. Green, Jr., and
`
`R. Kirby Godsey, as potential real-parties in interest to Birch Communications,
`
`Inc. However, none of these companies have participated in any way in the
`
`preparation of, the funding of, or the evaluation of the present Petition; nor have
`
`any of these companies attempted to exercise control over the related litigation nor
`
`the present Petition nor contributed funding to the present Petition. It should also
`
`be noted that none of these companies have agreed to be listed as a real-party-in-
`
`interest for this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`Case
`(Patent Asset Licensing LLC v.) Opposing Party
`3:15-cv-00742 (M.D. Fla.) Bright House Networks, LLC
`3:15-cv-00744 (M.D. Fla.) YMAX Corp.
`T3 Communications, Inc.
`3:15-cv-00747
`3:15-cv-00743 (M.D. Fla.) WideOpenWest Finance, LLC et al.
`Birch Communications, Inc.
`3:15-cv-00746
`IPR Petition of ’113 patent by Cisco Systems, Inc.
`IPR2016-1254
`IPR Petition of ’113 patent by Cisco Systems, Inc.
`IPR2016-1257
`
`
`Petitioners will concurrently file a related petition for Inter Partes Review of
`
`claim 20 of the ’298 patent asserting similar grounds. Because the issues and prior
`
`4
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`art substantially overlap, Petitioners ask the Board to consider the two petitions
`
`together.
`
`Petitions for Inter Partes Review of related U.S. 7,764,777 and 8,457,113
`
`will also be filed concurrently with this Petition. Also related is the pending
`
`prosecution of U.S. App. No. 14/737,243, filed June 11, 2015 (see EX1052).
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Lead Counsel:
`Back-up Counsel:
`Britton F. Davis (pro hac vice to
`Wayne O. Stacy (Reg. No. 45,125)
`Cooley LLP
`be filed)
`380 Interlocken Crescent, Ste. 900
`Cooley LLP
`Broomfield, CO 80021
`380 Interlocken Crescent, Ste. 900
`Tel: 720-566-4125
`Broomfield, CO 80021
`Fax: 720-566-4099
`Tel: 720-566-4125
`wstacy@cooley.com
`Fax: 720-566-4099
`
`bdavis@cooley.com
`
`Cooley LLP
`Patrick McPherson (Reg. No. 46,255)
`1299 Pennsylvania Ave., NW, Suite 700
`Duane Morris LLP
`Washington, DC 20004
`505 9th St. NW, Ste 1000
`T: (703) 456-8000/F: (202) 842-7899
`wstacy@cooley.com
`Washington DC 20004
`bdavis@cooley.com
`Tel: 202-776-5214
`zBrightHousePatentAsset@cooley.com
`Fax: 202-776-7801
`
`PDMcPherson@duanemorris.com
`
`Christopher Tyson (Reg. No. 63,850)
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
`
`
`
`5
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
`
`Kyle Lynn Elliott (Reg. No. 39,485)
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
`
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Please direct all correspondence to lead and back-up counsel at the above
`
`
`
`addresses. Petitioners consent to electronic service at the email addresses above.
`
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103
`This Petition requests inter partes review of one claim of the ’298 patent and
`
`is accompanied by a request fee payment of $23,000. See 37 C.F.R. § 42.15. This
`
`petition meets the fee requirements under 35 U.S.C. § 312(a)(1). Payment is
`
`authorized for any additional fees due in connection with this Petition to be
`
`charged to Deposit Account 501283.
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Petitioners certify the ’298 patent is eligible for inter partes review and that
`
`each Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the Challenged Claim on the grounds identified within this Petition.
`
`V. REASONS FOR REQUESTED RELIEF (37 C.F.R. §§ 42.22 AND 42.104(B))
`As explained in §§VII of this Petition and in the attached Declaration of
`
`Petitioners’ Expert, Dr. Thomas La Porta (“La Porta”) (EX1002, “TLP”), the
`
`methods claimed in the Challenged Claim are obvious over the prior art.
