`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01256
`Patent Number: 8,155,298
`________________
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 1
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`QUALIFICATIONS ........................................................................................ 1
`
`PERSON OF ORDINARY SKILL ................................................................. 4
`
`III.
`
`LEGAL UNDERSTANDING ......................................................................... 4
`
`A.
`
`B.
`
`C.
`
`ANTICIPATION ................................................................................... 5
`
`OBVIOUSNESS ................................................................................... 5
`
`BROADEST REASONABLE INTERPRETATION ........................... 8
`
`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE ’298
`PATENT .......................................................................................................... 9
`
`V.
`
`GENERAL DISCLAIMER OF CONTROLLERS CONNECTED TO EDGE
`SWITCHES ...................................................................................................16
`
`A.
`
`B.
`
`1.
`
`2.
`
`Disparaging Statements in the ’298 Patent .........................................16
`
`Applicants’ Statements in the Prosecution History to Distinguish over
`Schwab ................................................................................................21
`
`’777 Patent Prosecution - First Response to an Office Action .........21
`
`’777 Patent Prosecution - Second Response to an Office Action ....23
`
`C.
`
`Scope of General Disclaimer ...............................................................26
`
`VI. CLAIM CONSTRUCTIONS ........................................................................27
`
`A.
`
`B.
`
`C.
`
`“Switching Facility” ............................................................................28
`
`“Coupled To” ......................................................................................33
`
`“Controller” .........................................................................................35
`
`ii
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 2
`Bates Declaration
`IPR2016-01256
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`
`
`Declaration of Regis J. “Bud” Bates
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`VII. SUMMARY OF THE REFERENCES .........................................................35
`
`A.
`
`Summary of O’Neal ............................................................................35
`
`VIII. ARGUMENTS ..............................................................................................39
`
`A.
`
`The Challenged Claims of Ground 1 Are not Anticipated by
`O’Neal .................................................................................................40
`
`1. The Claimed “Switching Facility” Cannot Be an Edge Switch .......40
`
`2. The Purported “Switching Facility” in O’Neal is an Edge Switch, and
`the Purported “Eeb-Enabled Processing System” is an Edge
`Device ...............................................................................................41
`
`3.
`
`Petitioner’s Secondary Argument Regarding The Breadth of
`“Coupled To” Are Equally Deficient ...............................................42
`
`4. O’Neal only Discloses Subject Matter that has Been Disclaimed ...43
`
`B.
`
`C.
`
`The Challenged Claims of Ground 2 are not Obvious by O’Neal in
`View of McMullin ...............................................................................43
`
`The Challenged Claims of Ground 3 Are Not Obvious by O’Neal in
`View of Chang .....................................................................................43
`
`IX. CONCLUSION ..............................................................................................44
`
`iii
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 3
`Bates Declaration
`IPR2016-01256
`
`
`
`I, Regis J. “Bud” Bates, declare as follows:
`1.
`My name is Regis J. “Bud” Bates, and I have been retained as an
`expert witness for Inter Partes Review of IPR2016-01256.
`2.
`This report contains statements of my opinions formed to date and the
`bases and reasons for those opinions. I may offer additional opinions based on
`further review of materials in this case, including opinions and/or testimony of other
`expert witnesses.
`3.
`I understand that this Declaration is being submitted along with Patent
`Owner’s Preliminary Response.
`4.
`Capitalized terms found in this Declaration that are not defined herein have
`the meaning given them in Patent Owner’s Preliminary Response.
`5.
`In preparing this Declaration, I have reviewed the Petition, the declaration
`that accompanies the Petition (hereinafter referred to as “Petitioner’s Declaration”),
`and the exhibits that have been submitted with the aforementioned filings.
`6.
`This Declaration is a statement of my opinions on issues related to the
`validity of the Challenged Claims of the ’298 Patent.
`7.
`I am of the opinion that the Challenged Claims of the ’298 Patent are
`patentable for the reasons discussed below.
`
`I.
`
`QUALIFICATIONS
`This section summarizes my career history, education, publications, and
`8.
`other relevant qualifications. My full curriculum vitae is attached as Appendix A to
`this report.
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 4
`Bates Declaration
`IPR2016-01256
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`
`
`Declaration of Regis J. “Bud” Bates
`
`I have been involved in and with the telecommunications industry for 50
`9.
`years and have seen the development and growth of the various technologies,
`infrastructure, legal, regulatory, and technical services.
