`Filed February 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`Cisco Systems, Inc.,
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01254
`Patent Number: 8,457,113 B2
`________________
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`NOTICE OF APPEAL TO THE FEDERAL CIRCUIT (35 U.S.C. § 141(c))
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`To: Office of the General Counsel
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Paper No. 57
`Filed February 28, 2018
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`Patent Owner hereby provides notice of appeal to the United States Court of
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`Appeals for the Federal Circuit under 35 U.S.C. §§ 141 and 142 from the Final
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`Written Decision of the Patent Trial and Appeal Board entered December 27, 2017,
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`(Paper No. 56).
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`Pursuant to 37 C.F.R. § 90.2(a)(3)(ii) the expected issues on appeal will
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`include:
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`1. Whether Petitioner has shown by a preponderance of the evidence that
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`claims 38, 65, 143-147, 149, 150, 163, and 176-178, of U.S. Patent No. 8,457,113 B2
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`are unpatentable as discussed in the Final Written Decision.
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`2. Whether the Board’s construction of the disputed terms and
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`phrases at issue was correct, as discussed in the Final Written Decision.
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`3. Whether Petitioner has shown by a preponderance of the evidence that
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`claims 38, 65, 143-147, 149, 150, 163, and 176-178, of U.S. Patent No. 8,457,113 B2
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`are obvious/anticipated in light of the cited prior art references, as discussed in the
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`Final Written Decision.
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`4. Whether the PTAB misapprehended or overlooked evidence or arguments
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`in its Final Written Decision.
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`Patent Owner has electronically filed this notice with the Patent Trial and
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`Appeal Board, pursuant to 37 C.F.R. § 90.2(a)(1), 37 C.F.R. § 42.6(b)(1) and
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`Federal Circuit Rule 15(a)(1).
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`Paper No. 57
`Filed February 28, 2018
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`Simultaneously herewith, patent owner is providing the Federal Circuit an
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`electronic copy of the present Notice of Appeal (pursuant to 37 C.F.R. §
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`90.2(a)(2)(i) and 15(a)(1)) together with a $500 fee (pursuant to 37 C.F.R. §
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`90.2(a)(2)(ii) and Federal Circuit Rule 52(a)(3)(A)). A copy of the Final Written
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`Decision is also included.
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`Dated: February 28, 2018
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, in addition to being filed electronically
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`Paper No. 57
`Filed February 28, 2018
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`through the Patent Trial and Appeal Board End to End (PTAB E2E), this Notice of
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`Appeal was filed with the Director of the United States Patent and Trademark
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`Office, at the following address:
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`Office of the General Counsel
`U.S. Patent and Trademark Office
`Alexandria, Virginia 22313-1450
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal and the required fee were filed electronically via CM/ECF on February 28,
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`2018, with the Clerk of Court for the United States Court of Appeals for the
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`Federal Circuit.
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal was served on February 28, 2018 on counsel of record for Petitioner by
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`electronic mail (by agreement of the parties) at the following addresses:
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`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
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`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
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`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
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`Dated: February 28, 2018
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`Paper No. 57
`Filed February 28, 2018
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`Trials@uspto.gov
`571.272.7822
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`Paper No. 56
` Entered: December 27, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Cases IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`_____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`PARVIS, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I.
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`INTRODUCTION
`
`Background
`A.
