Petition for Inter Partes Review
`
`U.S. Patent No. 8,155,298
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`YWIAX CORPORATION,
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`Petitioner
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`V.
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`FOCAL IP, LLC,
`Patent Owner
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`Inter Partes Review No.: Unassigned
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`U.S. Patent No. 8,155,298
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`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1 and 20 OF U.S.
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`PATENT NO. 8,155,298 UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§
`42.100 ET SEQ.
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`U.S. Patent No. 8,155,298
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`YWIAX CORPORATION,
`
`Petitioner
`
`V.
`
`FOCAL IP, LLC,
`Patent Owner
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`Inter Partes Review No.: Unassigned
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`U.S. Patent No. 8,155,298
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1 and 20 OF U.S.
`
`PATENT NO. 8,155,298 UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§
`42.100 ET SEQ.
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ......................................................................................... .. i
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`LIST OF EXHIBITS ............................................................................................... .. V
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`I.
`
`INTRODUCTION ........................................................................................ .. I
`
`II. MANDATORY NOTICES, STANDING, AND FEES ............................... .. 1
`
`A. Real Parties in Interest — 37 C.F.R. § 42.8(b)(l) .......................................... .. 1
`
`B. Related Matters — 37 C.F.R. § 42.8(b)(2) ....................................................... 1
`
`C. A Lead and Back—up Counsel — 37 C.F.R. § 42.8(b)(3) .......
`
`.......................... .. 2
`
`D. Service Information — 37 C.F.R. § 42.8(b)(4) ............................................. .. 2
`
`E. Certification of Grounds for Standing ~ 37 C.F.R. § 42.104(a) ................... .. 3
`
`F. Payment ofFees — 37 C.F.R. § 42.l5(a) and § 42.103 ................................. .. 3
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF PRECISE
`
`RELIEF REQUESTED ........................................................................................... .. 3
`
`A. Claims For Which Review Is Requested ...................................................... .. 3
`
`B. The Proposed Alternative Grounds Are Not Redundant .............................. .. 4
`
`IV.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ........... .. 5
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`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ............ .. 5
`
`A. Summary of the ‘298 Patent ......................................................................... .. 5
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`1.
`
`2.
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`Priority Date ............................................................................................ .. 5
`
`Prosecution History of the ‘298 Patent ................................................... .. 5
`
`3.
`
`Overview Of The Challenged Claims ..................................................... .. 6
`
`B. Person Of Ordinary Skill In The Art .......................................................... .. 10
`
`C. State of the Art of Telecommunications by June 1999 .............................. .. 11
`
`1.
`
`The PSTN/Circuit Switching Networks ................................................ .. 11
`
`2.
`
`3.
`
`Signaling ................................................................................................ .. 13
`
`Packet-Switching Networks: the Internet and Voice over IP .............. .. 13
`
`“D. An Embodiment of the ‘298 Patent ............................................................ .. 16
`
`E. Claim Construction ..................................................................................... .. 17
`
`1.
`
`“web enabled” ....................................................................................... .. 17
`
`2.
`
`“processing system” .............................................................................. .. 18
`
`3.
`
`“controller” ............................................................................................ .. 19
`
`4.
`
`5.
`
`“switching facility”/“switching facilities” ............................................ .. 20
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`“a network comprising edge switches for routing calls from and to users
`
`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”
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`(claim l)/“the second network is coupled to a switching facility of a network
`
`comprising edge switches for routing calls from and to users 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” (claim 20).... 24
`
`6.
`
`“coupled to” ........................................................................................... .. 27
`
`7.
`
`“Validate and acknowledge” .................................................................. .. 28
`
`8.
`
`Summary of Claim Interpretation ......................................................... .. 30
`
`F. Summary of the Prior Art ........................................................................... .. 31
`
`1.
`
`O’Neal ................................................................................................... .. 3 l
`
`2. McMullin ............................................................................................... .. 34
`
`3.
`
`Chang.............................................................
`
`........................................ 35
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`G. There is a Reasonable Likelihood that
`
`the Challenged Claims
`
`are
`
`Unpatentable ...................................................................................................... .. 36
`
`1.
`
`Ground 1: Claims 1 And 20 Are Anticipated By O’Neal Under 35 U.S.C.
`
`§ 102(e) ........................................................................................................... .. 36
`
`a. Claim 1 ............................................................................................... .. 36
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`b. Claim 20 ............................................................................................. .. 53
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`2.
