Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP, LLC
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun. 22, 2010
`Issue Date: Jun. 4, 2013
`
`Title: BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,457,113 B2
`
`Inter Partes Review No. 2016-01254
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`C.
`
`Page
`INTRODUCTION ........................................................................................ 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .................... 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 2
`D.
`Service Information .............................................................................. 2
`E.
`Power of Attorney ................................................................................ 2
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103 ................................................ 2
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 .............................................................................................. 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 3
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c) ............................................................................................... 5
`BACKGROUND OF TECHNOLOGY RELATED TO THE ’113
`PATENT ........................................................................................................ 5
`A.
`Circuit-Switched and Packet-Switched Networks ............................... 5
`B.
`The Internet .......................................................................................... 6
`C.
`The Telephone Network ....................................................................... 7
`1.
`Telephone Calls .......................................................................... 7
`2.
`Telephone Network Standards ................................................... 7
`Call Features and Intelligent Network ................................................. 8
`D.
`Internet Enabled Call Control .............................................................. 8
`E.
`Telephone Calls Over the Internet – VOIP ........................................ 10
`F.
`VI. THE PRIOR ART....................................................................................... 11
`A.
`Burger ................................................................................................. 11
`B. Archer ................................................................................................. 12
`C.
`Chang .................................................................................................. 13
`
`V.
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`X.
`
`Page
`D. Alexander ........................................................................................... 13
`VII. SUMMARY OF THE ’113 PATENT ....................................................... 14
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............. 14
`A.
`Legal Overview .................................................................................. 14
`B.
`Plain and ordinary meaning of “call data” ......................................... 15
`C.
`Plain and ordinary meaning of “switching facility” ........................... 15
`IX. THE ASSERTED PRIOR ART REFERENCES ARE
`ANALOGOUS ART ................................................................................... 17
`A. A POSA’s Level of Skill in the Art ................................................... 17
`B.
`Burger, Archer, Chang, and Alexander Are Analogous Art .............. 18
`THE PETITIONED CLAIMS ARE UNPATENTABLE UNDER
`GROUNDS 1 AND 2 ................................................................................... 19
`A.
`Claims 65 and 38 Are Unpatentable Under Grounds 1 and 2 ............ 19
`1.
`Claim 65 [pre1] and 38 [pre1]– Preamble ............................... 19
`2.
`Claims 65 [pre2] and 38 [pre2]– circuit-switched network ..... 23
`3.
`Claim 65 [pre3] and 38 [pre3] – enabling voice
`communication across and circuit and packet network ........... 24
`Claim 65 [a] and 38 [a]– receiving call data associated
`with a call ................................................................................. 28
`Claim 65 [b] and 38[b] – calling party initiating a call ........... 31
`Claim 65 [c] and 38[c] – processing system coupled to a
`switching facility ...................................................................... 31
`Claim 65 [d] and 38[d] – call processing capability ................ 42
`Claim 65 [e] and 38 [e] – establishing voice
`communication ......................................................................... 45
`XI. THE PETITIONED CLAIMS ARE UNPATENTABLE UNDER
`GROUNDS 3 AND 4 ................................................................................... 47
`A.
`Claims 65 Are Unpatentable Under Grounds 3 and 4 ....................... 48
`1.
`Claim 65 [pre1] and 38 [pre1] - preamble ............................... 48
`
`7.
`8.
`
`4.
`
`5.
`6.
`
`ii
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`2.
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Page
`Claims 65 [pre2] and 38 [pre2]– circuit switched network ..... 52
`Claim 65 [pre3] and 38 [pre3] – enabling voice
`communication across a circuit and packet network ............... 53
`Claim 65 [a] and 38 [a] – receiving call data associated
`with a call ................................................................................. 55
`Claim 65 [b] and 38[b] – calling party using a
`communication device ............................................................. 57
`Claim 65 [c] and 38[c] –processing system coupled to
`switching facility ...................................................................... 57
`Claim 65 [d] and 38 [d] – processing a call across both
`networks ................................................................................... 64
`Claim 65 [e] and 38[e] – establishing a voice
`communication ......................................................................... 66
`
`iii
`
`

`

`
`
`Exhibit
`No.