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`Specifically, this Petition and La Porta explain where each element is found in the
`
`prior art and why each claim would have been obvious to a person of ordinary skill
`
`in the art (“POSA”) at the time of the invention. See §VII. This Petition and La
`
`Porta also describe additional prior art references to provide a technology
`
`background as of the earliest possible filing date of the ’298 Patent, further
`
`explanation as to why a person of ordinary skill in the art (POSA) would combine
`
`the teachings of the cited references, and support for why a POSA would have a
`
`reasonable expectation of success in such combinations.
`
`Summary of the ’298 Patent
`
`A.
`The ’298 patent is a continuation of application no. 10/426,279, filed on
`
`April 30, 2003, which itself is a continuation-in-part of application no. 10/565,565,
`
`filed May 4, 2000, the ’298 patent’s earliest possible filing date. 1
`
`The ’298 patent relates generally to systems and methods for allowing
`
`telephone service subscribers to select call features using the Internet and for
`
`1 The priority date for the Challenged Claim is not put at issue by the prior art
`
`references relied upon in this Petition and is therefore assumed to be May 4, 2000,
`
`for purposes of this proceeding only. See EX1001. However, Patent Owner has
`
`alleged it may be entitled to a priority date as early as June 1, 1999. The invalidity
`
`analysis and opinions presented in this Petition are the same under either date. TLP
`
`¶¶27, 36.
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`providing connections between the PSTN and VOIP networks. EX1001, 1:20-23,
`
`12:46-13:35, 14:60-15-28, cl. 20; TLP ¶¶91-94. The ’298 patent acknowledges that
`
`prior art systems existed to allow a telephone service subscriber to add, modify,
`
`and/or control, the telephony features of his or her own telephone service using the
`
`Internet. EX1001, 1:31-38, 1:57-60, 2:1-13, 2:23-24, 2:48-50, 3:31-32, 4:64-5:4,
`
`6:52-53. Call features that the ’298 patent acknowledges were well known include
`
`“conditional call blocking, call forwarding, call altering, time-of-day conditions,
`
`day-of-week conditions, follow-me, caller recognition/ password, caller ID, call
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`screening/retrieval from voice mail, speed dialing, interactive voice response, and
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`speech recognition.” EX1001, 5:42-50 see also id. 2:4-6, 2:15, 2:38-40, 7:1-4. The
`
`’298 patent also acknowledges that “Voice over Internet Protocol (VoIP) products
`
`emerging that provide better user interfaces and control.” EX1001, 2:48-50; TLP
`
`¶91.
`
`The ’298 patent states that problems with these systems related to either the
`
`location of where the call features were applied—in the terminating central office
`
`edge switches of telephone service providers or through subscriber edge devices,
`
`such as phones or public branch exchanges (PBX)—(id., 1:60-64, 2:6-13, 2:38-48;
`
`see also id. at 2:14-19, 3:26-28; TLP ¶¶91-94)—or the type of providers that
`
`offered the services—web-based toll systems that rely upon the toll network
`
`through the use of “800” numbers. Id., 1:38-41, 2:23-30, 3:32-36; TLP ¶¶91-94.
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`The ’298 patent’s solution for the claimed invention was to provide web-
`
`based call selection features through a controller connected to a tandem switch
`
`rather than an edge switch, to provide the telephony features. EX1001, 1:65-67,
`
`3:24-28; 3:44-48, 3:36-37, 4:52-66, 5:21-42; TLP ¶93. The ’298 patent discloses
`
`that its controller and system uses known technologies and conventional computer
`
`and telephony equipment. EX1001, 1:31-34, 1:38, 1:43-48, 2:48-51, 3:31-32, 4:15-
`
`24, 4:55-5:4, 5:27-32, 5:33-40, 5:41-50, 5:53, 6:10, 6:52-53, 6:64-7:4; TLP ¶¶91-
`
`94.