`In IPR2016-01254, Cisco Systems, Inc. (“Petitioner”) filed a Petition
`(IPR2016-01254, Paper 2, “’1254 Pet.”) requesting that we institute inter
`partes review of claims 38 and 65 of U.S. Patent No. 8,457,113 B2
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`
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`(Ex. 1001, “the ’113 Patent”).1 In IPR2016-01257, Petitioner filed a second
`Petition (IPR2016-01257, Paper 2 (“’1257 Pet.”)) requesting that we
`institute inter partes review of claims 143–147, 149, 150, 163, and 176–1782
`of the ’113 Patent. In support of its Petitions, Petitioner proffers a
`Declaration of Mr. Dean Willis, who has been retained as an expert witness
`for the instant proceeding. Ex. 1002 ¶ 3; Ex. 1102 ¶ 3. In each proceeding,
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response (IPR2016-
`01254, Paper 8 (“’1254 Prelim. Resp.”); IPR2016-01257, Paper 8 (“’1257
`Prelim. Resp.”)) and a Declaration of Mr. Regis J. Bates, who has been
`retained as an expert witness for the instant proceeding. IPR2016-01254,
`Ex. 2001 ¶¶ 1, 2 (“’1254 Ex. 2001”); IPR2016-01257, Ex. 2001 ¶¶ 1, 2
`(“’1257 Ex. 2001”). Upon consideration of the parties’ contentions and
`supporting evidence, we instituted an inter partes review pursuant to 35
`U.S.C. § 314, as to the challenged claims of the ’113 Patent. IPR2016-
`01254, Paper 15 (“’1254 Dec. on Inst.”); IPR2016-01257, Paper 15 (“’1257
`Dec. on Inst.”).
`
`
`1 The ’113 Patent was submitted as Exhibit 1101 in IPR2016-01257. We
`use either exhibit number, i.e., 1001 or 1101, to refer to the ’113 Patent
`throughout. Petitioner uses different ranges of exhibit numbers so that each
`exhibit filed in the two proceedings has a unique exhibit number. More
`specifically, in IPR2016-01254, Petitioner’s exhibits are numbered 1001
`through 1060 and in IPR2016-01257, Petitioner’s exhibits are numbered
`1101 through 1163. For ease of reference, therefore, we use only the exhibit
`number and not the proceeding number to refer to Petitioner’s exhibits in
`these proceedings.
`2 Claims 38, 65, 143–147, 149, 150, 163, and 176–178 are referred to herein
`as the challenged claims.
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`2
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`After institution, in each of IPR2016-01254 and IPR2016-01257,
`Patent Owner filed a Patent Owner Response (IPR2016-01254, Paper 25
`(“’1254 PO Resp.”); IPR2016-01257, Paper 25 (“’1257 PO Resp.”) and an
`additional Declaration of Mr. Regis Bates in support of its Patent Owner
`Response (’1254 Ex. 2022; ’1257 Ex. 2022). In only IPR2016-01257,
`Patent Owner filed a Motion to Amend (Paper 26, “Mot. to Amend”) and
`additional Declarations of Mr. Regis Bates. ’1257 Ex. 2040 (supporting
`Motion to Amend); ’1257 Ex. 2070 (supporting Reply to Opposition to
`Motion to Amend).3 In each of IPR2016-01254 and IPR2016-01257,
`Petitioner filed a Reply. IPR2016-01254, Paper 34 (“’1254 Pet. Reply”);
`IPR2016-01257, Paper 35 (“’1257 Pet. Reply”).4 In IPR2016-01257,
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
`(IPR2016-01257, Paper 30 (“Oppn. MTA”) and a Declaration of Dr.
`Thomas F. La Porta (Ex. 1157) and Patent Owner filed a Reply to
`Petitioner’s Opposition to the Motion to Amend (IPR2016-01257, Paper 39,
`“PO MTA Reply”).5 In each of IPR2016-01254 and IPR2016-01257, each
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`3 Patent Owner also submits declaration and deposition testimony from other
`proceedings, including that of declarants of other Petitioners from other inter
`partes review proceedings. See, e.g., ’1257 Exs. 2026–2030. Patent Owner,
`however, must include a detailed explanation of the significance of the
`evidence including, for example, why it should be considered in the instant
`proceeding. 37 C.F.R. §§ 42.22, 42.23, 42.120. To the extent appropriate,
`we address Patent Owner’s contentions herein.
`4 With authorization, Petitioner filed revised Replies in IPR2016-01254 and
`IPR2016-01257, which we refer to herein unless otherwise noted.
`5 Subsequent to the oral hearing, Petitioner was authorized to file a
`supplemental brief in light of the Federal Circuit’s en banc decision in Aqua
`Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”).
