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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`YMAX CORPORATION,
`Petitioner
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`v.
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`FOCAL IP, LLC,
`Patent Owner
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`_____________
`
`Case IPR2016-01256
`U.S. Patent No. 8,155,298
`_____________
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`PETITIONER'S REPLY TO PATENT OWNER'S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
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`{40013004;2}
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`Case IPR2016-01256
`U.S. Patent No. 8,155,298
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`Paper No. 11
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................ i
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`I.
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`II.
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`INTRODUCTION .........................................................................................1
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`THE STANDARD FOR CLAIM SCOPE DISCLAIMER........................3
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`III. THE SPECIFICATION DOES NOT CONTAIN A DISCLAIMER .......4
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`A.
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`The specification states that its criticisms of controlling features through an
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`edge switch are overcome by the “preferred embodiment” – not by all
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`embodiments of the invention ................................................................................4
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`B.
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`The specification discloses an embodiment that includes the controller being
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`connected to an edge switch...................................................................................6
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`IV. THE PROSECUTION HISTORY DOES NOT CONTAIN A
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`DISCLAIMER..........................................................................................................7
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`A.
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`The patent applicants did not clearly disavow connection to edge switches,
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`and, moreover, defined “switching facility” to include edge switches..................7
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`B.
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`The PTO is not required to accept prosecution history disclaimer .................9
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`V.
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`CONCLUSION ............................................................................................10
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`i
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`Case IPR2016-01256
`U.S. Patent No. 8,155,298
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`I.
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`INTRODUCTION
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`Paper No. 11
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`Pursuant to the Board’s e-mail on November 9, 2016, Petitioner respectfully
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`submits this Reply to address Patent Owner’s arguments concerning disclaimer of
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`claim scope.
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`Claim 1 of the ’298 patent uses the phrase “switching facilities” several
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`times, including in the limitation “the web-enabled processing system coupled to at
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`least one of the switching facilities.” Patent Owner argues that the applicants
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`disclaimed processing systems (controllers) that are connected to edge switches.1
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`It further argues that the construction of “switching facility” should therefore
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`exclude edge switches, notwithstanding the phrase’s plain meaning of “any switch
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`in the communication network.” See Prelim. Resp. at 1, 14–41; Petition at 20-24.
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`1 Patent Owner also argues that applicants disclaimed controllers that are edge
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`devices. However, per the Patent Owner, “an edge device is a device connected to
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`an edge switch.” Prelim. Resp. at 9. Thus, there appears to be no substantive
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`difference between a controller connected to an edge switch and a controller that is
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`an edge device. Therefore, Petitioner's arguments in this Reply regarding “edge
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`switch” disclaimer also apply to “edge device” disclaimer.
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`However, to effectuate a disclaimer of claim scope, the disavowal in the
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`specification or prosecution history must be “clear and unmistakable.” Thorner v.
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`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012). The
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`specification here expressly discloses two embodiments. The first describes the
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`controller as merely “connected to the PSTN,” without restriction regarding the
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`connection. It is only the second (albeit preferred) embodiment that more narrowly
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`specifies that
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`the controller is “connected internally to the PSTN,” that
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`is,
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`“[c]onnect[ed] directly to the PSTN tandem switch….” Ex. 1001 at 3:7-28.
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`Likewise, although the applicants argued in the prosecution history that their
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`architecture differs from that in Schwab where calls are routed via an edge switch,
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`in their very next breath, applicants define “switching facilities” in a footnote to
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`broadly encompass “Any point in the switching fabric of converging networks,
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`also referred to in industry as a signal transfer point (STP), signal control point
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`(SCP), session border controller (SBC), gateway, access tandem, class 4 switch,
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`wire center, toll office, toll center, PSTN switching center, intercarrier connection
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`point, trunk gateway, hybrid switch, etc.” Ex. 2005 at 81-82, 82 n.1 (emphases
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`added). That broad definition with its open-ended list of examples that include a
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`“hybrid switch” (which is a combination class 4/tandem and class 5/edge switch)
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`is contrary to a “clear and unmistakable” disclaimer of edge switches.
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`2
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`Because applicants chose to use the broad phrase “switching facility” in their
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`claims and did not unambiguously exclude the possibility of that facility being an
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`edge switch, Patent Owner has failed to prove the existence of a disclaimer that
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`narrows the scope of the phrase from its plain meaning.
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`II.
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`THE STANDARD FOR CLAIM SCOPE DISCLAIMER
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`As the Federal Circuit has explained, the standard for finding a disclaimer of
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`claim scope is “exacting.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
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`1304, 1309 (Fed. Cir. 2014). Disavowal does not arise merely by criticizing a
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`particular embodiment that is encompassed in the plain meaning of a claim term.
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`See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009).
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`Nor is it enough that all the embodiments of the invention disclosed in the
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`specification contain a particular limitation. Thorner v. Sony Computer Ent. Am.