`
`But, as set out in §§V.E, VI, and VII below, the concept of providing users
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`web-based call feature selection via controllers connected to tandem switches was
`
`well known in the art and was one of the driving forces of the development and
`
`standardization of the IN more than a year before the earliest priority date of the
`
`’298 patent. TLP ¶¶41-90, 98-114.
`
`Prosecution History
`
`B.
`During prosecution of U.S. Patent No. 7,764,777, the ’298 patent’s sister,
`
`application no. 11/948,965 (“ ’965 Application”), which has the same specification
`
`and priority claim as the ’298 patent (EX1010), the applicant distinguished over
`
`prior art rejections by amending the claims to include “switching facilities,” which
`
`were “any point in the switching fabric of converging networks, also referred to in
`
`industry as a signal transfer point (STP), signal control point (SCP) . . . gateway,
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`access tandem, class 4 switch . . . trunk gateway, hybrid switch, etc.” EX1010, 87
`
`n.1. The applicant also amended the claims to specify that the “controller,”
`
`“controlling device,” or “web-enabled processing system” was “coupled to” or “in
`
`communication with” such a “switching facility”, rather than an “edge switch.” Id.,
`
`75, 80, 84, 86-87, 93-94. The applicant argued that its claimed switching facility
`
`architecture was an improvement over the edge-switch connected prior art, because
`
`its switching facility architecture could apply call features anywhere in the PSTN,
`
`while the prior art edge switch architecture could only apply call features to a local
`
`geographic area. Id., 75, 80, 84, 86-87, 93-94.
`
`In response to the applicant’s amendments and arguments, the ’965
`
`Application was allowed and issued as U.S. 7,764,777 on July 27, 2010. Id., 33,
`
`51. Almost a year after the ’965 Application was allowed, the applicant made
`
`similar “switching facility” amendments to the claims in the ’298 patent
`
`application. EX1008, 62-67. Two months after applicant amended the claims in the
`
`’298 patent’s application to include the “switching facility” limitations, the
`
`application was allowed and the ’298 patent issued on April 10, 2012. Id., 21, 92.
`
`However, as set forth below, it was well known, and in fact standard
`
`practice, to implement subscriber-selected call features using intelligent servers
`
`located within, or coupled to centralized “switching facilit[ies]” in the PSTN, as
`
`opposed to an “edge switch.” TLP, ¶¶150-181, 210-231, 282-286.
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`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Claim terms construed during inter partes review are given their broadest
`
`reasonable interpretation (BRI). 37 C.F.R. § 42.100(b). Claim terms that are not
`
`construed are to be given their plain and ordinary meaning to a POSA at the time
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`of the claimed invention when read in light of the specification and file history.
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`Petitioner believes the claims terms in the challenged claim are readily understood
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`by a POSA in light of the specification and file history, and therefore have applied
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`the petitioned claim terms in accordance with their plain and ordinary meaning.
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`Petitioner provides additional explanation of what a POSA would understand the
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`plain and ordinary meaning to be where relevant in section VII.C.
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`D. A POSA’s Level of Skill in the Art
`A POSA is a hypothetical person who is presumed to be aware of all
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`pertinent prior art, thinks along conventional wisdom in the art, and is a person of
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`ordinary creativity. With respect to the ’298 Patent, a POSA would have been an
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`engineer or computer scientist with at least a bachelor’s degree, or equivalent
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`experience in electrical engineering, or a related field, and at least three years of
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`industry experience in the fields of analog and digital communications, inclusive of
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`exposure to telecommunications standards as applied in wired and wireless
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`broadband networks. TLP ¶¶27-34. The education and experience levels may vary
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`between POSAs, with some persons holding a Bachelor’s degree with two to three
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`Petition for Inter Partes Review of U.S. Patent No. 8,155,298 B2
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`years of work experience, and others holding a Master’s degree, with one to two
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`years of work experience. Id.
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`E.