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`3
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`of Petitioner and Patent Owner filed a Motion to Exclude. IPR2016-01254,
`Paper 41 (“’1254 PO Mot. to Exclude”), Paper 43 (“’1254 Pet. Mot. to
`Exclude”); IPR2016-01257, Paper 44 (“’1257 PO Mot. to Exclude”), Paper
`46 (“’1257 Pet. Mot. to Exclude”). A transcript of the hearing held on
`September 19, 2017 has been entered into the record of each proceeding.
`See, e.g., IPR2016-01254, Paper 55 (“Tr.”).6
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`Because the subject matter of the claims and the challenges significantly
`overlap, we enter this one Final Written Decision in both proceedings. For
`the reasons that follow, we determine that Petitioner has demonstrated by a
`preponderance of evidence that the challenged claims of the ’113 Patent are
`unpatentable. Additionally, in IPR2016-01257, we deny Patent Owner’s
`Motion to Amend.
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`Related Proceedings
`B.
`The parties state that the ’113 Patent is the subject of pending lawsuits
`in the Middle District of Florida, and these lawsuits include assertions
`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
`See, e.g., ’1257 Pet. 2; IPR2016-01257, Paper 4 (’1257 Patent Owner’s
`Mandatory Notices), 2–3; IPR2016-01257, Paper 6 (’1257 Petitioner’s
`Updated Notice), 1. Additional petitions have been filed challenging claims
`of the ’113 Patent (i.e., IPR2016-01260 and IPR2016-01261), and two
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`IPR2016-01257, Paper 57. Petitioner filed the supplemental brief on
`October 31, 2017. IPR2016-01257, Paper 59.
`6 The oral hearings were consolidated in Cases IPR2016-01254 and
`IPR2016-01257. IPR2016-01254, Paper 46.
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`related patents: (1) U.S. Patent No. 7,764,777 B2 (“the ’777 Patent”), which
`issued from the parent of the ’113 Patent Application; and (2) U.S. Patent
`No. 8,155,298 B2 (“the ’298 Patent”), which issued from a continuation of a
`parent of the ’777 Patent Application.
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`Instituted Grounds of Unpatentability
`C.
`We instituted on the following grounds of unpatentability (’1254 Dec.
`on Inst. 29; ’1257 Dec. on Inst. 28):
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`Challenged Claims
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`Basis
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`Reference(s)
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`38, 65, 143–147, 149,
`150, 163, and 176–178
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`38, 65, 143–147, 149,
`150, 163, and 176–178
`38, 65, 143–147, 149,
`150, 163, and 176–178
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`38 and 65
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`§ 103 U.S. Patent No. 6,353,660 B1
`(“Burger,” Ex. 1103) and the
`knowledge of a person of ordinary
`skill in the art7
`§ 103 Burger and U.S. Patent No. 6,798,767
`B1 (“Alexander,” Ex. 1106)8
`§ 103 U.S. Patent No. 6,683,870 B1
`(“Archer,” Ex. 1104) and the
`knowledge of a person of ordinary
`skill in the art
`§ 103 Archer and Chang
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`The ’113 Patent
`D.
`The ’113 Patent relates to telephone services. Ex. 1001, 1:23. In the
`background section, the ’113 Patent explains that the Public Switched
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`7 In IPR2016-01257, with respect to claims 143–147, 149, 150, 163, and
`176–178, for grounds involving Burger, we specify that the knowledge of a
`person of ordinary skill in the art includes a reference, filed as Exhibit 1114.
`8 In IPR2016-01254, for claims 38 and 65, we further specify that this
`asserted ground includes Admitted Prior Art (Ex. 1001, 1:42–51).
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`5
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`Telephone Network (PSTN) consists of a plurality of edge switches
`connected to telephones on one side and to a network of tandem switches on
`the other. Id. at 1:45−47. The tandem switch network allows connectivity
`between all of the edge switches, and a signaling system is used by the
`PSTN to allow calling and to transmit both calling and called party identity.
`Id. at 1:48−51.
