Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`CISCO SYSTEMS, INC.,
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`Petitioners,
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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 8,457,113 B2
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`––––––––––
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`PETITIONER’S REPLY TO PATENT
`OWNER’S RESPONSE
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`Table of Contents
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`Page
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`I. 
`
`II. 
`
`INTRODUCTION..............................................................................................................1 
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`BURGER (GROUNDS 1/2) AND ARCHER (GROUNDS 3/4) DISCLOSE
`EACH LIMITATION ........................................................................................................4 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Burger (Ground 1) Discloses Interconnecting an Enhanced
`Services Platform (e.g. “web-enabled processing system”) on
`an IP Network to a Tandem Switch in the PSTN ................................. 4 
`
`Archer (Ground 3) Discloses a Gateway Interconnecting a
`Controller (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN ........................................... 6 
`
`A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch
`or PSTN Edge Switch ........................................................................... 8 
`
`Burger in view of Alexander (Ground 2) Discloses a Gateway
`Interconnecting (e.g. “web-enabled processing system”) on an
`IP Network to a Tandem Switch in the PSTN .................................... 11 
`
`Archer in view of Chang (Ground 4) Discloses a Gateway
`Interconnecting a Controller (e.g. “Web-enabled Processing
`System”) on an IP Network to a Tandem Switch in the PSTN .......... 13 
`
`Burger Discloses Establishing a Voice Communication Across
`Both the Circuit-Switched Network and the Packet Network ............ 15 
`
`G.  Archer Discloses a Web-Enabled Processing System
`Establishing the Voice Communication .............................................. 16 
`
`H. 
`
`Conclusion: Burger (Ground 1), Burger in view of Alexander
`(Ground 2), Archer (Ground 3) and Archer in View of Chang
`(Ground 4) Disclose All of the Limitations Even Under PO’s
`Constructions ....................................................................................... 18 
`
`THE CHALLENGED CLAIMS ARE ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY DISCLAIM
`THE CLAIM SCOPE OF “SWITCHING FACILITY” AS ASSERTED BY
`PO ......................................................................................................................................19 
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`
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`III. 
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`

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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`A.  Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by PO ................... 19 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`PO’s Alleged Evidence of Disclaimer in the Shared
`Specification is Inapposite as it Refers to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention” ............................................................................. 20 
`
`Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the
`Scope of the Claimed “Switching Facilities” is Not Limited to
`the Preferred Embodiment of a PSTN Tandem Switch ...................... 22 
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`“Switching Facility” / “Tandem Switch” (Resp. 30-35) Are Not
`Limited to a “PSTN Tandem Switch” ................................................. 26 
`
`“Coupled to” Is Not Limited to “Connected to Without an
`Intervening Edge Switch” ................................................................... 26 
`
`“Tandem Access Controller” / “Call Processing System”(Resp.
`63, EX2022, ¶99-100) is Not Limited to a Controller Connected
`to a PSTN Tandem Switch Without an Intervening Edge Switch ...... 27 
`
`Conclusion: Burger (Ground 1), Burger in View of Alexander
`(Ground 2), Archer (Ground 3), and Archer in View of Chang
`(Ground 4) Disclose All of the Limitations of the Challenged
`Claims Under the Broadest Reasonable Interpretation of the
`Claims or PO’s Constructions ............................................................. 28 
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`PETITIONERS’ REPLY EXHIBIT LIST
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` Exhibit Number
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`Document
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`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1046
`1047
`1048
`1049
`1050
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`1051
`1052
`1053
`1054
`1055
`1056
`1057
`1058
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`1059
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`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`Declaration of Dean Willis
`U.S. Patent No. 6,353,660 to Burger
`U.S. Patent No. 6,683,870 to Archer
`U.S. Patent No. 5,958,016 to Chang
`U.S. Patent No. 6,798,767 to Alexander
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,442,169 to Lewis
`U.S. Patent No. 6,333,931 to LaPier
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`U.S. Patent No. 5,164,879 (Honeywell v. ITT)
`U.S. Patent No. 6,618,707 (Chi. Bd. Options)
`U.S. Patent No. 4,893,306 (Telcordia Techs.)