`10. Notably, I am the author of 20 books which outline the use of Voice and
`Data technologies used throughout the industry. As author of this book, I am
`uniquely situated to opine upon the state of the Telephone Networks, as well as the
`conclusions that both parties in this proceeding draw therefrom.
`11.
`I am the founder and president of TC International Consulting, Inc.
`(TCIC), based in Heber, Arizona. I have held this position since the inception of the
`company in October 1989. TCIC is a full service consulting and training firm
`specializing in communications and computer convergence.
`12. My role is to assist our client companies with the analysis of options,
`selection of vendors or products to meet their strategic goals, and training for
`technologies including voice, telephone systems, data networks, video, Internet,
`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
`systems and services, fiber optics, and infrastructure. We have been responsible for
`selecting and implementing over 100 private branch exchange (PBX) systems for
`our client companies. TCIC develops and conducts training for corporate users,
`equipment manufacturers, and Telephone and Internet carriers.
`13.
`From September 1986 to October 1989, I was the chief information officer
`at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities included
`the complete automation of the law firm’s multiple offices around the country.
`
`2
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 5
`Bates Declaration
`IPR2016-01256
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`
`
`Declaration of Regis J. “Bud” Bates
`
`From September 1979 to September 1986, I was the telecommunications
`14.
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
`select, analyze and implement voice and data communications projects at U.S. and
`international sites.
`15.
`From April 1977 to September 1979, I was the senior telecommunications
`manager for manufacturing and international sites at Data General Corporation in
`Westboro, MA. I was responsible for selecting telecommunications equipment for
`sites across the world, selecting services (voice, data and fax traffic) from common
`carriers, and selecting appropriate means and protocols to use these goods and
`services.
`From September 1974 to April 1977, I was the manager of administrative
`16.
`services at a retail chain in Canton, MA called Hills Department Stores. There, I was
`responsible for communications matters including voice, data, fax, telex, and
`teletype.
`From April 1972 to September 1974, I worked as the telecommunications
`17.
`and facilities manager at Damon Corporation, a conglomerate that included medical-
`biological development, veterinary products, clinical labs, security manufacturing,
`and hobby craft. My responsibilities included voice and data communications for a
`variety of locations across the country.
`18.
`From September 1966 to April 1972, I was a captain in the U.S. Army
`Signal Corps. My assignments took me to many locations, including a deployment
`in Vietnam, where I worked in mobile and fixed-site communication environments
`using radio-based troposcatter systems.
`
`3
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 6
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`In addition to these formal roles, I have consulted for and provided training
`19.
`courses to over 20 major organizations, including Cisco, Motorola Solutions, Nortel
`Networks, the University of California at Berkeley, and Fidelity Investments, as well
`as the U.S. Army, Electronic proving Grounds, Central Intelligence Agency, Federal
`Bureau of Investigation, and National Security Agency.
`20.
`I received a Bachelor of Sciences degree in Business Management in 1979
`from Stonehill College in Easton, MA with additional work towards my Masters of
`Business Administration from Lehigh University in Bethlehem, PA and St. Joseph’s
`College in Philadelphia, PA. I completed all the coursework but not the thesis for an
`MBA.
`I have authored or co-authored 20 books on telecommunications
`21.
`technologies, and have authored 9 magazine articles.
`
`II.
`
`PERSON OF ORDINARY SKILL
`22. While I am not expressing an opinion at this time on whether Petitioner’s
`declarant’s definition of a person of ordinary skill in the art is correct, I am adopting
`it for the limited purposes of this Declaration.
`
`III. LEGAL UNDERSTANDING
`23. Although I am not an attorney and do not intend to testify about legal
`issues, my opinions are also informed by my understanding of the relevant law. I
`understand that the Patent Office will find a patent claim invalid in an inter partes
`review if it concludes that it is more likely than not that the claim is invalid.
`
`4
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 7
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`A.
`
`ANTICIPATION
`I have read 35 U.S.C. §§ 102 (a)-(g) and have been advised by counsel of
`24.
`the requirements to prove “anticipation” of a patented invention under these
`statutory provisions. I have been advised that if each and every element or step of a
`claim is disclosed within the “four corners” of a single prior art reference, that claim
`is said to be anticipated by that prior art reference and is invalid under 35 U.S.C. §
`102.