`
`Description of Document
`
`EX1001 U.S. Patent No. 8,457,113 to Wood
`EX1002 Declaration of Dean Willis
`EX1003 U.S. Patent No. 6,353,660 to Burger
`EX1004 U.S. Patent No. 6,683,870 to Archer
`EX1005 U.S. Patent No. 5,958,016 to Chang
`EX1006 U.S. Patent No. 6,798,767 to Alexander
`EX1007 File history of U.S. Patent No. 8,347,113
`EX1008 File history of U.S. Patent No. 7,764,777
`EX1009 Harry Newton, “Newton’s Telecom Dictionary” 15th Ed. (1999)
`EX1010 Colin Low “The Internet Telephony Red Herring” (1996)
`EX1011 Andrew S. Tanenbaum “Computer Networks” 3rd Ed. (1996)
`R.F. Rey, Ed. “Engineering and Operations in the Bell System” 2nd
`Ed. (1984)
`EX1012
`EX1013 Douglas E. Comer “Internetworking with TCP/IP” (1991)
`Abdi R. Modarressi “An Overview of Signaling System No. 7”
`(1992)
`EX1014
`Jon Thӧrner “Intelligent Networks” (1994)
`EX1015
`EX1016 U.S. Patent No. 5,434,852 to La Porta
`EX1017
`ITU-T Recommendation H.323
`M. Handley et al. “SIP: Session Initiation Protocol” RFC 2543
`(2000)
`EX1018
`ITU-T Recommendation H.225
`EX1019
`ITU-T Recommendation H.245
`EX1020
`ITU-T Recommendation Q.1215
`EX1021
`EX1022 U.S. Patent No. 5,802,160 to Kugell
`Jonathan Lennox et al. “Implementing Intelligent Network Services
`with the Session Initiation Protocol” Tech-Report No. CUCS-002-
`099
`
`EX1023
`
`iv
`
`

`

`
`
`Exhibit
`No.
`
`Description of Document
`
`EX1024 GSM Technical Specification 03.78 (1997)
`International Publication No.WO 97/23988 to British
`Telecommunications PLC
`EX1025
`EX1026 U.S. Patent No. 6,463,145 to O’Neal
`EX1027 U.S. Patent No. 6,445,694 to Swartz
`EX1028 W. Richard Stevens “The Protocols” (1994)
`EX1029 U.S. Patent No. 5,206,901 to Harlow
`PacketCable™ 1.0 Architecture Framework Technical Report “PKT-
`TR-ARCH-V01-001201” (1999)
`EX1030
`EX1031 U.S. Patent No. 5,434,913 to Tung
`EX1032
`ITU-T Recommendation Q.1211
`EX1033 3G TS 22.228 V1.0.0 (2000-09)
`EX1034
`ITU-T Recommendation Q.931
`EX1035 CCITT Recommendation M. 770 (1998)
`EX1036 Colin Low “Integrating Communication Services”
`H. Lu et al. “Toward the PSTN/Internet Inter-Networking –Pre-PINT
`Implementation” RFC 2458 (1998)
`Press Release “Cisco Systems to Acquire Selsius Systems, Inc. for
`$145 Million” (October 14, 1998)
`Information Sciences Institute “Internet Protocol: Darpa Internet
`Program Protocol Specification” RFC 791 (1981)
`Securities and Exchange Commission Form S-1, Net2Phone, Inc.
`(1999)
`EX1040
`EX1041 Webpage: Tempest News (1998)
`EX1042 Selsius-CallManager™ (1998)
`EX1043 Curriculum Vitae of Dean Willis
`Paul Baran “On Distributed Communications: I. Introduction to
`Distributed Communications Networks” (1964)
`ITU-T Recommendation E.131
`
`EX1044
`EX1045
`
`
`
`v
`
`EX1037
`
`EX1038
`
`EX1039
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`I.
`
`INTRODUCTION
`Petitioner Cisco Systems, Inc. requests inter partes review of claims 38 and
`
`65 (“the petitioned claims”) of U.S. Patent No. 8,457,113 (“the ’113 patent”)
`
`(EX1001), assigned to Focal IP, LLC.