`U.S. Patent No. 7,764,777 (“the ’777 patent”)
`U.S. Patent No. 8,115,298 (“the ’298 patent”)
`U.S. Patent No. 6,574,328 to Wood
`U.S. Patent No. 7,324,635 to Wood
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Petitioner’s Redlined Reply to PO Response
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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` Exhibit Number
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`Document
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`2020
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`2022
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`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Declaration of Regis J. “Bud” Bates in Support of Patent
`Owner’s Response
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`I.
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`INTRODUCTION
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`PO’s arguments can be summarized as:
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`(1) a POSA understood that, in May 2000, the only way to connect to the
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`PSTN was through a PSTN edge switch; and
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`(2) Burger and Archer do not disclose a “web-enabled processing system”
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`that performs the step of “establishing the voice communication” nor how
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`this step is performed.
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`Underlying these two arguments is PO’s rehashed disclaimer argument.
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`However, the Burger/Alexander and Archer/Chang combinations disclose each of
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`the claimed limitations even if the claims are narrowed as urged by the PO.
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`PO’s first argument—that the only way to interconnect a packet network to
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`the PSTN was through an edge switch—lacks support and is inaccurate. For
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`example, PO’s expert (Mr. Bates) acknowledged that it was known to interconnect
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`an IP carrier network and the PSTN at a tandem switch. Additionally, in May
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`2000, a POSA understood that PSTN and IP networks could be interconnected at
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`the tandem level and doing so posed no technical challenges over interconnecting
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`such networks at a different switch such as a PSTN end-office switch. For
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`example, as illustrated in LaPier (EX1047) and Lewis (EX1046), from two of the
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`major industry players in converging networks (Cisco and Level 3, respectively), a
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`1
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`POSA understood that interconnecting the PSTN to a packet-switched network
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`through a tandem switch, or an edge switch, provided flexibility.
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`PO’s second argument—Burger and Archer do not disclose that the web-
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`enabled server processing systems performs the step of “establishing the voice
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`communication” or sufficient details of how this step is performed—is also
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`inaccurate. For example, Burger expressly discloses Burger’s ESP procedure 298
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`causes ESP 60 to connect calls by proving a 2-way communication path between
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`the caller and the subscriber as shown in FIG. 5.
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`For example, and with respect to Archer, Archer discloses that “FIG. 4 is a
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`flowchart of the software which will execute on server processor 128” and FIG. 4
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`describes such software executing the step of:
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`Moreover, Archer’s description of how software executing on server processor 128
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`performs this step is at least as detailed as the description in the Shared
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`Specification and PO’s expert’s testified that further details were known to a
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`POSA and not required to be described in a patent.
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`2
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`Because PO’s first two arguments are inaccurate, Burger (Ground 1), Burger
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`in view of Alexander (Ground 2), Archer (Ground 3), and Archer in view of Chang
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`(Ground 4) disclose all of the limitations of the Challenged Claims even under
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`PO’s claim constructions of “switching facility”, “tandem switch”, “coupled to”,
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`and “tandem access controller.” However, the Challenged Claims are also obvious
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`under both Grounds because PO’s third argument—that the specification of the
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`’113 Patent, and prosecution history of related U.S. Patent No. 7,764,777 (“the
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`’777 Patent”), clearly and unmistakably narrow the scope of these claim terms—is
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`also inaccurate. This third argument is a rehash of PO’s disclaimer arguments that
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`the Board has already twice rejected (see Papers 15, 18).