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`Ground 2: Claim 1 Is Obvious Over O’Nea1 In View Of McMu1lin Under
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`35 U.S.C. § 103(a) .......................................................................................... .. 62
`
`3.
`
`Ground 3: Claim 20 Is Obvious Over O’NeaI In View of Chang Under
`
`35 U.S.C. § 103(a) .......................................................................................... .. 66
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`VI.
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`CONCLUSION ........................................................................................... .. 69
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`LIST OF EXHIBITS
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`1001
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`U.S. Patent No. 8,155,298 to Wood et al. (the “‘298 patent”)
`
`1002
`
`Declaration of Tal Lavian, Ph.D.
`
`1003
`
`U.S. Patent No. 6,463,145 to O’Nea1 er al. (“O’Nea1”)
`
`L
`
`_.1
`
`1004
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`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
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`1005
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`U.S. Patent No. 5,809,128 to McMu11in(“McMu11in”)
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`1006
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`Prosecution History of U.S. Patent No. 6,529,596
`
`_I
`
`1007
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`Prosecution History of U.S. Patent No. 7,764,777
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`1008
`
`rFedera1 Standard 1037C (Glossary of Telecommunications
`
`Terms) (Aug. 7, 1996)
`
`.1
`
`1009
`
`Newton’s Telecom Dictionary (February 1999)
`
`1 010
`
`http ://wwwlnternetlivestats.com/total—number-of—websites
`
`1011
`
`1 U.S. Patent No. 8,457,113 to Wood et al.
`
`1012
`
`ITU—T Specification of Signaling System No. 7 Q.700 dated
`
`March 1993
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`1 013
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`http://wwwthefreelibrary.com/eBay's+AuctionWeb+Tops+One
`
`+Million+Bids%3 B+Leading+Online+Auction. . .—a0 1 8940 197
`L
`B. Leiner, er al., The Past and Future History of the Internet,
`
`1014
`
`Communication of the ACM, Feb. 1997, Vol. 40, No. 2
`
`L
`
`1015
`
`U.S. Patent No. 6,031,836 to Haserodt
`
`1016
`
`Curriculum Vitae for Tal Lavian, Ph.D.
`
`1017
`
`ITU-T Recommendation Q.700—Q.705.
`
`""71
`
`.1
`Introduction to CCITT
`
`Signaling System Number 7. Melbourne 198 8-1992
`
`1 018
`
`http://www.speakfreely.org/histoflhtml
`
`1019
`
`L.
`Office Action Response in the Prosecution History of U.S. Patent No.
`
`8,848,894, dated September 13, 2013
`
`—l—
`
`1020
`
`Prosecution History of the ‘298 Patent
`
`1021
`
`W. Bressler, SS7 Level Two over IP, dated January 1999
`
`1022
`
`-1 Lucent Technologies and Ascend Communications announce Voice
`
`over IP interoperability, dated June 2, 1999
`
`1023
`
`C. Huitema, er al., Media Gateway Control Protocol (MGCP) Call
`
`Flows, dated January 20, 1999
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`1024
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`C. Huitema, er al., Media Gateway Control Protocol (MGCP) Call
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`Flow Test Case 1, dated February 25, 1999
`
`1025
`
`The iNOW!
`
`[VoIP Interoperability Nowl]
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`Joint Press Release,
`
`dated December 19, 1998
`
`1026
`
`L. Ong, er al. Framework Architecture for Signaling Transport, dated
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`October 1999
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`Vii
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`I.
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`INTRODUCTION
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`YMaX Corporation (“YMaX” or “Petitioner”) requests inter partes review
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`(“IPR”) of claims 1 and 20 of U.S. Patent No. 8,155,298 (“the ’298 patent”), titled
`
`“Tandem Access Controller Within The Public Switched Telephone Network” (EX.
`
`1001).
`
`II. MANDATORY NOTICES, STANDING, AND FEES
`
`A.
`
`Real Parties in Interest -— 37 C.F.R. § 42.8(b)(1)
`
`The real parties in interest are YMAX CORPORATION (Petitioner) and
`
`magiclack VocalTec Ltd., which owns ten percent (10%) or more of the shares of
`
`Petitioner and is publicly traded.
`
`B.
