CISCO SYSTEMS, INC.
`PETITIONER
`
`I N T E R P A R T E S R E V I E W C A S E N O S.
`
`I P R 2 0 1 6 - 0 1 2 5 4 : U . S . P A T E N T N O . 8 , 4 5 7 , 1 1 3
`I P R 2 0 1 6 - 0 1 2 5 7 : U . S . P A T E N T N O . 8 , 4 5 7 , 1 1 3
`
`S E P T E M B E R 1 9 , 2 0 1 7
`
`Cisco Systems, Inc. - EX 1060
`
`
`PETITIONER
`
`I N T E R P A R T E S R E V I E W C A S E N O S.
`
`I P R 2 0 1 6 - 0 1 2 5 4 : U . S . P A T E N T N O . 8 , 4 5 7 , 1 1 3
`I P R 2 0 1 6 - 0 1 2 5 7 : U . S . P A T E N T N O . 8 , 4 5 7 , 1 1 3
`
`S E P T E M B E R 1 9 , 2 0 1 7
`
`Cisco Systems, Inc. - EX 1060
`
`
`
`Petition
`
`’113 Patent
`
`’298 Patent
`
`’777 Patent
`
`Dispute 1:
`The “switching facility” limitation
`Board’s Construction
`
`PO’s Construction
`
`
`Dispute 1:
`The “switching facility” limitation
`Board’s Construction
`
`PO’s Construction
`
`
`Dispute 1:
`The “switching facility” limitation
`Board’s Construction
`
`PO’s Construction
`
`
`BrightHouse et.
`al.
`
`Dispute 2:
`The “call connection” limitation
`
`Dispute 2:
`The “call connection” limitation
`
`Dispute 2:
`The “call connection” limitation
`
`Dispute 1:
`The “switching facility” limitation
`Board’s Construction
`
`PO’s Construction
`
`
`Cisco Only
`
`Dispute 2:
`The “call connection” limitation
`
`Petitioner’s Request for Oral Argument, Paper 40 at 3‐
`4.
`
`2
`
`
`
`Claims 38 and 65 of this IPR are substantially the
`same as Claim 1 of the -01261
`
` Compare:
`
` Claim 1 of the ‐01261 recites a “packet network and a
`second network coupled to a switching facility of a
`telecommunications network.”
`
` Claims 38 and 65 recite a “circuit‐switched network and a
`packet network in a telecommunications network”
`
`Compare Claim 1 of IPR2016‐01261 with Claim 38 and
`65 of IPR ‐01254, ‐01257
`
`3
`
`
`
`Claim 65 contains additional superfluous language,
`but is still substantially the same as Claim 38
`
` “system including one or more web servers designed to
`be coupled to a call processing system”
` “the web‐enabled processing system designed to be
`coupled to at least one switching facility”
` “and capability within the web‐enabled processing
`system for establishing the voice communication”
`
` PO does not challenge that the additional language is
`not found in the prior art.
`
`’113 Patent, Exhibit 1001, IPR2016‐01254, claim 65
`Petition, Paper 1, pp. 19‐47
`
`4
`
`
`
`The preamble recites a method for making a call over a
`circuit-switched and a packet network
`
`Claim 38 [pre]. 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:
`
`IP network
`
`and
`
`PSTN
`
`’113 Patent, Exhibit 1001, IPR2016‐01254, claim 38
`Petition, Paper 1, pp. 19‐47
`
`5
`
`
`
`The dispute is limited to two limitations
`
`[38 a‐c] 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,
`[38 d] 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
`[38 e] establishing the voice communication between the calling
`party and the called party after the call has been completed,
`across both the circuit‐switched network and the packet network.
`
`’113 Patent, Exhibit 1001, IPR2016‐01254, claim 38
`Petition, Paper 1, pp. 19‐47
`
`6
`
`
`
`• DISPUTE 1: The “switching facility” limitation
`– “the call processing system coupled to at least one switching
`facility of the circuit‐switched network”
`• DISPUTE 2: The “call connection” limitation
`– “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”
`
`Reply, IPR2016‐01254, at 1 (responding to Response,
`IPR2016‐01254, at 40 and 48).