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`State of the Art
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`As of the late 1990s and early 2000, the state of the art pertinent to the
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`’298 patent included web-based provisioning of user-selected call features across
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`circuit- and packet-switched networks. TLP ¶¶41-90.
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`1.
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`Circuit-Switched and Packet-Switched Communication
`Networks
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`Circuit-switched networks are the traditional networks for carrying
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`voice data in the form of telephone calls. TLP ¶51; EX1049, 58-59. Circuit-
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`switched networks operate to transfer information using dedicated paths or circuits.
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`TLP ¶¶51-53; EX1049, 58-63; EX1030, 15. A common circuit-switched network
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`is the Public Switched Telephone Network (PSTN) that handles most of the
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`world’s traditional telephone calls, as discussed below. TLP ¶¶51, 54; EX1030, 15.
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`Packet-switched networks, on the other hand, do not use dedicated
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`paths for the transmission of information. TLP ¶¶51-53; EX1030, 15; EX1037,
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`146-149. In packet-switched networks, information is broken into pieces, known as
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`packets. Id. Each packet contains a destination address. TLP ¶¶51-53; EX1049, 58-
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`63. The packet network consists of numerous interconnected routing devices that
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`form a web-like structure. TLP ¶¶51-53; EX1049, 58-63. A packet is forwarded by
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`an initiating device to a router in the network; that router reads the destination
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`address of the packet and forwards the packet to another router, or to the final
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`destination address. TLP ¶¶51-53; EX1049, 60-62. As a result, different packets of
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`information from the same source may traverse different paths in the packet
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`network to reach the destination. A common packet-switched network is the
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`Internet, which uses the Internet Protocol (IP) for packet addressing and the
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`TCP/IP protocol stack. TLP ¶¶41, 51-53, 80; EX1049, 70-71, 72-96.
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`PSTN Architecture
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`2.
`In the mid-1990s and 2000, telephony services, including voice-based
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`telephone calls and fax messaging, were traditionally provided over the Public
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`Switched Telephone Network (PSTN). TLP ¶¶54-57; EX1037, 91-92, 95-102. The
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`PSTN has existed since the 1970s and comprises a global network of circuit
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`switches arranged in a geographical hierarchy. TLP ¶¶54-57; EX1037, 64-69. In
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`the PSTN hierarchy, tandem switches, or class 4 switches, serve to interconnect
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`geographical regions and edge switches, or class 5 switches, connect between
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`tandem switches and end-user devices, like telephones, within a local area. TLP
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`¶¶54-57; EX1037, 106-113, 119-122, 137-138, Fig. 4-4; EX1001, 1:42-51.
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`In the traditional Bell telephone system of the 1980s, edge switches
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`were operated by local telephone service providers and housed in what are known
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`as terminating central offices. TLP ¶¶54-57; EX1037, 59-62, 97-100, 106-110.
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`Calls that could be routed between users connected to the same edge switch are
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`known as local calls. TLP ¶¶54-57; EX1037, 90-92, 106-113. Calls that were
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`required to be routed to tandem switches for connection to other edge switches are
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`known as long distance calls and generally incurred a toll for use of the tandem
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`switching facilities and network. TLP ¶¶54-57; EX1037, 64, 106-113. Tandem
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`switches that interconnect edge switches and other tandem switches are housed in
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`what are known as toll offices. TLP ¶¶54-57.
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`PSTN Call Components – Signaling and Media
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`3.
`Traditional telephone calls over the PSTN consisted of two distinct
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`parts—signaling and media. EX1038, 32-33, 55-62, 156-158; EX1037, 117, 132-
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`133, Fig. 8-1. The signaling portion of telephone calls was used for call setup and
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`feature selection—i.e. a phone ringing is the result of call request signaling.