`According to the ’113 Patent, at the time of the invention, there were
`web-based companies managing third-party call control, via the toll-switch
`network, which allow users to enter call control information through a web
`portal. Id. at 1:34−36. Edge devices such as phones and PBXs that include
`voice mail, inter-active voice response, call forwarding, speed calling, etc.,
`have been used to provide additional call control. Id. at 2:41−44.
`The ’113 Patent discloses a system for allowing a subscriber to select
`telephone service features. Id. at 1:23–26. Figure 1 of the ’113 Patent is
`reproduced below (with annotations).
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`Figure 1 illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional Public Switched Telephone Network (PSTN) tandem switch
`16. Id. at 4:43, 44. According to the ’113 Patent, “[d]etails of the operation
`of the existing phone network,” including directing of phone calls by
`“existing” PSTN tandem switch 16 to central offices 17, 18 are further
`described in a publication incorporated by reference, as well as “numerous
`books describing the PSTN.” Id. at 4:43–54.
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional third-party features are applied to the call.” Id. at 4:43–47.
`More specifically, in the network illustrated in Figure 1, a call from calling
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
`which places a second call, subject to third-party control information, to
`subscriber 12. Id. at 4:55–58. The second call is placed “to the subscriber’s
`‘private’ phone number,” without terminating the first call. Id. at 4:58–60.
`When subscriber 12 answers the call, tandem access controller 10 connects
`the first call to the second call so as to connect calling party 20 to subscriber
`12. Id. at 4:62–65.
`Figure 1 also shows web server 23 within World Wide Web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies third-party call control features via web server 23 and these
`features are then relayed via World Wide Web 22 to tandem access
`controller 10. Id. at 5:17–25.
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`Illustrative Claims
`E.
`Claims 38, 65, 143, and 163 are the independent claims challenged in
`these proceedings. Claims 144–47, 149, 150, and 176–78 depend directly
`from one of claims 143 or 163. Independent claims 38 and 143 are
`illustrative of the claimed subject matter and are reproduced below:
`38. A method performed by a web enabled processing system
`including one or more web servers coupled to a call processing
`system serving as an intelligent interconnection between at least
`one circuit-switched network and a packet network in a
`telecommunications network, the circuit-switched network
`comprising edge switches for routing calls from and to
`subscribers within a local geographic area and switching
`facilities for routing calls to other edge switches or other
`switching facilities local or in other geographic areas, the method
`for enabling voice communication from a calling party to a called
`party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
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`8
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
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`receiving call data which is associated with a call originated by
`the calling party via the circuit-switched network, at the
`call processing system,
`the calling party using a
`communications device to originate the call for the
`purpose of initiating voice communication, the call
`processing system coupled to at least one switching
`facility of the circuit-switched network, the call processing
`system processing the call across the circuit-switched
`network and the packet network to complete the call to the
`called party; and
`establishing the voice communication between the calling party
`and the called party after the call is completed, across both
`the circuit-switched network and the packet network.
`Ex. 1001, 15:30–56.
`143. A method of providing an intelligent interconnection
`between a first communication network and a second
`communication network, comprising:
`receiving at a controller call data which is associated with a first
`call via a first communication network;
`accessing control criteria by the controller based upon the call
`data;
`initiating a second call via a second communication network by
`the controller using the call data and the control criteria,
`wherein at least one of the first and the second
`communication networks is a voice over IP (VOIP)
`network; and
`enabling communication between the first call and the second
`call by the controller.
`Ex. 1101, 22:50–63.
`
`Patent Owner’s Request to Repanel the Case
`F.
`In only IPR2016-01257, Patent Owner “requests assignment of a new
`panel to preside over this trial and to render the Board’s final decision in this
`case” because the “IPR statutes . . . establish a ‘bifurcated’ IPR process.”
`
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`9
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`PO Resp. 14−15, n.2. Paneling of cases rests with the Chief Judge on behalf
`of the Director. See, e.g., AOL Inc. v. Coho Licensing LLC, Case IPR2014-
`00771, slip. op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative); see also
`PTAB SOP 1, rev. 14 (May 8, 2015) at 2. Patent Owner’s suggestion was
`considered by the Chief Administrative Patent Judge, who declined to assign
`a new panel for this case.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under this standard, claim terms are presumed to have their ordinary and
`customary meaning, as understood by a person of ordinary skill in the art in
`the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`B. Decisions on Institution
`In the Decisions on Institution, we made determinations regarding the
`broadest reasonable interpretations of “call data,” “switching facility,” “call
`processing system,” “control criteria,” and “controller.” ’1254 Dec. on Inst.