`
`7
`
`
`
`Dispute 1: “switching facility” is disclosed by the
`asserted grounds
`
`“the call processing system coupled to
`at least one switching facility of the
`circuit‐switched network”
`
`IPR2016‐01254, ‐01257
`
`8
`
`
`
`As shown in IPR -01261, Archer discloses the “switching
`facility” limitation.
`
`• Archer
`
`• Burger
`
`IPR2016‐01254, ‐01257
`
`9
`
`
`
`Dispute 1: Burger discloses the “switching facility” limitation
`under the Board and Patent Owner’s construction
`
`• Board construed “switching facility” as:
`• “any switch in the circuit‐switched network”
`
`• PO construed “switching facility” as:
`• “a switch for routing calls to edge switches or other
`switching facilities local or in other geographic areas, and
`that is not itself an edge switch or edge device.”
`
`Reply, IPR2016‐01254, at 1 (responding to Response,
`IPR2016‐01254, at 40 and 48).
`
`10
`
`
`
`The ’113 Patent recites “a call processing system coupled to at
`least one switching facility of the circuit-switched network”
`
`Institution Decision, IPR2016-01254, at 4; ’113 Patent,
`Exhibit 1001, IPR2016-01254, Figure 1 (shading added)
`
`11
`
`
`
`Dispute 1: Burger discloses “a call processing system coupled to at
`least one switching facility of the circuit-switched network”
`Calling party
`
`PSTN
`
`Packet Switched Interface / Gateway
`
`Subscriber
`
`Petition, IPR2016-01254, at 20-33; Burger, Exhibit
`1003, Figure 1 (annotations and shading added)
`
`12
`
`IP network
`
`
`
`Burger’s processing system 60 is a switching facility that is
`coupled to the circuit interface and packet interface
`
` “Burger’s ESP 60, and its ESP
`processing unit 62, is a switching
`facility of the circuit‐switched network
`22 in the form of its processing unit 62
`coupled to circuit interface 64 and
`packet interface 68.”
`
`Petition, IPR2016‐01254, at 31; see also EX1002,
`¶142‐150
`
`13
`
`
`
`Burger's gateway is a "switching facility" under the Board's
`"any switch in the circuit-switched network" construction
`
` Burger's Packet Interface 68 is a
`gateway. EX1003, 4:19‐22 (68 can be a
`voice gateway)
`
` During prosecution the application
`stated that switching facilities were
`“[a]ny point in the switching fabric”
`including “gateway[s], . . ., etc.”
`
`Reply, IPR2016‐01254, at 32‐33; see also EX1002,
`¶146‐150
`
`14
`
`
`
`Cisco’s expert, Dr. Willis, confirms that Burger's call
`processing system is a "switching facility"
`
` “It is my opinion that the web‐enabled processing
`system and the call processing system of Burger’s
`(ESP 60) are switching facilities of the circuit‐
`switched network 22 in the form of its processor
`62, circuit interface 64, and packet interface 68.
`
`Dr. Willis, Expert Decl., EX1002 at ¶144
`
`15
`
`
`
`Burger's Telco CO/ESP is a "switching facility" under PO's
`construction
`
`• According to PO a PSTN tandem switch is a “switching facility”
`
`• PO construed “switching facility” as:
`• "a switch for routing calls to edge switches or other
`switching facilities local or in other geographic areas, and
`that is not itself an edge switch or edge device.”
`
`16
`
`
`
`PO’s expert says an “edge device” is an “end user device”
`
`Q. “Okay. So what is your ‐‐ can you give me a
`definition of an edge device?”
`
`A. “As I see the edge device, it is the end user
`device.”