`
`Related Matters — 37 C.F.R. § 42.8(b)(2)
`
`Records of the U.S. Patent and Trademark Office indicate that the ’298
`
`patent, assigned on its face to Telemaze, LLC, and subsequently assigned to Focal
`
`IP, LLC ("Patent Owner"), issued from U.S. Patent Application No. 11/428,822,
`
`filed July 5, 2006.
`
`Judicial Matters: The '298 patent is being asserted against Petitioner in the
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`U.S. District Court for the Middle District of Florida in matter Patent Asset
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`Licensing, LLC v. YMax Corporation, 3.'15—cv—00744. The '298 patent is also
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`being asserted against third parties in the U.S. District Court for the Middle District
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`of Florida in the following matters: Patent Asset Licensing, LLC v. Bright House
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`Networks, LLC (3:l5—cv—00742), Patent Asset Licensing, LLC v.
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`T3
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`Communications, Inc.
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`(3:l5—cv-00747), Patent Asset Licensing, LLC V. Birch
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`Communications,
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`Inc.
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`(3:l5—cv-00746), and Patent Asset Licensing, LLC V.
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`Wideopenwest Finance, LLC et al. (3 : 1 5—cv—00743).
`
`Administrative Matters: U.S. Patent Application No. 13/358,353, filed on
`
`January 25, 2012, issued as U.S. Patent No. 8,848,894, claims priority through the
`
`'822 application. Petitioner has or will file separate petitions for inter partes
`
`review of U.S. Patent No. 8,457,113 and U.S. Patent No. 7,764,777, both of which
`
`are related to the '298 patent, owned by Patent Owner, and being asserted in each
`
`of the above listed litigations.
`
`C.
`
`Lead and Back—up Counsel — 37 C.F.R. § 42.8(b)(3)
`
`Petitioner identifies Mark D. Passler (Reg. No. 40,764), of Akerman LLP, as
`
`Lead Counsel and Brice S. Dumais (Reg. No. 65,800), of Akerman LLP, as Back-
`
`up Counsel. A Power of Attorney is filed concurrently herewith.
`
`D.
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`Service Information — 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to Counsel may be made via hand delivery or
`
`postal mailing to Akerman LLP, 777 South Flagler Drive, Suite 1100 West Tower,
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`West Palm Beach, FL 33401. Telephone: (561) 653-5000; Facsimile: (561) 659-
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`6313.
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`Petitioner
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`consents
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`to
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`service
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`by
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`electronic mail
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`at
`
`(a)
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`mark.passler@akerman.com; and (b) brice.dumais@akerman.com.
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`E.
`
`Certification of Grounds for Standing — 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the ’298 Patent is available for inter partes review
`
`and that the Petitioners are not barred or estopped from requesting inter partes
`
`review of the claims of the ’298 Patent on the grounds set forth herein.
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`F.
`
`Payment of Fees — 37 C.F.R. § 42.15(a) and § 42.103
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`The required fees are submitted herewith.
`
`If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 50-0951.
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`IH.
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`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`
`PRECISE RELIEF REQ QUESTED
`
`A.
`
`Claims For Which Review Is Requested
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`Petitioner
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`requests inter partes review under 35 U.S.C.
`
`§ 311 and
`
`cancellation of independent claims 1 and 20 of the ’298 patent on one or more of
`
`the following grounds:
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`Ground 1: O’Neal anticipates claims 1 and 20 under 35 U.S.C. § 102(e).
`
`Ground 2: Claim 1 is obvious under 35 U.S.C. § 103 over O’Neal in view
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`of McMullin.
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`Ground 3: Claim 20 is obvious under 35 U.S.C. § 103 over O’Neal in View
`
`of Chang.
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`Petitioner’s detailed statement of the reasons for the relief requested is set
`
`forth below in Section V., titled “Statement of Reasons for Relief Requested.” In
`
`accordance with 37 C.F.R. § 42.6(c), copies of the supporting exhibits are filed
`
`herewith, including the declaration of Tal Lavian, Ph.D. (Ex. l002).
`
`B.
`
`The Proposed Alternative Grounds Are Not Redundant
`
`The proposed grounds for institution are not redundant. As explained below,
`
`O'Neal discloses each of the limitations of claims 1 and 20 of the ‘298 Patent.