`
`The ‘113 patent claims relate to routing telephone calls between the Internet,
`
`and the telephone network (PSTN), based on user-selected call control features. In
`
`particular, the ‘113 patent discusses receiving a first call directed to a subscriber
`
`over one of the networks, and determining if that subscriber has set call control
`
`features, such as a call forwarding number. If the subscriber has a call forwarding
`
`number set, the call is forwarded to that number over the other network.
`
`The ‘113 patent inventors were latecomers to Internet telephony. Routing
`
`calls between packet- and circuit-switched networks based on user-selected call
`
`control features was well known before the ‘113 patent’s May 2000 filing date.
`
`EX1002 at ¶¶ 6, 32-65. And VOIP networks, call data, and control criteria were
`
`known in telecommunications long before May 2000. EX1002 at ¶¶ 61-65, 73-77.
`
`Unfortunately, all but one of the asserted references was not in front of the Patent
`
`Office during prosecution of the ‘113 patent. EX1001.
`
`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 Cisco Systems, Inc. is the real party-in-interest for this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`(Patent Asset Licensing, LLC v.) Opposing Party
`Case
`Bright House Networks, LLC
`15-cv-742 (FL.M.D.)
`15-cv-743 (FL.M.D.) WideOpenWest Finance, LLC et al.
`YMAX Corp.
`15-cv-744 (FL.M.D.)
`Birch Communications, Inc.
`15-cv-746 (FL.M.D.)
`T3 Communications, Inc.
`15-cv-747 (FL.M.D.)
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel:
`Wayne O. Stacy (Reg. No. 45,125)
`
`Back-Up Counsel:
`Britton F. Davis (pro hac vice to be filed)
`
`Cooley LLP
`299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`T: (703) 456-8000/F: (202) 842-7899
`wstacy@cooley.com
`bdavis@cooley.com
`zCiscoPALIPR@cooley.com
`
`D.
`
`Service Information
`
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, in its entirety, including all Exhibits and a power of attorney, is being
`
`served by FEDERAL EXPRESS, costs prepaid, to the address of the attorney or
`
`agent of record for the ’113 patent: Farzad E. Amini, Blakely Sokoloff Taylor &
`
`Zafman, 1279 Oakmead Parkway, Sunnyvale, CA 94085-4040. Petitioner may be
`
`served at the lead counsel address provided in Section I.C. of this Petition.
`
`Petitioner consents to service by e-mail at the e-mail addresses provided above.
`
`E.
`
`Power of Attorney
`
`A power of attorney is being filed with this Petition in accordance with 37
`
`C.F.R § 42.10(b).
`
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103
`This Petition for inter partes review requests review of claims 38 and 65 of
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`the ’113 patent and is accompanied by a payment of $23,000. See 37 C.F.R. §
`
`42.15. Thus, 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 Deposit Account # 501283.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’113 patent is eligible for inter partes review and
`
`further certifies that Petitioner is not barred or otherwise estopped from requesting
`
`inter partes review challenging the petitioned claims on the grounds identified
`
`here.
`
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner requests inter partes review of the petitioned claims under the
`
`statutory grounds set forth in the table below. Petitioner asks that each of the
`
`claims be found unpatentable. An explanation of how the petitioned claims are
`
`unpatentable is included in Sections X and XI of this Petition. Additional
`
`explanation and support for each ground of rejection is set forth in the Declaration
`
`of a technical expert, Mr. Dean Willis (Willis Decl.) (EX1002).
`
`Ground ’113 Patent Claims
`1
`38, 65
`
`2
`
`38, 65
`
`Basis for Challenge
`Obvious under § 103 over Burger in
`view of the knowledge of a POSA
`Obvious under § 103 over Burger in
`view Alexander
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`Ground ’113 Patent Claims
`3
`38, 65
`
`Basis for Challenge
`Obvious under § 103 over Archer in
`view of the knowledge of a POSA
`Obvious under § 103 over Archer in
`38, 65
`view of Chang
`Burger, Archer, Chang, and Alexander are prior art under at least one of 35
`
`4
`
`U.S.C. §§ 102(a), (b), and/or (e). This Petition and the Willis Decl. cite additional
`
`prior art materials to provide background of the relevant technology and further
`
`explain why a person of ordinary skill in the art (“POSA”) would combine the
`
`cited references.