`7–14; ’1257 Dec. on Inst. 7–12. These determinations are summarized in
`the table below.
`Claim Term
`
`Broadest Reasonable Interpretation Determination in
`Decision on Institution
`“Petitioner contends that ‘the plain and ordinary meaning
`of ‘call data’ at least includes telephone numbers, IPR
`addresses and/or call requests.’” “[W]e determine that
`the broadest reasonable interpretation, in light of the
`’113 Patent Specification, of the term ‘call data’
`
`“call data”
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`
`
`10
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
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`encompasses the examples set forth by Petitioner.” See,
`e.g., ’1254 Dec. on Inst. 7 (citing ’1254 Pet. 15).
`“[W]e determine that the broadest reasonable
`interpretation of the term is any switch in the circuit-
`switched network.” ’1254 Dec. on Inst. 10.
`“[W]e determine that the broadest reasonable
`interpretation of the term ‘call processing system’ is any
`call processing system in the communications network.”
`Id. at 14.
`“Petitioner also contends that ‘the plain and ordinary
`meaning of “control criteria” at least includes selection
`of a telephone number or feature.’” “[W]e determine
`that the broadest reasonable interpretation, in light of the
`’113 Patent Specification, of . . . ‘control criteria’
`encompasses the examples set forth by Petitioner.”
`’1257 Dec. on Inst. 7 (citing ’1257 Pet. 15).
`“[W]e determine that the broadest reasonable
`interpretation of the term ‘controller’ is any controller in
`the communications network.” ’1257 Dec. on Inst. 12.
`
`“switching
`facility”
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`“call
`processing
`system”
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`“control
`criteria”
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`“controller”
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`The Parties’ Contentions
`C.
`Patent Owner provides contentions regarding the broadest reasonable
`interpretation of “switching facility,” “call processing system,” and
`“controller.” ’1254 PO Resp. 10–34; ’1257 PO Resp. 10–38. We address
`the parties’ disputes regarding these terms below.
`Patent Owner does not dispute our determinations regarding “call
`data” or “control criteria” in the Decisions to Institute. Id. We, therefore,
`make no further determinations regarding these terms for these proceedings.
`Only terms which are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`11
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`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
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`“switching facility”
`D.
`Each of challenged independent claims 38 and 65 recites “switching
`facility.” No other challenged claim recites “switching facility,” and none of
`the challenged claims in these proceedings recites “tandem switch.” Apart
`from the claims, the term “switching facility” does not appear in the
`Specification. The term was introduced into the claims by amendment
`during prosecution of the ’777 Patent Application. Ex. 1008, 67−79.
`At institution, we adopted Petitioner’s proposed construction for
`“switching facility,” as it is consistent with the intrinsic evidence and the
`term’s plain and ordinary meaning, construing “switching facility” as “any
`switch in the circuit-switched network.” ’1254 Dec. on Inst. 10; ’1254 Pet.
`16–17; Ex. 1008, 87, 87 n.1 (Applicants defined a “switching facility” as
`“[a]ny point in the switching fabric of converging networks”);
`TELECOMMUNICATIONS: GLOSSARY OF TELECOMMUNICATION TERMS, THE
`FEDERAL STANDARD 1012C, S-35 (1996) (’1254 Ex. 3001, 391) (defining
`“switching center” and “switching facility” as synonyms that mean “a
`facility in which switches are used to interconnect communications circuits
`on a circuit-, message-, or packet-switching basis”); THE NEWTON’S
`TELECOM DICTIONARY, (15th ed. 1999) (’1254 Ex. 3002) (defining
`“switching centers” to refer to all five classes of switches in the PSTN)).