`I understand that anticipation requires that a single reference disclose all
`25.
`the elements, as arranged in the claim. I further understand that the prior art reference
`must clearly and unequivocally disclose the claimed invention or direct those skilled
`in the art to the claimed invention without any need for picking, choosing, and
`combining various disclosures not directly related to each other by the teachings of
`the cited reference.
`26.
`I also have been advised that a prior art reference can disclose a claim
`feature because the feature is expressly described, or because the feature is inherent
`in the disclosure. I understand that something is inherent in a prior art reference if
`the missing descriptive matter must be necessarily present, and it would be so
`recognized by one of ordinary skill in the art. I also understand that inherency cannot
`be established by probabilities or possibilities, and that the mere fact that something
`may result from a given set of circumstances is not sufficient to show inherency.
`
`B.
`
`OBVIOUSNESS
`I have also been advised by counsel of the legal standards that apply to
`27.
`invalidity for obviousness under 35 U.S.C. § 103. I understand that a patent claim
`
`5
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 8
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`IPR2016-01256
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`Declaration of Regis J. “Bud” Bates
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`may be invalid under 35 U.S.C. § 103 if the differences between the claimed subject
`matter and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the
`art to which the subject matter pertains. I understand that obviousness is a question
`of law and that the following factors must be evaluated to determine whether a party
`challenging a patent claim’s validity has met its burden of proof that the claimed
`invention is obvious: (1) the scope and content of the prior art; (2) the differences
`between the claims and the prior art; (3) the level of ordinary skill in the art; and (4)
`objective indicia of nonobviousness.
`28.
`I understand that to reach a proper determination under 35 U.S.C. § 103,
`one must step backward in time and into the shoes worn by the hypothetical “person
`of ordinary skill in the art” (“POSA”) when the invention was unknown and just
`before it was made. In view of all factual information, one must then make a
`determination whether the claimed invention “as a whole” would have been obvious
`at that time to that person of ordinary skill in the art. Knowledge of the applicants’
`disclosure must be put aside in reaching this determination, yet kept in mind in order
`to determine the differences between the claimed subject matter as a whole and the
`content of the prior art.
`29.
`If a single element of the claim is absent from the prior art, alone, or in
`combination, the claims cannot be considered obvious.
`30. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I have been informed by counsel
`to consider any distortion caused by hindsight bias, to guard against slipping into the
`6
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 9
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`use of hindsight, to be cautious of opinions that rely upon after‐the-fact reasoning,
`
`and to avoid the temptation to read into the prior art the teachings of the invention
`at issue. The determination of obviousness is not whether a person could, with full
`knowledge of the patented device, reproduce it from prior art or known principles.
`The question is whether it would have been obvious, without knowledge of the
`patentee’s achievement, to produce the same thing that the patentee produced. This
`judgment must be made without the benefit of hindsight. It is improper to take
`
`concepts from other devices and change them in light of the now‐known template of
`
`the patented device, without some direction that would render it obvious to do so.
`31.
`I understand that a claim is not proven obvious merely by demonstrating
`that each of the claim elements was independently known in the prior art. I
`understand that most, if not all, inventions rely on building blocks long since
`uncovered and claimed discoveries, and, almost of necessity, will likely be
`combinations of elements that were already known. A party challenging validity
`must show that a person of ordinary skill in the art would have had a reason to
`combine the teachings of the prior art to achieve the claimed invention and would
`have had a reasonable expectation of success in doing so.
`32.
`I have also been informed by counsel that an inference that a claimed
`combination would not have been obvious is especially strong where the prior art’s
`teachings undermine the very reason being proffered as to why a person of ordinary
`skill would have combined the known elements. A reference may be said to "teach
`away" when a person of ordinary skill, upon reading the reference, would be
`discouraged from following the path set out in the reference, or would be led in a
`7
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 10
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`direction divergent from the path that was taken by the applicant. Where a proposed
`modification or combination for the prior art would change the principle of operation
`of the prior art being modified or render the prior art unsatisfactory for its intended
`purpose then the teachings of the references are not sufficient to render the claims at
`issue obvious.
`33.
`I have been informed by counsel that a party challenging the claims of a
`patent must present evidence sufficient to establish some articulated, rational reason
`to select and combine the teachings of the prior art to produce the claimed invention
`with a reasonable expectation of success, which is sometimes referred to as a prima
`facie conclusion, or case, of obviousness.