`
`However, to the extent that it is argued that O’Neal does not expressly disclose
`
`“Validate and acknowledge said communications request” of claim 1,
`
`this
`
`limitation is disclosed by McMullin (Ground 2). Furthermore, to the extent that it
`
`is argued that O’Neal does not expressly disclose “facilitating certain of the users
`
`to sign up to become subscribers of the communication networks through the entry
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`of user personal data through the website” of claim 20, this limitation is disclosed
`
`by Chang (Ground 3).
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`IV. THRESHOLD REQ QUIREMENT FOR INTER PARTES REVIEW
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`For each of the grounds of unpatentability proposed below,
`
`there is a
`
`reasonable likelihood that Petitioner will prevail with respect to at least one of the
`
`challenged claims, as required by 35 U.S.C. § 3 l4(a).
`
`V.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`A.
`
`Summary of the ‘298 Patent
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`1.
`
`Priority Date
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`The ‘298 patent reflects a chain of patent applications dating back to May 4,
`
`2000. However,
`
`in pending litigation against Petitioner YMaX Corporation in
`
`which the ‘298 patent is being asserted, the plaintiff has asserted that the claims of
`
`the ‘298 patent may be entitled to a priority date as early as June 1, 1999.
`
`2.
`
`Prosecution History of the ‘298 Patent
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`The ‘298 Patent issued on April 10, 2012, from Application No. 11/428,822.
`
`See EX. 1001 at p. 1. During prosecution, the claims were rejected only on the
`
`ground of nonstatutory obviousness—type double patenting in View of Patent No.
`
`6,532,288 (EX. 1020 at 116-120), in response to which applicant amended various
`
`claims "to be more specific," added new claims, and filed a terminal disclaimer.
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`Id. at 103-109. Subsequently, applicant amended the claims two more times "to
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`more clearly recite certain limitations" and "to further clarify them," and added
`
`additional claims. Id. at 38-47 and 65-75.
`
`3.
`
`Overview Of The Challenged Claims
`
`Claims 1 and 20 of the ‘298 Patent are directed towards using a website to
`
`configure telephone service options. Claim 20 adds that telephone calls may be
`
`transmitted over the conventional telephone network or may be transmitted over
`
`the Internet, z'.e., a Voice over IP call. As detailed below, both website—based
`
`configuration and Voice over IP calls are in the prior art.
`
`More specifically,
`
`the ‘298 Patent relates to “a system for allowing a
`
`subscriber to select features of the subscriber’s telephone service and to various
`
`novel features that can be selected.” EX. 1001 at 1:20-23.
`
`The patent’s specification asserts that setting up optional telephony services '
`
`such as call forwarding “typically require[s] access from the first or second party’s
`
`device [that is, from a telephone] and are extremely awkward to program.” The
`
`specification further claims that in the past, setting up such features “required a
`
`subscriber to make the feature selection through the telephone business office.
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`Central office workers would then implement the provisioning under request of the
`
`business office.” Id. at 1:49-51, 2:1-13; see also Ex. 1002 at W 23-25 .1
`
`To address the alleged problems in the prior art, the ‘298 patent discloses
`
`allowing a user to select or modify features for their telephone service “by means
`
`of the world wide web.” Id. 5:33-64. This “allow[s] a subscriber to remotely
`
`control features...
`
`Id. 2:55-57. The patent emphasizes that giving the user
`
`37
`
`“[d]irect 3rd—party control means that the ability to provision the 3rd—party features
`
`is directly available to a subscriber, eliminating the need to go through the
`
`telephone company (telco) business office.” Id. 3:3—6.2
`
`Claim 1 and Claim 20 are the only independent claims. Though they are
`
`verbose, once parsed, Claim 1 essentially claims using a website to configure a
`
`telephone system’s call forwarding feature for calls received over the conventional
`
`telephone network and a controlling device (called a web—enabled processing
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`1 "Provisioning" is a term of art in telecommunications, referring here to preparing
`
`and configuring a new service for users of the network. Ex. 1002 fi[25.
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`2 Various parts of the specification focus on two telephony features: branch calling,
`
`and caller ID based call routing. None of the claims addressed herein, however,
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`contain limitations directed to either of those features.
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`system) to effectuate the call forwarding. See Ex. 1002 1129. “Claim 20 is similar
`
`but further requires that the controlling device be connected to “a packet network
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`[such as the Internet] configured to support voice over IP (‘VOIP’).” Claim 20
`
`also requires additional well-known website features, such as granting access only
`
`to authorized users (for example, with a password).