`
`Opp. to Motion to Amend at 6; Bates Deposition, Exhibit 1148, 163:24‐164:2 (emphasis added)
`
`17
`
`
`
`Burger’s Teclo CO 94/ESP 60 is not an “edge device” under PO’s
`Construction
`
`Petition, IPR2016-01254, at 31; Burger, Exhibit 1003,
`Figure 2 (annotations and shading added)
`
`18
`
`
`
` Slide removed.
`
`19
`
`
`
`PO’s expert claims that a “tandem switch" use digital
`formats such as TDM
`
` Q. “And then on the other side of that higher level switch, like a
`tandem switch, so it is communicating with an IP interface on
`one side. What is it communicating with on the PSTN side, that
`tandem switch?”
` A. “PSTN.”
` Q. “So like PCM or –”
` A. “Yes, or TDM or whatever we want to deal.”
` Q. “Okay. And that ‐‐ it is your understanding that that was
`known prior to May 4, 2000?”
` A. “It was the network as it existed.”
`
`PO Response at 5 and 12; Bates Deposition, Exhibit 1048, 206:2‐16 (emphasis added)
`
`20
`
`
`
`Burger’s Teclo CO 84 and Telco CO 94 communicate over a T1 Line and
`used TDM
`
`T1 Transport
`and TDM
`
`Petition, IPR2016-01254, at 31; Burger, Exhibit 1003,
`Figure 2 (annotations and shading added)
`
`21
`
`
`
` Slide removed.
`
`22
`
`
`
` Slide removed.
`
`23
`
`
`
`Burger’s Teclo CO 94/ESP 60 is a “switching facility” under PO’s
`Construction
`
`PSTN
`tandem
`switch
`
`T1 Transport
`and TDM
`
`Petition, IPR2016-01254, at 31; Burger, Exhibit 1003,
`Figure 2 (annotations and shading added)
`
`24
`
`
`
`Burger discloses a PSTN tandem switch
`
`Calling party
`
`PSTN
`tandem
`switch
`
`TDM
`
`T1 Line
`
`Call Processing
`System
`
`Subscriber
`
`Petition, IPR2016-01254, at 32; Burger, Exhibit 1003,
`Figure 1 (annotations and shading added)
`
`25
`
`IP network
`
`
`
`Dispute 1: Archer and Burger disclose the “switching
`facility” limitation.
`
`• Archer
`
`• Burger
`
`IPR2016‐01254, ‐01257
`
`26
`
`
`
`Dispute 1: Alexander discloses “a call processing system coupled
`to at least one switching facility of the circuit-switched network”
`
`Petition, IPR2016‐01254, at 39; see also EX1002, ¶173
`
`27
`
`
`
`Alexander’s gateways are a switching facility that is coupled
`to the circuit interface and packet interface
`
` “Gateways 52 and 64a are switching
`facilities that convert VOIP protocols to
`SS7 signaling protocols for routing over
`the circuit switches of network 60.” See
`EX1006, FIG 1, 5:42‐45, 5:26‐76.
`
` During prosecution the application stated
`that switching facilities were “[a]ny point
`in the switching fabric” including
`“gateway[s], . . ., etc.”
`
`Petition, IPR2016‐01254, at 39; see also EX1002, ¶173
`
`28
`
`
`
`A POSA would have had reasons to combine the switching
`facility teachings of Alexander with Burger
`
`• Burger and Alexander are analogous references
`
`• Burger discloses coupling the ESP to central office
`switches and other switching facilities in the PSTN
`where the switching facilities of Alexander also
`reside
`
`Petition, IPR2016‐01254, at 40‐41; EX1002 , ¶177‐
`186.
`
`29
`
`
`
`Dispute 1: Archer, Burger, and Alexander teach the
`“switching facility” limitation.
`
`• Archer
`
`• Burger
`
`• Alexander
`
`IPR2016‐01254, ‐01257
`
`30
`
`
`
`Dispute 2 is disclosed by the asserted grounds
`
`• The “call connection” limitation
`– “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”
`
`31
`
`
`
`As shown in IPR -01261, Archer discloses the “call
`connection” limitation.