`
`C.
`
`BROADEST REASONABLE INTERPRETATION
`The Board interprets claims in an unexpired patent using the broadest
`34.
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`they appear. Under a broadest reasonable interpretation, words of the claim must be
`given their plain meaning, unless such meaning is inconsistent with the specification
`and prosecution history. Under this standard, claims should always be read in light
`of the specification and teachings in the underlying patent claim. A construction
`under BRI cannot be divorced from the specification and the record evidence, and
`must be consistent with the one that those skilled in the art would reach. The
`construction must be reasonable in light of the totality of the written description and
`the claims. I have also been informed by counsel that the prosecution history may
`be an important component of intrinsic evidence in construing claims, even when a
`broadest reasonable construction standard applies.
`8
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 11
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`I understand that the broadest reasonable interpretation of a claim term
`35.
`cannot be so broad as to include a configuration expressly disclaimed or disavowed
`in the specification. Claim terms are given their plain meaning unless the
`specification or prosecution history evidences that the patentee acted as his own
`lexicographer or disavowed claim scope.
`
`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE ’298
`PATENT
`36. Before discussing ’298 Patent, a general description of the public
`telephone network is in order. The public telephone network is often associated with
`the acronym PSTN (Public Switched Telephone Network). While Petitioner and
`Patent Owner disagree over what is and is not included in the PSTN, there are areas
`of agreement. All parties seemingly agree that the core networks of “traditional”
`telecommunications companies (e.g., AT&T) used to route voice calls from one
`phone to another are part of the PSTN. For example, a voice call from a “wired”
`analog telephone in California on an AT&T network to another “wired” analog
`telephone in New York on a Verizon network will traverse the PSTN.
`37.
`To connect phones in distant locations, the PSTN employs various
`equipment to route calls. This equipment includes switches and databases, and is
`arranged in a hierarchical fashion:
`
`9
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 12
`Bates Declaration
`IPR2016-01256
`
`
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`Declaration of Regis J. “Bud” Bates
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`10
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 13
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`IPR2016-01256
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`Declaration of Regis J. “Bud” Bates
`
`See https://en.wikipedia.org/wiki/PSTN_network_topology. Notably, the same
`hierarchical levels/equipment may be referred to by a variety of names. In both
`examples above, the class 4 level refers to both a “toll center” and a “tandem switch.”
`This understanding is important because the ’298 Patent and prior art references
`sometimes use different terminology to refer to the same hierarchical level.
`38. At the top of the hierarchy are regional toll centers (class 1 offices). These
`offices are interconnected with sectional toll centers (class 2 offices), which in turn
`connect to primary centers (class 3 offices). As a point of reference, in 1984 (the
`year AT&T was broken up into the “Baby Bells”), there were 10 class 1 centers, 67
`class 2 centers, and 200 class 3 centers. Ray Horak, Communications Systems &
`Networks 159-61, (2nd ed. 2000) (Ex. 2002).
`39. Class 4 and 5 levels comprise the rest of the hierarchy and are of particular
`relevance to the ’298 Patent. Class 4 centers contain tandem switches. Class 4
`centers are also referred to as toll centers, and tandem switches are also referred to
`as Class 4 switches or toll switches. As a point of reference, in 1984, there were
`approximately 940 tandem switches. Id.
`40.
`Tandem switches have been defined as:
`High-capacity switch[es] positioned in the physical core, or backbone, of
`[the PSTN], where [they] serve to interconnect edge switches, or Central
`Office (CO) switches.
`
`Ray Horak, Webster’s New World Telecom Dictionary (2008), 474 (“Telecom.
`Dict.”) (Ex. 2003); and
`
`11
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 14
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`[N]etwork switches that serve in partnership with lesser switches,
`linking them together. In other words and in the classic sense, tandem
`switches serve no end users directly; rather, they serve to interconnect
`switches over dedicated
`interoffice
`trunks,
`forming a
`fully
`interconnected and toll-free metropolitan calling area in the process.
`
`Ray Horak, Telecommunications and Data Communications (2007), 212 (Ex. 2004).
`The ’298 Patent refers to a “PSTN tandem switch” as “exchanges that direct
`telephone calls (or other traffic) to central offices [] or to other tandem switches.”
`’298 Patent, 4:65-6.