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`For example, unlike the cases on which the PO relies, the term “switching
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`facility”1 never appears in the ’113 Patent specification, which it shares with the
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`‘’777 Patent and related U.S. Patent No. 8,115,298 (“the ’298 Patent”) (the
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`“Shared Specification”), and was first introduced during prosecution of the ’777
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`Patent. Additionally, for example, PO relies on statements made in the Shared
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`1 PO’s proposed constructions of “tandem switch”, “coupled to”, and “tandem
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`access controller” are based on these identical disclaimer arguments and, therefore,
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`rise and fall with its unsupported and inaccurate construction of “switching
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`facility.” See §§III.C infra.
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`U.S. Patent No. 8,457,113
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`Specification, which are directed to a preferred or single embodiment, rather than
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`“the invention” or “the present invention” upon which the disclaimer case law is
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`based. Moreover, PO ignores arguments made, and definitions provided, during
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`prosecution of the ’777 Patent that represent the PO’s assertion of the broad scope
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`of “switching facility.” Therefore, these disclaimer arguments should be given
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`little weight.
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`II. BURGER
`(GROUNDS 1/2) AND ARCHER
`DISCLOSE EACH LIMITATION
`A. Burger (Ground 1) Discloses Interconnecting an Enhanced
`Services Platform (e.g. “web-enabled processing system”) on an
`IP Network to a Tandem Switch in the PSTN
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`(GROUNDS 3/4)
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`Burger discloses that its web-enabled processing system (ESP 602), and its
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`call processing system (ESP processing unit 62), is a switching facility of the
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`circuit-switched network 22 coupled to circuit interface 64 and packet interface
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`683. Pet., 31-42, EX1002, ¶¶, 142-150, EX1003, Figs. 1 (60, 62, 64, 68), Fig. 2 (2,
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`2 Mr. Bates acknowledged that there is no such thing as an “edge switch” in IP
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`networks. EX1048, 110:9-13; 114:17-20; 178:21-24. Thus, PO’s argument (Resp.
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`64-65, EX2022, ¶¶81-83) that Burger’s ESP 60 (which is clearly on an IP network)
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`is an edge switch is nonsensical. EX1003, Figs. 2, 6; 6:6-9; 6:51-53.
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`3 In his deposition, Mr. Bates defined a “tandem switch” as a “switch that passes
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`some form of information through it.” EX1049, 356:9-357:8. Thus, Burger’s
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`U.S. Patent No. 8,457,113
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`60), 4:1-12. Burger discloses that ESP 60’s packet interface 68 can be an external
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`gateway that is coupled to ESP 60’s processing unit 62, in the circuit switched
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`network, which connects them to packet network 24. EX 1003, Fig. 1 (60, 64, 68),
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`4:1-12, 4:19-22 (interface 68 can be a CISCO AS5300 Voice Gateway, connecting
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`to the ESP processing unit 62”); EX 1002, ¶ 146. Specifically, Burger discloses
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`that PSTN-to-IP packet interface/gateway 68 would be connected to a tandem
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`switch in the PSTN 22 because it receives voice from the PSTN as time division
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`multiplexing (TDM) which is used by a tandem switch but not an edge switch.
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`EX1003, Figs 1, 2, 5:59-62. PO’s expert (Mr. Bates) confirmed that PCM/TDM
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`protocol is used by a tandem switch and would overcome the transmission loss and
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`impairment problems identified in the Shared Specification (’113 Patent, 1:59-65).
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`EX1048, 22:23-23:8; 26:7-15; 205:15-206:11 Ex. 2022, ¶50. Thus, PO’s
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`arguments that Burger’s gateway 68 interconnecting the PSTN 22 to a packet
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`network 24 must be connected to an edge switch, ignores the express teaching of
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`Burger and its own expert’s testimony. Id., Resp., 48-56; Ex. 2022, ¶¶70-72, 81-
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`83; EX1058, 267:19-268:4; 271:2-273:12 (as applied to Archer, but applies to
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`Burger for the same reasons).
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`gateway/packet interface (68) cannot be an “edge switch” because it meets this
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`definition and is at least in part on an IP network.