`
`• Archer
`
`• Burger
`
`IPR2016‐01254, ‐01257
`
`32
`
`
`
`Dispute 2: PO argues Burger does not disclose
`establishing a voice communication across both networks
`
`• PO’s expert, however, says it was well‐
`known how to establish calls across
`both networks.
`
`33
`
`
`
`It was undisputed how to connect calls
`
`Q. “Where in the patent does it talk about how
`the TAC puts the two pieces together?”
`A. “I don't know that it exactly explains that, but,
`you know, one of skill in the art would know that
`the way our circuit switch network works, we take
`circuit A and we connect it to circuit B on the
`outbound side. It goes in, and it goes out.”
`Q. “Okay. So a person of ordinary skill in the art
`understands how to connect those calls?”
`A. “To connect circuits, sure.”
`Reply at 18; Bates Deposition, Exhibit 1048, 156:8‐20 (emphasis added)
`
`34
`
`
`
`It was undisputed how to connect VoIP and circuit-
`switched call as well-known
`
`Q. Does the patent talk about how to connect a VoIP call to
`a circuit switch call?
`A. Not specifically in terms of how to do that. However, it
`does say that we would ‐‐ if we had messages coming in, we
`may have to go through the necessary protocol conversion
`subsystems along the way. But once again, if a person of
`skill in the art knows that we're going to take a packet call
`and we're going to convert it into a PSTN or vice‐versa,
`they would understand that.
`Q. Would they understand how to connect those two calls?
`A. Uh‐huh.
`
`Reply at 18; Bates Deposition, Exhibit 1048, 157:4‐17 (emphasis added)
`
`35
`
`
`
`Burger discloses establishing a call over both
`networks
`
`Reply, IPR2016‐01254, at 43; see also EX1002, ¶188‐
`195
`
`36
`
`
`
`Burger discloses “establishing the voice communication . . . across
`both the circuit-switched network and the packet network”
`
`• Burger’s ESP procedures 284 and
`286 causes ESP 60 to place calls
`over the packet network and the
`PSTN. See EX1003 at 1:50‐2:38,
`6:60‐8:46, FIG. 5
`
`Reply, IPR2016‐01254, at 43; see also EX1002, ¶188‐
`195
`
`37
`
`
`
`Burger’s Figure 2 illustrates the ESP’s call processing capability for
`establishing a call across both the packet and circuit-switched network
`
`2
`
`1
`
`Reply, IPR2016‐01254, at 45; see also EX1002, ¶188‐
`196; EX1003 at 1:50‐2:38; 6:60‐8:46, FIG. 2
`
`38
`
`
`
`As previously discussed, Archer and Burger disclose the
`“call connection” limitation
`
`• Archer
`
`• Burger
`
`IPR2016‐01254, ‐01257
`
`39
`
`
`
`Both disputes raised by pO are disclosed by the prior art
`
`Dispute 1:
`The “switching facility” limitation
`
`Dispute 2:
`The “call connection” limitation
`
`IPR2016‐01254, ‐01257
`
`40
`
`
`
`CISCO SYSTEMS, INC.
`PETITIONER
`
`MOTION TO AMEND
`CISCO SYSTEMS, INC.
`
`PETITIONER
`
`MOTION TO AMEND
`I N T E R P A R T E S R E V I E W C A S E N O.
`
`©
`
`I P R 2 0 1 6 - 0 1 2 5 7 : U . S . P A T E N T N O . 8 , 4 5 7 , 1 1 3
`
`S E P T E M B E R 1 9 , 2 0 1 7
`
`
`
`Amend
`
`’113 Patent
`
`’298 Patent
`
`’777 Patent
`
`Dispute 1:
`The “tandem switch” limitation
`
`Dispute 2:
`The “call processing and
`connection” limitation
`
`Dispute 1:
`The “tandem switch” limitation
`
`Dispute 2:
`The “call processing and
`connection” limitation
`
`BrightHouse et.