`
`Petitioner requests institution on all grounds, but to the extent the Board
`
`determines to institute on less than all grounds, Petitioner requests the Board
`
`institute on grounds 2, and 4. Further, the asserted grounds are not duplicative
`
`under 35 U.S.C. §§ 315(d), 325(d). For example, grounds 1 and 2 involve prior art
`
`with a priority date less than a year prior to the ‘113 patent’s earliest claimed
`
`priority date, while grounds 3 and 4 relate to art with priority dates around three or
`
`more years before the ‘113 patent’s earliest priority date. Infra §§ VI-VII.
`
`Petitioner understands that Patent Owner has alleged a priority date for the ‘113
`
`patent as early as June 1, 1999, which if supported would antedate the prior art
`
`references in grounds 1 and 2.
`
`Petitioner has also simultaneously filed a petition challenging claims 143–
`
`146, 149, 150, 163, and 176–178 of the ‘113 patent on the same grounds 1-3.
`
`Petitioner requests that this Petition be consolidated with the Petition challenging
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`claims 143–146, 149, 150, 163, and 176–178 for institution and trial.
`
`Petitioner notes that while Chang is listed as having been considered during
`
`prosecution of the ‘113 patent, it was never cited or mentioned by the examiner
`
`during prosecution of the ‘113 patent. EX1007. Nor was Chang ever considered in
`
`combination with Archer, which was not before the patent office during
`
`prosecution of the ‘113 patent. Id. As a result, Petitioner submits that ground 4,
`
`which uses Chang as a secondary reference in view of Archer for additional
`
`teachings of switching facilities is not duplicative.
`
`C. Threshold Requirement for Inter Partes Review 37 C.F.R. § 42.108(c)
`Inter partes review of the petitioned claims should be instituted because this
`
`Petition establishes a reasonable likelihood that Petitioner will prevail with respect
`
`to at least one of the claims challenged. See 35 U.S.C. § 314(a). Each limitation of
`
`each challenged claim is disclosed by and/or obvious in light of the prior art.
`
`V. BACKGROUND OF TECHNOLOGY RELATED TO THE ’113 PATENT
`The ‘113 patent relates to providing user-selectable call features that control
`
`how telephone calls are routed between circuit-switched and packet-switched
`
`networks. EX1001, Abstract. Between mid-1999 and mid-2000, telephone
`
`communications over both circuit- and packet-switched networks were well known
`
`in the art, as were user-selected call features.
`
`A. Circuit-Switched and Packet-Switched Networks
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`There are two types of communications networks relevant the petitioned
`
`claims of the ‘113 patent: (1) packet-switched networks and (2) circuit-switched
`
`networks. EX1002, ¶¶ 38-40. Packet- and circuit-switched networks differ in how
`
`information
`
`is
`
`transmitted and routed. Id. In packet-switched networks,
`
`information is divided into chunks, called packets. Id. at ¶ 40. Packets contain both
`
`the information they are carrying, known as the data payload, and their destination
`
`address. Id. Devices in the packet network, called routers, read the packet’s
`
`destination address and forward the packet toward its destination. Id.
`
`Circuit-switched networks have been in existence for decades and form the
`
`backbone of the telephone system in the United States, known as the Public
`
`Switched Telephone Network (PSTN). Id. at ¶¶ 38-40. Circuit-switched telephone
`
`networks assign a dedicated link, or circuit, for each call that connects the calling
`
`party to the called party for transmitting voice data. Id. at ¶¶ 38-40. In the early
`
`1990s, circuit-switched telephone networks were upgraded so that they could carry
`
`both voice and data over the network. Id. at ¶ 41.
`
`B.
`
`The Internet
`
`The Internet is an example of a packet-switched network and it operates in
`
`accordance with the Internet Protocol (IP) and the Transmission Control Protocol
`
`(TCP). Id. at ¶ 40. The combination of the IP and TCP protocols is known as the
`
`TCP/IP protocol stack. Id.
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`C. The Telephone Network
`The PSTN is an interconnected network of the world’s telephone networks.
`
`Id. at ¶¶ 38-40. In the US, the PSTN consists of two levels of interconnected digital
`
`circuit switches, class 3 switches and class 5 switches. Id. Class 5 switches are also
`
`known as edge switches and serve to connect end-user devices, such as telephones
`
`and fax machines, to the PSTN. Id. Class 3 switches are also known as tandem
`
`switches and generally provide long distance calling links by interconnecting
`
`between edge switches and other tandem switches. Id.; EX1001, 1:42–51.