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`5
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`U.S. Patent No. 8,457,113
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`Rather, a POSA would understand that, as set forth in the Petition, Burger
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`discloses that ESP 60 is coupled to a PSTN tandem switch in PSTN 22 via PSTN-
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`to-IP network gateway 68. Pet., 19-24, 31-42; EX1002, ¶¶135-142, 157, 159-162;
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`EX1048, 22:23-23:8; 26:7-15; EX2022, ¶45; EX1050, 108:5-18; 120:5-121:19.
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`Moreover, even if the claims are narrowed as urged by the PO in its
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`Response such that “switching facility” can only be a PSTN tandem switch and
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`that the “call processing system” must be directly connected to such a PSTN
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`tandem switch, Burger discloses this architecture. Id. Burger discloses a tandem
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`access controller (ESP 60 containing gateway/packet interface 68) interconnecting
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`an IP network to the PSTN through a PSTN tandem switch as shown in Figures 1
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`and 2. EX1003, FIGS. 1, 2, 6; Pet. 19-24, 31-42.
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`B. Archer (Ground 3) Discloses a Gateway Interconnecting a
`Controller (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN
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` Archer discloses that gateway 126, which is coupled to server processor
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`128, passes information (e.g. voice and signaling) between the PSTN 118 (136)
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`and a packet network 130. Pet., 48-53, EX1002, ¶¶249-53. A POSA would
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`understand that Archer discloses that server processor 128 is coupled to a PSTN
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`tandem switch in PSTN 118 (136) via PSTN-to-IP network gateway 126. Pet., 48-
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`53, EX1002, ¶¶249-53; EX1058, 267:19-268:4; 271:2-273:12; EX1048, 22:23-
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`23:8; 26:7-15; EX2022, ¶45.
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`6
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`Case IPR2016-01254
`U.S. Patent No. 8,457,113
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`Even if the claims are narrowed as urged by the PO such that “switching
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`facility” can only be a PSTN tandem switch and that the “call processing system”
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`must be directly connected to such a PSTN tandem switch, Archer discloses this
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`architecture. Id. Archer discloses a tandem access controller (gateway 126 and
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`server processor 128 and database 138 annotated in purple) interconnecting an IP
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`network (annotated in blue) to the PSTN (annotated in green) through a PSTN
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`tandem switch (annotated in green below and as set forth supra)) as shown in
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`annotated Figure 2: EX1004, FIGS. 2 (annotated above), 6; Pet. 48-53, EX1002,
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`¶¶249-53; EX1058, 267:19-268:4; 271:2-273:12; EX1048, 22:23-23:8; 26:7-15;
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`EX2022, ¶45.
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`PSTN 
`PSTN tandem 
`switch
`PCM
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`TAC
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`SS7
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`IP network
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`U.S. Patent No. 8,457,113
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`C. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch
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`In May 2000, a POSA understood to interconnect an IP network to the
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`PSTN through an edge switch or a tandem switch to provide flexibility. For
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`example, Lewis (EX1046) discloses a tandem access controller (open architecture
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`switch 502 annotated in purple) interconnecting an IP network (annotated in blue)
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`to the PSTN (annotated in green) through a PSTN tandem switch (AT 106) (and
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`separately, also through an edge switch (EO 104)) as shown in annotated Figures 4
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`and 5. EX1046, FIGS. 4 (annotated below), 5 (annotated below), 9A, 10A, 10C,
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`18A-18B, 12:50-56, 15:7-23, 19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21,
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`26:9-14, 29:44-51, 30:4-35 .