`al.
`
`Dispute 1:
`The “tandem switch” limitation
`
`Dispute 2:
`The “call processing and
`connection” limitation
`
`Cisco Only
`
`Petitioner’s Request for Oral Argument, Paper 40 at
`3‐4.
`
`42
`
`
`
`PO’s motion to amend adds nothing novel
`
`• Dispute 1: The “tandem
`switch” feature
`• “wherein the PSTN
`tandem switches are not
`edge switches”
`• Previously discussed
`• Dispute 2: The “initiating a
`call” feature
`• “initiates a second call . .
`. without yet answering
`the first incoming call”
`
`Opp to Motion to Amend at 3; see also EX2062
`
`43
`
`
`
`Amended claim 184 is nearly identical to amended Claim
`163 in the -01261 IPR
`
`• The only substantive difference between the two
`amended claims is the “call processing and
`connection” feature
`
`IPR2016‐01257, EX2062 (annotated)
`
`44
`
`
`
`As discussed by IPR -01261, Archer, LaPier, and Lewis
`disclose the claim limitations of substitute claim 184
`
`• Archer
`
`• Burger
`
`• LaPier
`
`• Lewis
`
`IPR2016‐01257
`
`45
`
`
`
`Dispute 2: As discussed in IPR -01261, this limitation was common
`knowledge to a POSA—in fact, this is how these systems work
`
`Q. “Where in the patent does it talk about how the TAC
`puts the two pieces together?”
`A. “I don't know that it exactly explains that, but, you
`know, one of skill in the art would know that the way our
`circuit switch network works, we take circuit A and we
`connect it to circuit B on the outbound side. It goes in,
`and it goes out.”
`Q. “Okay. So a person of ordinary skill in the art
`understands how to connect those calls?”
`A. “To connect circuits, sure.”
`Reply at 18; Bates Deposition, Exhibit 1048, 156:8‐20 (emphasis added)
`
`46
`
`
`
`Calls are initiated after the call is completed, that is,
`without yet answering the first incoming call
`
`Q. “And we talked yesterday about after the call is
`completed and establishing the voice communication,
`and there is two different steps; correct?”
`
`A. “After the call completed, then the TAC puts the two
`pieces together. It takes the original inbound to the
`outbound call and puts them together.”
`
`Opp. to Motion to Amend at 25; Bates Deposition, Exhibit 1149, 331:17‐24 (emphasis added)
`
`47
`
`
`
`There is no dispute how to connect calls over an
`IP and PSTN network
`
`Q. Does the patent talk about how to connect a VoIP call to a
`circuit switch call?
`A. Not specifically in terms of how to do that. However, it does say
`that we would ‐‐ if we had messages coming in, we may have to go
`through the necessary protocol conversion subsystems along the
`way. But once again, if a person of skill in the art knows that
`we're going to take a packet call and we're going to convert it into
`a PSTN or vice‐versa, they would understand that.
`Q. Would they understand how to connect those two calls?
`A. Uh‐huh.
`
`Reply at 18; Bates Deposition, Exhibit 1048, 157:4‐17 (emphasis added)
`
`48
`
`
`
`Dr. LaPorta confirms that Burger discloses “initiat[ing] a second
`call . . . without yet answering the first incoming call”
`
` La Porta states: “Burger initiates a second call
`without yet answering the first incoming call
`and answers the first incoming call when the
`second call
`is answered because 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.”
`
`Opp. Motion to Amend at 12; EX1157, ¶¶57‐63
`(emphasis added).
`
`49
`
`
`
`Burger, Archer, LaPier, and Lewis disclose the limitations
`of the amended Claim
`
`• Archer
`
`• Burger
`
`• LaPier
`
`• Lewis
`
`IPR2016‐‐01257
`
`50
`
`
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