`We rejected Patent Owner’s proposed construction because it would
`improperly import limitations into the claim. ’1254 Dec. on Inst. 7−10.
`In its Response, Patent Owner maintains that “switching facility” is
`not an edge switch or edge device. ’1254 PO Resp. 1−34. Patent Owner
`argues that the claim expressly distinguishes that a “switching facility” is not
`an “edge switch,” and that construing “switching facility” to include “edge
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`switch” would render the claim terms superfluous. Id. at 29−34. In Patent
`Owner’s view, Applicants of the ’113 Patent “unequivocally disclaimed
`controllers that applied call control features through an edge switch, or
`controllers that were themselves an edge device, from the scope of their
`inventions.” Id. at 1−34. We disagree and address below each of Patent
`Owner’s arguments in turn.
`First, based on the evidence before us, we decline to adopt Patent
`Owner’s proposed claim construction, as it would import limitations—
`“connecting the Tandem Access Controller (‘TAC’) to a PSTN tandem
`switch, rather than edge switches and edge devices”—from a preferred
`embodiment into the claim. Id. at 1–2, 9−10, 14−20; Ex. 1001, 2:1–3, 3:29–
`30, 3:66–4:3. Significantly, neither “Tandem Access Controller” nor
`“tandem switch” appears in any of the challenged claims. In fact, Patent
`Owner admits that Applicants used “switching facility” in the claim instead
`of “tandem switch” to indicate that “switching facility” has broader scope
`than “tandem switch.” ’1254 Prelim. Resp. 36–37; ’1254 PO Resp. 33–34.
`A person of ordinary skill in the art would have understood that these
`two terms have different meanings. In the context of telecommunication and
`network communication, the plain and ordinary meanings of these terms are
`clear—“tandem switch” refers to class 4 switches in the PSTN (’1254 Ex.
`2022 ¶ 36), whereas “switching facility” refers to all five classes of switches
`in the PSTN (Ex. 3002) or “a facility in which switches are used to
`interconnect communications circuits on a circuit-, message-, or
`packet-switching basis” (Ex. 3001, 391).9 This is consistent with
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`9 A “hybrid” switch has combined class 4 and class 5 switching features.
`Ex. 1037, 113, Fig. 4-5; Ex. 2002, 159 (cited in ’1254 Ex. 2022 ¶ 38). As
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`Applicants’ definition of “switching facility”—“[a]ny point in the switching
`fabric of converging networks”—that was submitted with the Amendment
`that introduced the term. Ex. 2005, 82, 82 n.1. Moreover, “the general
`assumption is that different terms have different meanings.” Symantec
`Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008).
`Importantly, even if we were to interpret “switching facility” as a
`“tandem switch,” it would not affect our analysis below because the
`language of claims 38 and 65 does not require a direct connection between
`the processing system and the switching facility. Indeed, claim 38 recites
`“the call processing system coupled to at least one switching facility.”
`Ex. 1001, 15:47–49 (emphases added).10
`In the instant proceedings, Patent Owner does not present contentions
`regarding the broadest reasonable interpretation of the term “coupled to.”
`’1254 PO Resp. 1–34; ’1257 PO Resp. 1–38.11 It is settled that “coupled to”
`generally means that direct connection is not required. See, e.g., Bradford
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`noted in our claim construction discussion in our Decision on Institution, a
`reference relied upon by Patent Owner (Prelim. Resp. 5 (Ex. 2003, 474))
`indicates “[i]n a contemporary PSTN, a tandem switch commonly is a
`hybrid Class 4/5, functioning as both a tandem and a CO (Class 5)” (Ex.
`2003, 474–75). This reference is extrinsic evidence offered by Patent
`Owner. Nonetheless, this evidence is not necessary for us to arrive at our
`determinations herein, but adds contextual background that further supports
`our analyses.
`10 Similarly, claim 65 recites “the web-enabled processing system designed
`to be coupled to at least one switching facility.” Id. at 17:51–53.
`11 As set forth in our Order of December 28, 2016, issued with our Decision
`on Institution, Patent Owner has been cautioned “that any arguments for
`patentability not raised in the response will be deemed waived.”