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`SS7
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`PSTN 
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`PSTN tandem 
`switch 106
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`PSTN edge 
`switch 104
`PCM
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`SS7
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`PCM
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`8
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`TAC 502
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`IP network
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`PSTN 
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`PCM
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`SS7
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`TAC 502
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`IP network
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`SS7
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`SS7
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` Cisco’s patent to LaPier (EX1047) discloses a tandem access controller
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`(Network Access Server (NAS) 118a and Signaling Access Server 112 annotated
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`in purple) interconnecting an IP network (annotated in blue) to the PSTN
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`(annotated in green) through a PSTN tandem switch 114 (and separately also
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`through an edge switch 116) as shown in annotated FIG. 1B. EX1047, FIGS. 1B
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`(annotated below), 1C, 7A, 7B, 4:58-5:4, 6:55-62, 9:18-22, 8:61-9:7, 9:26-29,
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`14:3-11, 35:13-16, 35:54-62, 38:13-40, 38:51-62.
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`U.S. Patent No. 8,457,113
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`TAC
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`SS7
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`PSTN 
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`PSTN tandem 
`switch 114
`PSTN edge 
`switch 116
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`SS7
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`PCM
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`IP network
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` PO’s expert, Mr. Bates, acknowledged that he did not research the state of
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`the art with respect to converging IP and PSTN networks (as recited in the
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`Challenged Claims). EX1048, 192:11-14. Mr. Bates cited no factual support for
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`his own opinion (EX2022, ¶68), and his citations to the testimony of Petitioners’
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`expert, and the experts of other Petitioners in different IPRs, were taken out of
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`context. Both Dr. La Porta and Mr. Willis testified that Mr. Bates’ opinion that
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`devices external to the PSTN must connect to the PSTN through an edge switch
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`first is inaccurate with respect to converging PSTN and IP networks. See, e.g.,
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`EX1058, 350:4-24; EX1050, 80:9-20. When presented with this conflicting
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`testimony during his deposition, Mr. Bates acknowledged that it was well known
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`to interconnect an IP carrier network and the PSTN at a tandem switch. Id.;
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`EX1048, 201:22-202:11, 205:15-206:16, 211:21-213:14.
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`The state of the art prior to May 2000 included systems in which devices
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`external to the PSTN (e.g. on an IP network) sent and received call requests via the
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`PSTN through (1) controllers on IP networks connected to PSTN tandem switches
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`(and not PSTN edge switches) via gateways (e.g. Archer) or (2) controllers
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`connected to PSTN tandem switches (and not PSTN edge switches) (e.g. Lewis,
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`LaPier). TLP Dec., ¶. Moreover, as demonstrated by LaPier (EX1047) and Lewis
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`(EX1046), interconnecting PSTN and IP networks at the tandem level was known
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`and posed no technical challenges over interconnecting such networks at a
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`different switch such as a PSTN end office switch. EX1046, FIGS. 4, 5, 15:7-23,
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`19:24-28, 19:54-61; EX1047, 1B, 1C, 6:55-62.
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`D. Burger in view of Alexander (Ground 2) Discloses a Gateway
`Interconnecting (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN
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`
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`Alexander discloses that PSTN tandem switch that is coupled to call manger
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`26a (that is similar to Burger’s ESP 60). Pet., 38-42. Alexander’s call manger
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`U.S. Patent No. 8,457,113
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`26a is a web-enabled processor that implements call control features over circuit-
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`and packet-switched networks. EX1006, Abstract. Alexander’s call manager 26a
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`is coupled to the circuit-switched network via several different switching facilities,
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`including gateways 52 and 64a, PBX 50, CO 62a, and long distance network 66.
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`EX1006, Fig. 1; EX1002, ¶169-176.
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`
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`Gateways 52 and 64a are switching facilities that convert VOIP protocols to
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`SS7 for call routing over circuit switches. EX1006, Figs. 1, 5a, 5:42-45, EX1002,
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`¶173. As explained throughout this Reply, Patent Owner has defined switching
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`facility to include gateways. EX1008, at 87 n.1; EX1002, ¶172. Further, PBX 50
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`and CO 62a are also switching facilities because they “rout[e] calls to other edge
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`switches or other switching facilities local or in other geographic areas.” EX1001,
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`cl. 65.