`
`As detailed below, these claimed methods were neither new nor nonobvious
`
`as of June 1, 1999.
`
`In fact, the ‘298 patent itself admits that the primary elements
`
`of these patent claims are in the prior art.
`
`For example,
`
`in the Background section of the specification,
`
`the patent
`
`acknowledges that Call Forwarding is not just known but a “popular provision.”
`
`Ex. 1001 at 2:14-19. The ‘298 patent also admits that “[t]here are Voice Over
`
`Internet Protocol (VOIP) products emerging that provide better user interfaces and
`
`control...” Id. at 2:48-51. Still further, the patent concedes that “[t]oday, there are
`
`web-based companies managing 3rd—party call control, via the toll—switch network,
`
`which allow users to enter call control information through a web portal.” Id. at
`
`1 :3 1-34.
`
`Indeed, by July 1, 1999, there was nothing inventive about setting up a
`
`website for configuring telephone options rather than having to call customer
`
`service. For example, U.S. Patent No. 6,463,145 to O’Neal er al. (“O’Neal”)
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`discloses a system that allows
`
`a user
`
`to “review and/or modify [their]
`
`communication options” (such as “call forwarding”) over the world wide web
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`using a “user computer 100” in communication with a “web—site” and a “web
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`server 122.” Ex. 1003 at 16:36-64, 7:45-8:22, 11:26-51, Fig. 1; see also Ex. 1002
`
`1111 30-33.
`
`Additionally, U.S. Patent No. 5,958,016 to Chang et al. (“Chang”) discloses
`
`a system where the user can “review and/or change” their telephone “service
`
`control information” (such as “chang[ing] the ‘forward to’ number”) over the
`
`world wide web. EX. 1004 at 18:33-21:27, 2:54-67.
`
`In explaining the motivation
`
`for this invention, Chang notes that “[i]t
`
`is too cumbersome to require the
`
`subscriber to call the local telephone company’s business office and request each
`
`and every one of the routine changes” and that “[a] need therefore still exists for a
`
`technique which will enable any subscriber to personally access and control their
`
`AIN [‘Advanced Intelligent Network’] services from a general purpose computer
`
`without specially developed hardware or software interfaces.” Id. at 2:54-67, 4:39-
`
`42; see also EX. 1002 11 34.
`
`The foregoing two examples are not surprising because by June 1999, there
`
`were over 3 million websites on the web, including Yahoo (launched in 1994),
`
`Amazon (launched in 1995), and eBay (launched in 1995). See EX. 1010. Indeed,
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`in 1996 — over two years prior to June 1, 1999 ~ eBay hosted over 250,000
`
`auctions that received over one million bids. See Ex. 1013; see also Ex. 1002 11 35.
`
`B.
`
`Person Of Ordinary Skill In The Art
`
`A person of ordinary skill in the art with respect to the ‘298 patent in 1999-
`
`2000 would have a bachelor’s degree in electrical engineering, computer science,
`
`or the equivalent thereof and approximately 2 years of professional experience
`
`within the field of telecommunications or network communications. See Ex. 1002
`
`11 19.
`
`The ‘298 patent concerns the basic architecture of the telephone network that
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`has existed in the United States for many decades, as well as basic Internet
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`technology that was well known by 1999-2000. These topics were covered in detail
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`at that time in books, in publications by standards bodies, and by vendors that
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`provided products and solutions in these areas. Because the technology involved in
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`the ‘298 patent involves well—known technologies and functionalities, an engineer
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`or computer scientist with approximately 2 years of experience in communications
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`would be well—versed in the concepts disclosed in the ‘298 patent. See Ex. 1002 1]
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`20.
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`C.
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`State of the Art of Telecommunications by June 1999
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`1.
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`The PSTN/Circuit Switching Networks
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`The PSTN (public switched telephone network) is the world’s collection of
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`interconnected circuit—sWitching telephone networks. In the United States,
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`the
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`PSTN is the conventional telephone network, primarily built by AT&T when it
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`was “the” telephone company in the United States. It is a countrywide network of
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`switches connected to each other by wires. The wires and switches between them
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`connect the telephone of a calling party to the telephone of the called party. Once a
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`telephone call between two landline telephones is established, there is a continuous
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`physical path of wires, linked by one or more switches, between the telephones at
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`each end of the call that
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`is dedicated solely to that call. The term “circuit
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`switching” refers to the switching of infrastructure from one dedicated use to
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`another, from call to call. See EX. 1002 M 37-43.