`
`Telephone Calls
`
`1.
`Telephone calls over the telephone network have two parts, signaling and
`
`media. EX1002, ¶¶ 38-40. A telephone call is initiated with a call request signal
`
`that is routed through the telephone network to an edge switch, which causes the
`
`dialed telephone to ring. Id. When a user picks up the telephone, a call accept
`
`signal is sent which causes the telephone network to establish the circuit for
`
`carrying the call participants’ voices (i.e. media). Id. The telephone call signaling
`
`and media generally take different paths through the telephone network. Id.
`
`Telephone Network Standards
`
`2.
`In order to allow the PSTN to be interconnected, the International
`
`Telecommunications Union (ITU) has published an extensive set of recommended
`
`standards for governing the operation of the world’s telephone networks. Id. ¶¶ 44-
`
`45. ITU standards govern telephone numbering, signaling, and data transmission
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`protocols. Id. ¶¶ 41-50. Since 1975, the primary signaling protocol used by the
`
`PSTN has been Signaling System 7 (SS7). Id. ¶¶ 43-50. The SS7 signaling
`
`protocol provides for call initiation and termination across the PSTN. Id. ¶ 44.
`
`D. Call Features and Intelligent Network
`Beginning around 1970, AT&T introduced call control features that users
`
`could set by dialing “star codes” from their telephones. EX1002, ¶ 53. AT&T’s
`
`call features included call forwarding and call blocking, among others. Id.
`
`AT&T’s calling features were originally implemented in the telephone
`
`network’s edge switch, but by the early 1990s, these and other call control features
`
`and functionality were moved to switching facilities, such as service control points
`
`as part of the Advanced Intelligent Network (AIN). Id. at ¶¶ 46-51 The AIN took
`
`many of the functions that had traditionally been located in edge switches,
`
`including these call control features, and moved them into dedicated functional
`
`blocks known as service control points (SCPs) that could be located anywhere in
`
`the PSTN and connected both tandem and edge switches. Id. at ¶¶ 45-50; EX1015,
`
`30-31, 34-36, Fig. 2.5, 46-48, 59-60, Fig. 3.3, 90-92; EX1032; EX1021.
`
`E.
`
`Internet Enabled Call Control
`
`By mid-1999 to early 2000, multiple systems had been developed and were
`
`commercially available that connected the Internet with the PSTN and allowed
`
`users set call control features over the Internet. Id. at ¶¶ 51-60. For example, the
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`WebIN system developed by HP in 1996 provided web-based call control for
`
`users’ telephone lines using the AIN call control functionality shown below:
`
`EX1010, 2-5, Figs. 2-4; EX1002, ¶ 34. Other prior art provided web-page based
`
`users interfaces for setting call control features:
`
`
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`
`
`EX1027, Figs. 2-3, 5-7, 9-10; 3:39-7:10; EX1002 at ¶ 55-60.
`
`F.
`
`Telephone Calls Over the Internet – VOIP
`
`In the 1990s, voice telephone calls began to be carried over the Internet
`
`using the Internet Protocol (IP). EX1002, ¶ 61. This became known as VOIP or
`
`voice over Internet Protocol. Id. By mid-1999 to 2000, the PSTN and VOIP
`
`networks were interconnected and one telephone call could be routed across both
`
`the Internet and the PSTN by using protocol converting gateways. EX1002, ¶¶ 61-
`
`65, 84-86, 95 (citing EX1004; EX1017-1120; EX1023). VOIP signaling protocols,
`
`such as H.323 and the SIP, were standardized between 1998 and 1999. Id. Cable
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`service providers began standardizing VOIP architecture for carrying calls over
`
`their data networks in 1999, with the release of the Packet Cable standard.
`
`EX1030, 1, 12.
`
`
`
`VI. THE PRIOR ART
`A. Burger
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”) issued March 5, 2002,
`
`from an application filed on March 2, 2000. EX1003, 1. Burger is prior art to the
`
`‘113 patent under at least 35 U.S.C. §§ 102(e) because it is an issued patent that
`
`was filed before the ‘113 patent’s invention date.