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`Further, gateways 52, 64a, 65b, PBX 50, and CO 62a form parts of the
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`PSTN. EX1006, 3:17-24, 3:27-53; Fig. 1; EX1002, ¶176. Gateway 64a is part of
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`the PSTN 60 through its connection to CO 62a. EX1006, Fig. 1, EX1002, ¶176.
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`Alexander’s web-enabled processor is coupled to PSTN switching facilities. Pet.,
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`38-41.
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`E. Archer in view of Chang (Ground 4) Discloses a Gateway
`Interconnecting a Controller (e.g. “Web-enabled Processing
`System”) on an IP Network to a Tandem Switch in the PSTN
`Chang discloses that PSTN tandem switch (11T), that is coupled to service
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`control point (SCP) 19, passes information (e.g. voice and signaling) through it, is
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`a digital switch, and sends/receives information in digital format. Pet., 60-64;
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`EX1002, ¶¶283-90; EX1005, Fig. 1; 8:2-6; 8:29-33; 8:37-40; 8:66-9:3, 9:8-13;
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`9:31-34 (“The SSP tandem 11T then communicates with the SCP via an SS7 type
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`CCIS link . . . The SSP capable tandem switches are digital switches.”). Mr.
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`Bates’ testimony is that “handling calls at the tandem level”, as Chang does,
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`“maintains the quality of the call as it is processed within the PSTN where the
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`signal will most likely be in digital form.” EX2022, ¶45.
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`A POSA would understand that Chang’s tandem switch (11T) could be used
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`in the PSTN 118 (136) of Archer. Pet., 60-64; EX1002, ¶¶283-90. Specifically,
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`Petitioners detailed how Chang discloses a web-enabled processing system coupled
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`to PSTN switching facilities including tandem switches (11T). Id. Petitioners
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`further detailed the motivation for a POSA to modify Archer’s server processor
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`128 and database 138 to include Chang’s web server 525, and to include Chang’s
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`tandem switches (11T) in Archer’s PSTN 118 (136). Id.
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`A POSA would be motivated to include Chang’s tandem switches (11T) in
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`Archer’s PSTN 118 (136) and to connect Archer’s gateway 126 to such tandem
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`switches to allow Archer to control routing of calls using standard switching
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`protocols and equipment and achieve Archer’s stated goal of reducing switching
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`traffic of the PSTN. Pet., 60-64; EX1002, ¶¶283-90. Moreover, motivation to
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`connect Archer’s gateway 126 to one or more of Chang’s tandem switches (11T) in
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`Archer’s PSTN 118 (136) is found in Archer which states that gateway 126
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`preferably receives PCM voice from PSTN 118 (136) which a POSA understood
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`as a protocol used by a tandem switch but not an edge switch. §II.A supra.
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`Furthermore, a POSA would understand that the specific transmission loss and
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`impairment problems identified in the Shared Specification (for ’113 Patent at
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`EX1001, 1:59-654) could be solved using the system disclosed in Archer (Ground
`
`
`4 Mr. Bates testified that a POSA would understand that these identified
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`transmission losses and impairments were from certain prior art PSTN switches
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`1), or Archer in view of Chang (Ground 2). EX2022, ¶45; EX1048, 16:6-20;
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`21:25-22:7, 26:7-15; 30:17-31:6; EX1049, 355:4-12; 356:16-22.
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`F.
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`Burger Discloses Establishing a Voice Communication Across
`Both the Circuit-Switched Network and the Packet Network
`
`A POSA reading Burger would understand that the reference discloses
`
`establishing a voice communication across both the circuit-switched network and
`
`the packet network.) Burger’s ESP 60 establishes a voice communication across
`
`both the circuit-switched and packet-switched network for connecting a two way
`
`call path between the caller and the subscriber so that the two parties can
`
`communicate. EX1003, Abstract, 8:34-40, 9:19-23, 11:30-32, Fig. 5 (298),
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`EX1002, ¶¶193-196.
`
`For example, when a subscriber answers a call and authorizes
`
`communication, ESP 60 connects the caller and subscriber for a two-way
`
`communication path across circuit switched network 22 and packet network 24
`
`which enables the communication. Id.