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`The switches in the PSTN use a f1Ve—leVel hierarchy: edge or end (class 5),
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`toll or tandem (class 4), primary (class 3), sectional (class 2) and regional (class 1).
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`Landline phones in people’s houses are generally connected to a geographically
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`local class 5 switch (also called an edge switch, end switch, or central office
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`switch). Telephones in different geographic areas are connected to different edge
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`switches in different central offices. Tandem/Class 4 switches generally connect
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`edge/class 5 switches together, although nearby class 5 switches can be connected
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`directly. Class 4 and class 5 switches can be combined as a “hybrid” switch. In the
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`PSTN, class 2 and 3 switches are used infrequently, and class 4 switches can be
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`connected to one another as well as by a class 1 switch.
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`Thus,
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`the basic
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`architecture of the PSTN can be illustrated as follows:
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`See EX. 1002 W 37-43.
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`When a telephone call is placed on the PSTN, the call typically travels from
`
`the caller’s phone to the edge switch in the caller’s local central office. Unless the
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`recipient is in the same geographical area and directly connected to the same
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`U.S. Patent No. 8,155,298
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`central office, the call is then typically routed to one or more tandem switches (in
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`sequence), until
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`it reaches the edge switch that
`
`is directly connected to the
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`recipient’s phone, and finally to the recipient’s phone. The switches use the
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`telephone number dialed by the caller to know where to route the call. Thus, the
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`network of switches enables the communication network to connect users either
`
`within or outside a local geographic area. See EX. 1002 W 37-43.
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`2.
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`Signaling
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`In addition to carrying Voice communications,
`
`the PSTN also carries
`
`signaling. Signaling communicates information the network needs to operate, such
`
`as the signal sent to the local central office from a telephone when the handset is
`
`picked up that notifies the central office to send the telephone a dial tone, or the
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`signal from the central office that tells a telephone to ring because there is an
`
`incoming call. The protocol that is used for signaling on the PSTN is called
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`Signalling System 7, or SS7. EX. 1017. The SS7 signaling protocol has been used
`
`since well before June 1999. See EX. 1002 1111 44-45.
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`3.
`
`Packet-Switching Networks:
`
`the Internet and Voice over IP
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`Websites on the Internet were commonplace by June 1, 1999; as noted
`
`above, there were over 3 million websites by then. See EX. 1002 11 33.
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`In contrast
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`to the PSTN’s circuit—switched network, which requires a
`
`dedicated point-to—point connection during a phone call, the Internet is a packet-
`
`switched network. There is no dedicated route between two computers that are
`
`communicating over the Internet. Rather, information is broken down into small
`
`blocks called packets, each of which includes the address of the destination
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`computer. Each packet may travel a different route through the connected parts of
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`the Internet before arriving at the destination computer. The packets are then
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`reassembled at the destination computer. See EX. 1002 11 47.
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`TCP/IP is a collection of protocols used for, among other things, sending
`
`information through the Internet. The “IP” stands for Internet Protocol. Voice over
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`IP, or VoIP,
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`is the transmission of voice that has been converted into digital
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`packets of data using the Internet Protocol. VoIP communications typically take
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`place over the Internet. See Ex. 1002 1111 48-49.
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`As the ‘298 patent admits, VoIP was invented and used before the alleged
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`invention of the ‘298 patent. See EX. 1001 at 2:48-51 (“There are Voice Over
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`Internet Protocol (VOIP) products emerging that provide better user interfaces and
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`control but they do not take advantage and [sic] voice quality of the PSTN.”)
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`Indeed, a public domain VoIP application NetFone (later called Speak
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`Freely) was released in 1991 by Autodesk. See EX. 1018. The first commercial
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`U.S. Patent No. 8,155,298
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`Internet VoIP application, called Internet Phone, was released by Petitioner’s
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`predecessor VocalTec Communications in February of 1995. See EX. 1002 W 51-
`
`52.