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`LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Rather, a disclaimer of claim scope
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`must be “clear and unmistakable.” Id. at 1366-67 (emphasis added); see also
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`Openwave Systems, Inc. v. Apple Inc., 808 F.3d 509, 513 (Fed. Cir. 2015)
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`(disavowal must be, among other things, “so unmistakable as to be unambiguous
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`evidence of disclaimer.’”) (emphasis added); LG Electronics, Inc. v. Advanced
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`Micro Devices, Inc., Case IPR2015-00324, Paper 39 at 17 (PTAB May 23, 2016).
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`3
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`Patent Owner bears the burden of establishing the existence of a disclaimer
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`here. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016)
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`(“The party seeking to invoke prosecution history disclaimer bears the burden of
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`proving the existence of a ‘clear and unmistakable’ disclaimer that would have
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`been evident to one skilled in the art.”)
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`III. THE SPECIFICATION DOES NOT CONTAIN A DISCLAIMER
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`A.
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`The specification states that its criticisms of controlling features
`through an edge switch are overcome by the “preferred
`embodiment” – not by all embodiments of the invention
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`It is true that the specification of the '298 Patent asserts that prior art devices
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`that connected to edge switches had certain problems. See Ex. 1001 at 1:56-64.
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`Patent Owner asserts that this criticism supports the existence of a disclaimer of
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`edge switches as part of “switching facilities.” The flaw in this argument is that
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`the specification explicitly states that these edge switch problems are solved by a
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`preferred embodiment, as opposed to all embodiments of the invention:
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`A preferred embodiment of the inventive system described
`herein connects at the tandem, thereby eliminating these problems [of
`edge switches and edge devices].
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`Ex. 1001 at 1:65-67.
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`4
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`That connecting to a tandem switch is explicitly disclosed as merely the
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`preferred embodiment is alone sufficient to rebut Patent Owner’s suggestion that
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`the specification disavowed connecting to an edge switch. For example, in the
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`Honeywell case cited by Patent Owner, the Federal Circuit found that the claimed
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`“fuel injection system component” was limited only to fuel filters because the
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`specification repeatedly described a fuel filter as “the invention” and not as only a
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`“preferred embodiment.” Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d
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`1312, 1318 (Fed. Cir. 2006) (“Moreover, the written description does not indicate
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`that a fuel filter is merely a preferred embodiment of the claimed invention.”)
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`In another case, Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317
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`(Fed. Cir. 2002), the specification described two problems with the prior art.
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`Because the specification explained that only one configuration of the parts of the
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`invention solved both of those problems, the district court had found that the
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`inventors disclaimed other configurations.
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`Id. at 1325. On appeal, the Federal
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`Circuit reversed that finding. The appellate court explained that the disclosed
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`embodiment
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`that solved both problems was “a preferred embodiment of the
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`invention. Such a description of a preferred embodiment does not, of course, limit
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`the scope of the claims.” Id. at 1326.
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`Here, as in Honeywell v. Victor and unlike in Honeywell v. ITT,
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`the
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`applicants specifically describe the controller connected to a tandem switch as a
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`“preferred embodiment,” not as the only embodiment of the invention. Thus,
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`Patent Owner has failed to show a clear disavowal here. See also Epistar Corp. v.
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`Int'l Trade Comm'n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (criticism of a particular
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`embodiment without a clear disavowal does not create a disclaimer).
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`B.
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`The specification discloses an embodiment
`controller being connected to an edge switch
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`that includes the
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`Furthermore, the specification of the ’298 patent explicitly discloses two
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`embodiments of the invention. Only in the second is the controller connected
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`directly to a tandem switch, “outside the central office [i.e., edge switch] of the
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`subscriber”; the first encompasses any connection to the PSTN, including inside
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`the subscriber's central office (i.e., edge switch):
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`In one embodiment, the system includes a processor, referred to
`herein as a tandem access controller (TAC), connected to the PSTN
`… In one embodiment, the TAC subsystem is connected internally to
`the PSTN in a local service area and is outside the central office of
`the subscriber ... Connecting directly to the PSTN tandem switch …
`eliminates the signal degradation problems previously described.
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`6
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`Ex. 1001 at 3:7-28 (emphases added).
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`Edge switches are, by definition,
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`components that connect to devices outside the PSTN. Thus, in contrast to the
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`second embodiment in which the controller is connected “internally” to the PSTN
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`and “outside the central office [i.e., edge switch]", the first embodiment in which
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`the controller is merely “connected to the PSTN” plainly includes being connected
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`to an edge switch. This is confirmed by the applicants in the prosecution history of
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`U.S. Patent No. 7,764,777, to which the ’298 patent claims priority. Applicants
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`there characterize the phrase “Connection to the PSTN” as being an “edge device
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`description[]” (Ex. 2005 at 135):
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`The specification therefore fails to disclaim edge switches from the scope of
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`the switching facilities to which the controller of the invention may be connected.