`
`
`that used analog end lines and connected two analog end lines together. EX1048,
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`15:23-16:5.
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`A POSA would understand connecting and receiving calls from the PSTN
`
`and the packet-network, when executed by ESP processing unit 62, are processing
`
`calls across both a circuit- and packet-switched network that result in establishing a
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`voice communication for the parties. EX1002, ¶¶194-195.
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`G. Archer Discloses a Web-Enabled Processing System Establishing
`the Voice Communication
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`
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`A POSA reading Archer would understand that the reference discloses a
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`web-enabled processing system (web-enabled server processor 128 and database
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`138) establishing voice communication. Pet., 66-67; EX1002, ¶¶296-298. For
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`example, Archer discloses that “FIG. 4 is a flowchart of the software which will
`
`execute on server processor 128” and Figure 4 describes such server processor
`
`software executing the step of:
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`
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`Id.; EX1004, 6:47-48, Figure 4 (68), see also id. at 7:14–21. Archer also discloses
`
`that software executing on server processor 128 performs this step after receiving
`
`signaling
`
`that
`
`the called party has answered (e.g. “response”, “pick-up
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`notification”), which Bates acknowledged is when the “call is completed.” Id.; see
`
`also EX1004, Figure 4 (64), 6:30-32, 8:43-45, 9:31-36; EX1048, 250:23-251:17;
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`EX1049, 331:17-332:20.
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`PO’s arguments (Resp., 44-48, EX2022, ¶¶80-82) that Archer does not
`
`describe sufficient details regarding how software executing on sever processor
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`128 performs this “establishing” step are also misplaced as Bates acknowledged
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`that no details of how the recited “establish the voice communication” claim step is
`
`performed need be disclosed in a patent specification because such details were
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`known to a POSA prior to May 2000. EX1048, 155:13-158:11; see also, e.g.,
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`EX1001, 4:65-5:3; 6:13; 9:58-60; 11:8-10. Thus, a POSA would understand that
`
`Archer discloses a web-enabled processing system (web-enabled server processor
`
`128 and database 138) establishing the voice communication between the calling
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`party and the called party after the call is completed.
`
`H. Conclusion: Burger (Ground 1), Burger in view of Alexander
`(Ground 2), Archer (Ground 3) and Archer in View of Chang
`(Ground 4) Disclose All of the Limitations Even Under PO’s
`Constructions
`
`Even if the Board adopts PO’s constructions of a “switching facility” and a
`
`“tandem switch” as a PSTN tandem switch, of “coupled to” as being connected to
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`without an intervening edge switch, and of “tandem access controller” as a
`
`controller connected to a PSTN tandem switch without an intervening edge switch,
`
`the Challenged Claims are invalid as obvious over Burger (Ground 1), Burger in
`
`view of Alexander (Ground 2), Archer (Ground 3), and Archer in view of Chang
`
`(Ground 4) because a POSA would understand all four grounds disclose a web-
`
`enabled processing system connected to a PSTN tandem switch without an
`
`intervening edge switch. See EX1049, 303:15-304:4; 325:10-15; 326:11-327:12;
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`356:16-357:8; 365:25-366:6; 367:25-368:11; 369:5-370:17; 380:4-381:17.
`
`Furthermore, the Challenged Claims are invalid as obvious over Burger (Ground
`
`1), Burger in view of Alexander (Ground 2), Archer (Ground 3), and Archer in
`
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`view of Chang (Ground 4) because all of the limitations of the Challenged Claims
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`are disclosed. §§II.A-G.