`
`Burger relates to an enhanced services platform (ESP) that interconnects a
`
`packet switched network, such as the Internet, and a circuit switched network, such
`
`as the PSTN. Id., Abstract, 1:50–2:38. Burger’s ESP receives incoming calls for
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`subscribers over both the PSTN and the Internet, and looks up whether the
`
`subscribers have set any call control features, such and call forwarding or blocking.
`
`Id., also Fig. 4. If a subscriber has set call forwarding, Burger’s ESP initiates a
`
`second call to the call forwarding number over either the circuit or packet network.
`
`Id. If the subscriber picks up the call, Burger’s ESP connects the subscriber with
`
`the caller so that a conversation can take place. Id., 9:50–67, 10:30–65, Figs. 6, 8,
`
`and 9. Burger’s ESP allows subscribers to set and modify their call control features
`
`over the Internet using a web-based interface, such as a web page. Id.
`
`B. Archer
`U.S. Patent No. 6,683,870, titled “Method and System for Multicasting Call
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`Notifications,” was filed June 25, 1998 and issued January 27, 2004, to Archer
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`(“Archer,” EX1004). Archer depends through division applications to application
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`no. 08/798,350, filed February 10, 1997. Archer is prior art to the ‘113 patent
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`under at least 35 U.S.C. § 102(e) because it issued from an application filed prior
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`to the invention of the ‘113 patent.
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`Archer teaches an intelligent web-based controller (server processor 128 and
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`database 138) for implementing a find-me/follow-me calling service or conference
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`calling service that routes telephone calls to a subscriber’s find-me/follow-me
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`number between circuit- and packet-switched networks. EX1004, Fig. 2 (118, 130,
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`136), Abstract, 4:17-42. Archer’s controller allows users to set call control features
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`over the Internet, such as setting the call forwarding numbers that server processor
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`128 will use to implement its find-me/follow-me service. EX1004, 7:44-50, 6:47-
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`7:30.
`
`C. Chang
`U.S. Patent No. 5,958,016, titled “Internet-Web Link for Access to
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`Intelligent Network Service Control,” was filed July 13, 1997, and issued
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`September 28, 1999, to Chang et al. (“Chang,” EX1005). Chang is prior art to the
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`‘113 patent under at least 35 U.S.C. § 102 (a) and (e) because it is an issued patent
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`that was filed and issued prior to the invention date of the ‘113 patent.
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`Chang relates to web-based control of subscriber’s telephone lines using the
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`advanced intelligent network (AIN). EX1005 at col. 4:45-58, 7:9-16, Fig. 1.
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`Chang’s web-based secure access platform provides a website where subscribers
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`can change call control features that AIN switching control points (SCPs) apply to
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`their telephone calls at tandem switches and edge switches in the PSTN. EX1005
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`at col. 8:55-63, 11:9-12:30, 16:1-11, 22:33-49, Figs. 1, 5.
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`While Chang is listed as a considered reference on the face of the patent, the
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`examiner never cited or referenced Chang for a rejection or otherwise. EX1007.
`
`D. Alexander
`U.S. Patent No. 6,798,767, titled “System and Method for Generating
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`Multiple Line Appearances in a Communication Network,” was filed November
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`16, 1999, and issued September 28, 2004, to Alexander et al. (“Alexander,”
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`EX1006). Alexander is prior art to the ‘113 patent under at least 35 U.S.C. § 102(e)
`
`because it is an issued patent that was filed prior to the earliest claimed priority
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`date of the ‘113 patent of May 4, 2000.
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`Alexander teaches a call controller coupled to a packet network and a circuit
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`switched network. EX1006, Figs. 1-2, Abstract. Alexander’s call controller can
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`establish voice communications across both networks and provides call control
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`features such as call forwarding. EX1006, Figs. 2, 5A-B; 1:35-2:27.
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`VII. SUMMARY OF THE ’113 PATENT
`The ’113 patent depends through continuations and divisionals to application
`
`no. 10/426,279, filed Apr. 30, 2003, which in turn is a continuation-in-part of
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`application no. 09/565,565, filed May 4, 2000. EX1001, 1:7–16. As a result, the
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`earliest possible filing date for the ‘113 patent is May 4, 2000.