`41. As stated above, tandem switches serve to interconnect Class 5 offices that
`contain edge switches. Edge switches are sometimes referred to as central offices
`(“COs”), and vice versa. In 1984, there were thousands of COs containing edge
`switches in the U.S. Central offices have been defined as:
`[Offices] which serve end users through local loop connections [local
`loops are the actual copper wires that run from a customer’s premises to
`the central office].
`
`Ex2002 at 159; and
`. . . a CO traditionally houses one or more voice-optimized circuit
`switches to interconnect subscriber lines within a local area known as
`the carrier serving area (CSA) and to connect subscriber local loops to
`network trunks.
`
`Ex2003 at 102.
`42.
`These dictionary definitions are consistent with the disclosures of tandem
`switches and edge switches in the ’298 Patent:
`
`12
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`YMAX CORPORATION v. FOCAL IP, LLC
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`IPR2016-01256
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`
`
`Declaration of Regis J. “Bud” Bates
`
`The [PSTN] consists of a plurality of edge switches connected to
`telephones on one side and to a network of tandem switches on the other.
`The tandem switch network allows connectivity between all of the edge
`switches, and a signaling system is used by the PSTN to allow calling and
`to transmit both calling and called party identity.
`
`’298 Patent, 1:42-8 and Fig. 2. The most salient points regarding tandem switches
`and edge switches, as confirmed by both extrinsic and intrinsic evidence, are (1)
`edge switches are connected directly to subscribers or edge devices via end-lines
`(i.e., there are copper wires (or other media) that run directly between the edge
`switches and subscribers); and (2) tandem switches are not directly connected to
`subscribers or edge devices, but are instead connected to edge switches and other
`tandem switches.
`
`13
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`YMAX CORPORATION v. FOCAL IP, LLC
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`IPR2016-01256
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`Declaration of Regis J. “Bud” Bates
`
`In the PSTN, before one subscriber is able to have a voice communication
`43.
`with another subscriber, the call must be “set up.” Setting-up a call refers to the
`exchange of control signaling that causes the establishment of a path over which
`voice data can flow. In the PSTN, voice paths are established on demand, as needed,
`in order to conserve resources.
`44. At the time of the inventions, the PSTN utilized the Signaling System 7
`(“SS7”) protocol to set up calls. SS7 signaling flows between one CO and another,
`including all switches in between (e.g., tandem switches). SS7 signaling does not
`flow past COs to edge devices, as edge devices are not equipped to process and
`respond to SS7 signaling.
`45. Generally, the ’298 Patent relates to the provision of call control features
`in a public telephone network. Call forwarding (e.g., transferring a voice call
`originally directed to 703-555-1212 to an alternate telephone number) is an
`exemplary call control feature. The ’298 Patent discloses a Tandem Access
`Controller (“TAC”) that implements call control features. The TAC is a
`combination of computing hardware and software that is appropriately programmed
`to process calls. ’298 Patent, 4:56-9.
`46.
`The Background section acknowledges that, at the time of the invention,
`various devices existed to provide call control features. One novel and important
`aspect of the ’298 Patent concerns where in the PSTN such call control features are
`implemented. As discussed in more detail below, the ’298 Patent expressly
`recognizes that prior art call control devices were attached to an edge device (e.g.,
`phones and PBXs) or an edge switch located in a CO. ’298 Patent 1:49-64; 2:37-41.
`14
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 17
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`IPR2016-01256
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`
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`Declaration of Regis J. “Bud” Bates
`
`These prior art edge devices receive a call on one line, dial out on another line, and
`connect the two lines together.
`47. By contrast, the ’298 Patent discloses connecting the TAC to a tandem
`switch (hence the name Tandem Access Controller). This arrangement allows calls
`to be intercepted and processed before they are handed off to the CO (edge switch)
`associated with the called party. Stated differently, instead of a call being passed to
`a destination CO, then on to a controller connected to the CO which would a perform
`call control feature, the TAC processes the call at a tandem switch before it is ever
`routed to the destination CO.
`48.
`This novel arrangement has several advantages. The first advantage
`concerns costs. Calls coming into and out of controllers connected to COs incurred
`charges for each incoming and outgoing call. See ’298 Patent 2:14-18 (discussing
`this scenario).
`49.