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`IV. THE PROSECUTION HISTORY DOES NOT CONTAIN A
`DISCLAIMER
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`A.
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`The patent applicants did not clearly disavow connection to edge
`switches, and, moreover, defined “switching facility” to include
`edge switches
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`Patent Owner also argues that the prosecution history of the ’777 patent (to
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`which the ’298 patent claims priority) disclaims the “application of call control
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`7
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`features through an edge switch or an edge device.” Prelim. Resp. at 1, 27-33.
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`Patent Owner is incorrect.
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`As with regard to the specification, allegedly disavowing statements “made
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`during prosecution [must] be both clear and unmistakable.” Omega Eng'g, Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003). Thus, the Federal Circuit
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`has refused to find a disclaimer where the alleged disavowal is ambiguous.
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`See
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`Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003).
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`First, Patent Owner fails to point to a clear statement by the applicants that
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`their claimed invention excludes controllers that are connected to edge switches.
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`Patent Owner characterizes the prosecution history as including such an express
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`statement by the applicants, but Patent Owner is overstating the facts. See Prelim.
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`Resp. at 28-29 (the text quoted by Patent Owner does not support its contention
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`that applicants stated “the claimed controller was not” an edge device).
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`Furthermore, in the same prosecution history, applicants provide a definition
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`for the phrase at issue, “switching facility”: “Any point in the switching fabric of
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`converging networks, also referred to in industry as a signal transfer point (STP),
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`signal control point (SCP), session border controller (SBC), gateway, access
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`tandem, class 4 switch, wire center, toll office, toll center, PSTN switching center,
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`intercarrier connection point, trunk gateway, hybrid switch, etc.” Ex. 2005 at 82
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`{40013004;2}
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`8
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`n.1 (emphases added). At least the phrases “Any point in the switching fabric” and
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`“hybrid switch” include edge switches.
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`Indeed, a hybrid switch is a combined
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`class 4/class 5 switch; it is both an edge switch and a tandem switch. This is
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`confirmed by Petitioner's expert (Ex. 1002 at 21, ¶ 0042) and by Patent Owner's
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`own Exhibit 2002, which explains that “[i]n many instances, a Class 4 office [i.e., a
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`tandem switch] also serves as a Class 5 office [i.e., an edge switch, otherwise
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`referred to as a central office]; in other words, a hybrid switch serving as both a
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`Central Office and a tandem toll office, with the separate functions provided
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`through logical and physical partitioning within the switch.” Ex. 2002 at 4. Thus,
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`the Patent Owner's own “switching facility” definition expressly includes an
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`example of an edge switch.
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`Having failed to unambiguously disavow connections to edge switches, and
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`having expressly given a broad definition to “switching facility” that includes as a
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`non-limiting example a device that serves in part as an edge switch, applicants did
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`not make a clear and unmistakable disavowal of edge switches as part of the broad
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`phrase “switching facility.”
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`B.
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`The PTO is not required to accept prosecution history disclaimer
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`Even if the Board disagrees with Petitioner and finds evidence of a
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`disclaimer here, the Federal Circuit has squarely held that
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`the Board is not
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`9
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`obligated to accept
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`it: “the PTO is under no obligation to accept a claim
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`construction proffered as a prosecution history disclaimer, which generally only
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`binds the patent owner.” Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978
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`(Fed. Cir. 2014). Declining to adopt a disclaimer here would be appropriate
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`because, at minimum, the record created by applicants is too unclear to provide
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`proper public notice. Furthermore, declining to accept a disclaimer here would not
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`be unduly prejudicial
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`to the Patent Owner because inter partes review (if
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`instituted) provides the Patent Owner with the ability to amend its claims. If Patent
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`Owner believes that the edge switch / tandem switch distinction it is trying to inject
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`into the claims will preserve patent validity, Patent Owner will have the
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`opportunity to amend its claims to include such an alleged distinction.
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`V.
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`CONCLUSION
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`For at least these reasons, Petitioner respectfully submits that Patent Owner
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`did not disclaim edge switches from the scope of the phrase “switching facilities.”
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`Respectfully submitted,
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`AKERMAN LLP
`
`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
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`Dated: November 16, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Reply was served by
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`electronic mail addressed to the Patent Owner's counsel of record in this IPR:
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`(1) Brent N. Bumgardner (at brent@nelbum.com);
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`(2) John Murphy (at murphy@nelbum.com); and
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`(3) PAL-IPR@nelbum.com.
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`Dated: November 16, 2016
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`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
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`{40013004;2}
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`11
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`CERTIFICATE OF PAGE COUNT
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`The undersigned hereby certifies that, in compliance with instructions from
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`the Board, the foregoing reply (excluding the table of contents, table of authorities,
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`mandatory notices listed in §42.8(b), certificates of service and page count, and list
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`of exhibits) contains only 10 pages.
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`Dated: November 16, 2016
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`/s/ Mark D. Passler
`
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
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`{40013004;2}
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`12