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`EX1037,130-135; TLP ¶¶57-61. The media portion of telephone calls consisted of
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`the actual voice traffic after a call has been established. TLP ¶¶54-57; EX1051, 9-
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`12, 22-25. Once a telephone is answered, the call accept signal was used to finalize
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`the path, or circuit, over which the voice traffic (i.e. media) of the call travels. TLP
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`¶¶54-57; EX1037, 98-105, 131-135, Fig. 3-8, Fig. 8-1; EX1027, 9-10. Signaling is
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`used in parallel to notify the switches that the call is completed.
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`The PSTN is operated in accordance with the ITU-T standards which
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`provide for the global telephone numbering scheme, as well as the signaling and
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`data protocols used in the PSTN. TLP ¶¶54-57; EX1027, 1-3. Since 1975, the most
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`prominent signaling protocol for use in the PSTN has been Signaling System 7
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`(SS7). TLP ¶¶43, 59-65; EX1027, 1. The SS7 signaling protocol provides for call
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`setup and teardown in the PSTN. TLP ¶¶58-61; EX1027, 1-3.
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`PSTN Call Features and Intelligent Networks
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`4.
`In the late 1960s and early 1970s, AT&T developed a suite of call
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`features that users could select by dialing special codes from their telephone
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`numbers. TLP ¶¶62-63; EX1038, 13. These call features included call blocking and
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`call forwarding, among others. For example, call forwarding could be implemented
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`by dialing “*72.” TLP ¶¶62-63; EX1037, 60-61, 114. These calling features were
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`originally implemented by the local service provider in the edge switch. TLP ¶¶62-
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`65; EX1038, 66-67, 75.
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`By the early 1990s these, and additional calling features, became
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`ubiquitous and, as part of an effort to streamline the deployment of additional call
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`features and network capacity, the Intelligent Network (IN) concept was developed
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`and standardized. TLP ¶¶42, 45-47, 62-64; EX1038, 89-90. The IN took many of
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`the functions that had traditionally been located in terminating central offices or
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`edge switches, including these call features, and moved them into dedicated
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`functional blocks that could be located anywhere in the PSTN, including in tandem
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`switches. TLP ¶¶45-47, 62-68 (user call features implemented in the “SSF”);
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`EX1038, 8-9, 29-34, 58-59, 62-63; EX1020.
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`VoIP and Internet Telephony
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`5.
`In the 1990s, voice data for real-time communication began to be
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`carried over the Internet as packet data using the Internet Protocol (IP). TLP ¶¶67-
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`69, 84; EX1026, 3-5; EX1018; EX1024. This became known colloquially as VoIP
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`or voice over Internet Protocol. By the late 1990s, the PSTN and VoIP networks
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`were interconnected such that a single call could traverse both the PSTN and the
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`Internet or another packet network. TLP ¶¶71-79; EX1026, 3-5; EX1016, 1:16-
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`3:10; EX1018; EX1025. Protocols for handling VOIP calls, including H.323 and
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`the SIP signaling protocol, were standardized in the late 1990s. EX1018; EX1024;
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`EX1025.
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`6. Web-Based Call Feature Selection
`By the time the ’298 patent was filed, a number of systems provided
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`users with the ability to set up or change call features associated with their
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`accounts directly over the Internet. TLP ¶¶45-50. These systems provided users
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`with web-based access to call feature selection tools through the use of centralized,
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`intelligent servers that connected to the features of IN used to control call routing
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`and call features. TLP ¶¶42-50; EX1037, 55-59; EX1038, 90-92. Web-based call
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`feature selection systems from 1997 and 1998 are illustrated in the figures below:
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`TLP ¶¶67-70; EX1011, Figs. 2-3, 5:16-30, 6:3-4, 6:21-7:22, 9:15-12:11.
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`
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`EX1005, 3:39-58; 5:39-7:10, Figs. 2-3, 5-7, 9-10; TLP, ¶¶67-70.
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`VI.
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`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R. § 42.104(B)
`A. Challenged Claim and Statutory Grounds for Challenges
`Claim 1 of the ’298 patent is challenged in this Petition. The Grounds are set
`
`f