`In a call forwarding scenario using the present invention, the TAC
`intercepts the call at the Class 4 level before it reaches the destination CO edge
`switch. As a result, the call from called party to the calling party is processed by the
`TAC before it reaches the CO associated with the called number. The TAC then
`initiates call signaling to set up the call to the forwarding number, and connects the
`original call to the one arranged by the TAC. This process is invisible to the called
`and calling parties, and incurs less tolls than the prior art solutions discussed in the
`’298 Patent. ’298 Patent, 4:7-11.
`50. Another advantage regarding the TAC’s placement at a tandem switch
`concerns call quality. Running an analog voice signal from an edge switch to an
`15
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`YMAX CORPORATION v. FOCAL IP, LLC
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`Declaration of Regis J. “Bud” Bates
`
`edge device over copper wire degrades the quality of the signal (an edge device is a
`device connected to an edge switch, typically on a customer’s premises, such as a
`private branch exchange (PBX) or a generic telephone – see ’298 Patent, 5:4-6). The
`prior art call forwarding solution suffers from this degradation twice: once from the
`calling party’s call to the controller connected to the CO, and once from the
`controller’s call to the forwarding number. On the other hand, handling calls at the
`tandem level maintains the quality of the call, as it is processed within the PSTN,
`where the signal may be in digital form and/or carried over high-quality lines (as
`compared to the end lines that carry a call from a CO to a phone). ’298 Patent, 1:59-
`65; 2:43-52.
`
`V.
`
`GENERAL DISCLAIMER OF CONTROLLERS CONNECTED TO
`EDGE SWITCHES
`
`A.
`
`Disparaging Statements in the ’298 Patent
`The intrinsic record of the ’298 Patent recognizes that prior art systems and
`51.
`methods applied call control features through an edge switch or an edge device. The
`’298 Patent disparages these prior art attempts as suffering from various
`shortcomings that the present inventions specifically seek to remedy. Indeed,
`Applicants1, both in the specification and the prosecution history, repeatedly
`criticized applying call control features through an edge switch or an edge device,
`and in fact distinguished their inventions over such prior art. By making such
`
`1 Patent Owner will refer to those that drafted and prosecuted the ’298 Patent
`as “Applicants.”
`
`16
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 19
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`statements, Applicants unequivocally disclaimed controllers that applied call control
`features through an edge switch, or controllers that were themselves an edge device,
`from the scope of their inventions.
`52. Applicants’ disparaging statements begin in the Background of the
`Invention section of the ’298 Patent. In discussing various prior art systems and
`their perceived disadvantages, Applicants specifically disparage the application of
`call control features at an edge switch:
`There are also edge devices in each of the public telephone company’s
`central offices which provide local control, but offer an extremely limited
`number of features and do not provide true 3rd-party call control.
`
`’298 Patent, 1:34-37;
`In the past, numerous devices have been built that allow the connection
`of two lines together at an edge switch. These devices can be used to
`add features to a telephone network by receiving a call on one line and
`then dialing out on another line. The problem with these devices is that,
`because they are connected through an edge switch, transmission losses
`and impairments occur, degrading the overall connection. In addition,
`signaling limitations prevent full control, by the subscriber or the
`system, over the call.
`
`Id., 1:56-64.
`53.
`In addition to these disparaging statements, Applicants further distinguish
`their invention from controllers that are edge devices, and note the numerous
`disadvantages of applying call control features using an edge device:
`
`17
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 20
`Bates Declaration
`IPR2016-01256
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`In addition to these [1-800] services, there are edge devices that
`perform some of the same services. Edge devices such as phones and
`PBXs that include voice mail, inter-active voice response, call
`forwarding, speed calling, etc., have been used to provide additional
`call control. These devices allow the phone user direct control over
`incoming and outgoing calls. The disadvantage of edge devices is that
`they add cost, degrade voice and transmission quality, can be difficult
`to program, are not easily programmed remotely, can require the user
`to pay for two lines, provide lower quality of service, and cannot
`provide the same level of functionality as a system that controls the
`PSTN directly.
`
`’298 Patent, 2:37-51.
`54.
`In sum, the ’298 Patent specification expressly recognizes that prior art
`systems and methods provided call control features through an edge switch or an
`edge device, but notes that there are numerous disadvantages with carrying out call
`control features in this manner; namely, the addition of costs, voice quality
`problems, and the requirement of a user to pay for the use of multiple telephone lines
`(in order to handle incoming and outgoing calls simultaneously). A POSA could not
`possibly read the passages preceding the “Detailed Description of The Invention”
`and comprehend that contr