`
`U.S. Patent number 6,031,836 (the “Haserodt patent”), the application for
`
`which was filed in 1996, discloses not just Voice over IP telephony, and not just
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`Voice communications between a VoIP user and a PSTN user (thus using both a
`
`packet—switched network and a circuit-switched network), but also use of a website
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`to allow users to choose and configure telephony features, such as “redirection of
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`incoming calls to another destination.” See EX. 1015 at l:l0—17 (“It is known in
`
`the communications arts that Voice calls can be carried by the Internet (or some
`
`other data transport network) between a pair of Internet phones or Voice—enabled
`
`computers. It
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`is also known that Voice calls carried by the Internet can be
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`interfaced by a gateway to the telephone network so that an Internet phone or a
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`Voice—enabled computer connected to the Internet can engage in a Voice call with a
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`standard telephone connected to the telephone network”), 2:33-50 (“Specifically
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`according to another aspect of the invention, a method of accessing telephony
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`features over the Internet by using the World Wide Web (WWW) comprises the
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`following steps ...), 5:30-49; see also EX. 1002 W 46-53.
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`U.S. Patent No. 8,155,298
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`D.
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`An Embodiment of the ‘298 Patent
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`In this embodiment, a subscriber of the system (item 12) can select or
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`modify telephone service options such as call forwarding using a Website hosted by
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`a Web server (item 23). EX. 1001 at 5:33-64. The subscriber’s selections will be
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`provided to the TAC 10. Id. at 5:60-63. In operation, when a caller (item 20) calls
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`U.S. Patent No. 8,155,298
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`the subscriber using the “subscriber’s public phone number,” the call travels from
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`the caller’s local Central Office 18 to the tandem switch 16, and then to the TAC
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`10.
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`Id. at 3:14-16. Based on the subscriber’s selections, the TAC will determine
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`where to route the telephone call.
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`Id. at 3:16-23, 5:5-20, 6:26-29, 1021-3. If the
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`subscriber set a forwarding number, the TAC 10 will place a second call to the
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`forwarding number. Id. When the second call is answered, the TAC 10 connects
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`the first call to the second call, “thereby connecting the calling party 20 to the
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`subscriber 12.” Id; see also EX. 1002 1111 54-55.
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`E.
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`Claim Construction
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`For purposes of this petition for Inter Partes Review, the challenged claims
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`must be given their broadest reasonable interpretations to one of ordinary skill in
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`light of the specification. 37 C.F.R. § 42.100(b). Claim language not specifically
`
`addressed below should be given its plain and ordinary meaning.
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`1.
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`“web enabled”
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`Claim 1 recites “A method performed by a web enabled processing system
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`including one or more web servers coupled to a call processing system...” The
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`broadest reasonable interpretation of the phrase “web enabled” is “capable of
`
`receiving information from, or sending information over, the Internet’s world wide
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`web.” This is supported by the specification, which has numerous disclosures of
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`an embodiment of the processing system (the tandem access controller or “TAC”)
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`either receiving information from, or sending information to, the user via the web.
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`See, e.g., Ex. 1001 at 3:53-56, 4:17-19, 5:33-36, 5:38-40, 6:57-62, 8:23-27; see
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`also Ex. 1002 ‘M 57-58.
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`2.
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`“processing system”
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`Claim 1 uses the phrase “web-enabled processing system.” Claim 1 further
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`requires the “processing system” to be coupled to a switching facility and to
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`execute control criteria to control routing of communications. See Ex. 1001.
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`In the specification, the TAC in the disclosed embodiments is described as
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`web enabled (as explained above), is coupled to a switching facility (see, e. g., Ex.
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`1001 at Fig. 1), and executes control criteria to control routing of communications.
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`Furthermore, acting as their own lexicographer, the inventors state that the TAC is
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`a “processor”: “In one embodiment, the system includes a processor, referred to
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`herein as a tandem access controller (TAC), connected to the PSTN ...” Ex. 1001
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`at 3:7-9. Thus, the broadest reasonable interpretation of “processing system” in
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`light of the specification is “a system with a processor.” See Ex. 1002 W 59-62.
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`This broadest reasonable interpretation of “processing system” is further
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`confirmed by the two uses of the phrase “processing system” in the specification:
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`(1) “The offered features are implemented by software programs run by the
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`Petition for Inter Partes Review
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`U.S. Patent No. 8,155,298
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`processing system” and (2) “The caller ID feature may be implemented by a
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`software program run by the processing system in TAC 10.” Ex. 1001 at 3:66-67,
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`10:66-67.
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`In both instances, the specification speaks of the “processing system”
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`running software, and
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