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`The petitioned claims of the ‘113 patent recite controllers that interface
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`between a packet network and a circuit switched network for establishing a voice
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`communication between two parties and implementing call control features such as
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`call forwarding or blocking. EX1001, cls. 38 and 65.
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`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`A. Legal Overview
`Claims in inter partes review proceedings are construed to have their
`
`broadest reasonable interpretation. Claim terms that are not construed are given
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`their plain and ordinary meaning to a POSA at the time in light of the specification
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`and file history. Petitioner applies the plain and ordinary meaning of the petitioned
`
`claims to the asserted prior art references in support of grounds 1-4, which involve
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`terms that are readily understood by a POSA upon review of the specification and
`
`file histories. Petitioner provides additional explanation of the scope of the plain
`
`and ordinary meaning for the claim terms “call data,” and “switching facility,”
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`below and further explanation of the plain and ordinary meaning of these and other
`
`claim terms in sections X and XI below as relevant.
`
`B.
`
`Plain and ordinary meaning of “call data”
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`Petitioned claims 38 and 65 of the ’113 patent includes the term “call data.”
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`EX1001, cls. 38 and 65. Claims that depend from claims 38 and 65 and other
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`claims provide examples of what is included in “call data.” For example claims
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`131-32 and 136-37, which depend from claims 38 and 65, and claims 144-46 and
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`177-78, which depend from claims 143 and 163, provide that call data can include
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`a call request, a telephone number, or an IP address. EX1001, cls. 131-32, 136-37,
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`144-46, 177-78; EX1002, ¶¶ 72-74. Therefore, based on the doctrine of claim
`
`differentiation, the plain and ordinary meaning of “call data” at least includes
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`telephone numbers, IP addresses and/or call requests. Petitioner addresses these
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`claim limitations in the context of the detailed claim analysis provided in Sections
`
`X and XI below.
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`C.
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`Plain and ordinary meaning of “switching facility”
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`Petitioned claims 38 and 65 of the ’113 patent includes the term “switching
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`facility.” EX1001, cls. 38 and 65. Claims that depend from claim 65 provide
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`examples of what a “switching facility” includes. For example, claims 90-93,
`
`which depend from petitioned claim 65, provide that the claimed switching facility
`
`is provided alternatively by a TDM switching matrix, an ATM switching matrix, a
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`crosspoint switching matrix, or a VOIP switching matrix. EX1001, cls. 90-93. In
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`addition, during prosecution of the ‘113 patent’s parent application no. 11/948,965,
`
`which has the same specification as the ‘113 patent, the applicant distinguishing
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`over a prior art rejection based on amending the claims to include a “switching
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`facility.” EX1008, 68, 87 n.1. In its remarks explaining this amendment,
`
`application provided examples of what it meant by “switching facility,” including
`
`tandem switching facilities, and “[a]ny point in the switching fabric of converging
`
`networks, also referred to in industry as a signal transfer point (STP), signal control
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`point (SCP), session border controller (SBC), gateway, access tandem, class 4
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`switch, wire center, toll office, toll center, PSTN switching center, intercarrier
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`connection point, trunk gateway, hybrid switch, etc.” EX1008 at 87, n.1.
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`Applicant’s reference to the switching facility in industry terms indicates that
`
`applicant intended the plain and ordinary of switching facility to apply. EX1008 at
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`87, n.1. Based on the applicants arguments during prosecution of the ‘113 patent’s
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`parent application, a POSA would understand the plain and ordinary meaning of
`
`switching facility when read in light of the claims, the specification, and the file
`
`history to include any point in the switching fabric of converging networks, such
`
`as: TDM switching matrices, ATM switching matrices, crosspoint switching
`
`matrices, VOIP switching matrices, tandem switching facilities, signal transfer
`
`points (STP), signal control points (SCP), session border controllers (SBC),
`
`gateways, access tandems, class 4 switches, wire centers toll offices, toll centers,
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`PSTN switching centers, intercarrier connection points, trunk gateway, hybrid
`
`switches, etc. EX1002, § IV(B)(3). Petitioner addresses these claim limitations in
`
`the context of the detailed claim analysis provided in Sections X and XI below.
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`IX. THE ASSERTED