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`III. THE CHALLENGED CLAIMS ARE ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY”
`AS ASSERTED BY PO
`
`The Challenged Claims are also obvious over Burger (Ground 1), Burger in
`
`view of Alexander (Ground 2), Archer (Ground 3) and Archer in view of Chang
`
`(Ground 4) because PO’s “switching facility” disclaimer arguments are
`
`unsupported.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by PO
`
`The fact that “switching facilities” was not used in the Shared Specification
`
`distinguishes this case from all but one5 of the cases relied upon by PO for its
`
`disclaimer arguments. EX1054; Resp., 11-15, 26-28. In each of these relied upon
`
`cases, the claim terms at issue were used throughout the patent specification to
`
`provide evidence as to their meaning. See In re Man Mach, Interface Techs. LLC,
`
`822 F.3d 1282, 1286-1287 (Fed. Cir. 2016); OpenWave Systems, Inc. v. Apple Inc.,
`
`808 F.3d 509, 511-516 (Fed. Cir. 2015); Chi. Bd. Options Exch., Inc. v. Int’l Secs.
`
`
`5 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006). See
`
`§III.B infra.
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`
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`Exch., LLC, 677 F.3d 1361, 1363-1365, 1371-1373 (Fed. Cir. 2014); Telcordia
`
`Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1367-1370, 1374-1375 (Fed. Cir. 2010);
`
`Akamai Techs. Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1323-1328 (Fed.
`
`Cir. 2010); Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1132-1137 (Fed. Cir.
`
`2003); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
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`1337, 1339-1340, 1342-1343 (Fed. Cir. 2001).
`
`To sidestep its own cited cases, PO argues that the Shared Specification,
`
`despite the Applicant not using “switching facility” therein, retroactively limits the
`
`meaning of this term because it identified (1) various problems in prior art systems
`
`and (2) directly connecting the controller to a PSTN tandem switch as the preferred
`
`embodiment or system. Resp., 9, 14-16, 20, 32; EX2022, ¶¶42-52, 62, 66. Such
`
`retroactive narrowing is only permitted if the Shared Specification clearly and
`
`unmistakably: (1) identified directly connecting the controller to a PSTN tandem
`
`switch as “the invention” or “the present invention” (which it does not), or (2)
`
`identified the “the invention” or “the present invention” as solving all of identified
`
`prior art problems (which it does not). See Honeywell Int’l, Inc., 452 F.3d at 1315-
`
`1316, 1318; Honeywell Inc. v. Victor Co. of Japan, LTD., 298 F.3d 1317, 1323-
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`1326 (Fed. Cir. 2002).
`
`B.
`
`PO’s Alleged Evidence of Disclaimer in the Shared Specification
`is Inapposite as it Refers to “Preferred” Embodiments or Systems
`Rather Than “the Invention” or the “Present Invention”
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`In the only case relied upon by PO in which a claim term was introduced for
`
`the first time during prosecution (Honeywell Int’l, Inc.), the specification
`
`characterized, on several occasions, the “invention” or “the present invention” as
`
`the narrower meaning adopted by the Federal Circuit for the newly introduced
`
`term. 452 F.3d at 1315-1316, 1318; EX1051 at 1:8-9; 1:40-43; 1:43-49; 3:41-43.
`
`In contrast, here, the identified solutions to prior art problems in the Shared
`
`Specification refer to a “preferred,” “one,” or “another” embodiment. EX1001,
`
`2:1-3; 3:28-40; 3:66-4:3, FIG. 1; 3:15-27.
`
`This absence of statements regarding “the invention” or “the present
`
`invention” further distinguishes this case from the cases (see § II.A.1 supra) on
`
`which the PO relies. See OpenWave, 808 F.3d at 512, 515-517; Chi. Bd. Options,
`
`677 F.3d at 1372; EX1052 at 6:49-58; Telcordia, 612 F.3d at 1374-75; EX1053 at
`
`1:26-31, 4:39-43, 4:48-49; Akamai, 629 F.3d at 1326-27; Biogen, 318 F.3d at
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`1136; SciMed, 242 F.3d at 1340, 1343-44.
`
`Thus, PO’s disclaimer arguments (Resp., 13-19) are unsupported as there is
`
`no dispute that the term “switching facility” was introduced by the Applic