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`Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1270−71 (Fed. Cir. 2010). We
`use that plan and ordinary meaning for our analysis.12
`Additionally, we decline to construe “switching facility” as not an
`edge switch or edge device, as urged by Patent Owner. As our reviewing
`court has explained, “each claim does not necessarily cover every feature
`disclosed in the specification,” and “it is improper to limit the claim to other,
`unclaimed features.” Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473
`F.3d 1173, 1181 (Fed. Cir. 2006). Furthermore, the court “has repeatedly
`cautioned against limiting the claimed invention to preferred embodiments
`or specific examples in the specification.” Williamson v. Citrix Online, LLC,
`792 F.3d 1339, 1346–47 (Fed. Cir. 2015); SuperGuide Corp. v. DirecTV
`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is
`important not to import into a claim limitations that are not a part of the
`claim”). “[I]t is the claims, not the written description, which define the
`scope of the patent right.” Williamson, 792 F.3d at 1346–47; see also
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
`(noting that “[i]t is a bedrock principle of patent law that the claims of a
`patent define the invention to which the patentee is entitled the right to
`exclude”).
`Second, we are not persuaded by Patent Owner’s arguments that the
`claims expressly distinguish that a “switching facility” is not an “edge
`switch,” and that construing “switching facility” to include “edge switch”
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`12 During oral argument in a related proceeding also involving challenges to
`the ’113 Patent, Patent Owner agreed that the controller need not be
`connected directly to the tandem access switch. IPR2016-01261, Paper 68,
`56:18–20.
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`would render the claim terms superfluous. ’1254 PO Resp. 29−34; ’1254
`Ex. 2022 ¶¶ 61−65. Patent Owner’s arguments fail to appreciate that each of
`claims 38 and 65 sets forth two separate functional requirements: (1) “edge
`switches for routing calls from and to subscribers within a local geographic
`area”; and (2) “switching facilities for routing calls to other edge switches or
`other switching facilities local or in other geographic areas.” Ex. 1001,
`15:35–38, 17:37–40 (emphases added). The evidence before us shows that
`edge switches can perform the function recited in the first claim element, as
`well as “routing calls to other edge switches or other switching facilities
`local or in other geographic areas,” as recited in the second claim element.
`Ex. 1002 ¶ 77. The two terms, “edge switches” and “switching facilities,”
`are not mutually exclusive, but rather “switching facilities” encompasses all
`five classes of switches in the PSTN, including an edge switch. ’1254 Ex.
`3001, 391; ’1254 Ex. 3002; ’1254 Ex. 2005, 82, 82 n.1.
`Notably, an ordinarily skilled artisan would have recognized that an
`edge switch can route calls to other edge switches directly via a direct trunk
`group or indirectly through a tandem switch, and to other switching facilities
`(e.g., a tandem switch). Ex. 1002 ¶¶ 38–39, 77, 119, 121; Ex. 1012, Figs. 4-
`3, 4-4. Mr. Willis’ testimony regarding background information on the
`PSTN (id.) cites to the Bell reference, which includes Figure 4-4 reproduced
`below (with highlighting added).
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`Annotated Figure 4-4 Illustrating the PSTN Switch
`Hierarchy
`As shown in highlighted Figure 4-4 above, an edge switch (a class 5
`switch) can route calls from and to users within local geographic area
`(highlighted in red). An edge switch also can route calls to a tandem switch
`and other edge switches directly using a direct trunk or indirectly through a
`tandem switch (highlighted in blue). Ex. 1002 ¶¶ 38−39, 77, 119, 121;
`Ex. 1012, 110−117, 131–136, 150–152, Figs. 4-3, 4-4.
`The aforementioned functional claim elements map to the switches in
`the PSTN. The first claim element takes into account routing calls from and
`to users within a local geographic area. For the second claim element, the
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`claim language “switching facilities for routing calls to other edge switches”
`takes into account routing calls from an edge switch to other edge switches.
`The claim language “switching facility for routing calls . . . to other
`switching facilities” takes into account routing calls from a