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`Case IPR2016-01257
`Patent 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`CISCO SYSTEMS, INC.,
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01257
`Patent Number: 8,457,113
`________________
`
`
`
`PATENT OWNER FOCAL IP, LLC’S CONTINGENT MOTION TO
`AMEND CLAIM 143 OF U.S. PATENT NO. 8,457,113
`
`
`
`
`
`
`
`
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`

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`Paper No. 26
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`TABLE OF CONTENTS
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`
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`Case IPR2016-01257
`Patent 8,457,113
`
` 
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. CLAIM LISTING ................................................................................................ 2
`
`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM .................................. 2
`
`IV. SUPPORT FOR THE SUBSTITUTE CLAIM ................................................ 4
`
`V. CLAIM CONSTRUCTIONS .............................................................................. 4
`
`A. Tandem Switch ................................................................................................. 5
`
`B. Call Request ...................................................................................................... 7
`
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE ............................................ 8
`
`A. The Level of Ordinary Skill in the Art ............................................................. 8
`
`B. State of the Art as of the Priority Date ............................................................. 8
`
`VII. SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM ........................ 12
`
`VIII. DISTINCTIONS OVER THE ART ............................................................... 13
`
`A. Scope of the Art and Deficiencies of the Art ................................................. 13
`
`IX. THE SUBSTITUTE CLAIM IS NOT OBVIOUSNESS ............................... 21
`
`ii
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`Paper No. 26
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`TABLE OF AUTHORITIES
`
`
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`Case IPR2016-01257
`Patent 8,457,113
`
`
`
`Cases:
`
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326Fed. Cir. 2016) ............................................................................. 13
`
`
`Regulations:
`
`37 C.F.R. § 42.121(a) ................................................................................................ 2
`
`37 C.F.R. §42.121(a)(3) ............................................................................................ 2
`
`
`
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`iii
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`Paper No. 26
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`
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`Case IPR2016-01257
`Patent 8,457,113
`
`7,764,777
`
`of U.S. Patent No.
`
`UPDATED LIST OF EXHIBITS
`
`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed. 2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`Excerpts of Deposition Transcript of Dr. La Porta, Feb. 23, 2017,
`for IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Deposition Transcript of Mr. Willis, Mar. 1, 2017, for IPR2016-
`01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`(“BatesDec”)
`Excerpts of Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Excerpts of Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Excerpts of Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Excerpts of Declaration of Dr. La Porta in support of the Petition,
`Ex. 1002 of IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
`Excerpts of Declaration of Mr. Willis in support of the Petition,
`Ex. 1002 of IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Excerpts of Deposition Transcript of Dr. Lavian, March 29, 2017,
`for IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend (“BatesDec”)
`
`iv
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`2001
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`2002
`2003
`2004
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`2005
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`2006
`2007
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`2008
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`2009
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`2020
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`2021
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`2022
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`2023
`2024
`2025
`2026
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`2027
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`2028
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`2029
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`2030
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`2040
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`Paper No. 26
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`Case IPR2016-01257
`Patent 8,457,113
`2041
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated with
`line numbers)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924
`to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi, and
`Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Excerpts of Declaration of Thomas La Porta in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,457,113, June 23,
`2016, submitted in support of IPR2016-01261
`Excerpts of Declaration of Dr. Tal Lavian in Support of Petition
`for Inter Partes Review of U.S. Patent No. 7,764,777, June 23,
`2016, submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
`
`2042
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`2043
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`2044
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`2046
`2047
`2048
`2049
`2050
`2051
`2052
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`2053
`2054
`2055
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`2056
`2057
`2058
`2059
`2060
`2061
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`2062
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`2063
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`2064
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`2065
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`2066
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`v
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`Paper No. 26
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`Case IPR2016-01257
`Patent 8,457,113
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`I.
`
`INTRODUCTION
`To the extent that original independent claim 143 (the “Original Claim”) of
`
`U.S. Pat. No. 8,457,113 (“the ’113 Patent”) is found unpatentable in this proceeding,
`
`Patent Owner requests the Board to substitute the Original Claim and replace it with
`
`Proposed Substitute Claim 184. The Proposed Substitute Claim amends the Original
`
`Claim by incorporating limitations that describe (i) communications, including a call
`
`request to establish a call, between a PSTN tandem switch and the tandem access
`
`controller (as described in the ’113 Patent) (“TAC”) occur without passing through
`
`an intervening edge switch; and (ii) the TAC initiating a second call without yet
`
`answering the first incoming call and answering the first incoming call when the
`
`second call is answered. None of these claimed features are disclosed or taught by
`
`the art known to Patent Owner, as explained below. BatesDec, ¶152.
`
`This IPR is but one of nine IPRs filed by three groups of petitioners involving
`
`two other related patents (the “Related IPR Proceedings”). The patents at issue in
`
`these Proceedings share a common specification and the claims of these patents are
`
`related in that they share common terms and are directed to similar inventions.
`
`Furthermore, the art cited by the various Petitioners overlaps from one Related IPR
`
`Proceedings to the next. As used herein, “Petitioners” refers to all three groups of
`
`Petitioners. A “cheat sheet” listing the various IPRs by docket number, along with
`
`the identity of the petitioner, claims at issue, and art at issue, is attached hereto as
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`Patent 8,457,113
`Ex. 2063. Patent Owner has satisfied the conference requirement of 37 C.F.R. §
`
`
`
`Paper No. 26
`
`42.121(a) for this motion.
`
`II. CLAIM LISTING
`
`A listing of Proposed Substitute Claim 184 is provided, as well as redlined
`
`versions showing the differences between the Proposed Substitute Claim and the
`
`Original Claim. Ex. 2062.
`
`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM
`The Proposed Substitute Claim corresponds to the Original Claim, thereby
`
`satisfying the rule that “only one substitute claim would be needed to replace each
`
`challenged claim.” See 37 C.F.R. §42.121(a)(3).
`
`
`
`The Proposed Substitute Claim is narrower than the Original Claim.
`
`Specifically, all of the language originally found in the Original Claim is found in
`
`the Proposed Substitute Claim or a narrower term is found in the Proposed Substitute
`
`Claim in place of a corresponding term in the Original Claim.
`
`Limitations were added to the Proposed Substitute Claim to specifically
`
`identify the first communication network as the PSTN network and the second
`
`communication network as a VOIP network, which are narrower. The next
`
`limitation added was to change the term “controller” found in the Original Claim to
`
`“tandem access controller.” The term “tandem access controller” was not construed
`
`in the ID, but it is no broader than “controller.” The descriptive language of the term
`
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`“tandem access controller” indicates that it is a controller associated with a tandem
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`Paper No. 26
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`switch, not an edge switch.
`
`Other limitations added were the PSTN communication network includes “a
`
`plurality of edge switches connected to telephones on one side and tandem switches
`
`on the other side”, “wherein the PSTN tandem switches includes the particular PSTN
`
`tandem switch”, “wherein the PSTN tandem switches are not the edge switches”,
`
`and “wherein the PSTN tandem switches are not directly connected to any of the
`
`telephones.” These limitations make explicit restrictions on the scope of the claims
`
`that Patent Owner believes already exists by virtue of disclaimers made in the ’113
`
`Patent itself and the file history.
`
`The next limitation added is “wherein communications, including the first
`
`request to establish the first incoming call, between the tandem access controller and
`
`the particular PSTN tandem switch occur without passing through any of the edge
`
`switches.” This limitation eliminates the possibility that the TAC is connected
`
`through an edge switch with the tandem switch. This limitation, for example, takes
`
`outside the scope of the Substitute Claim edge devices, such as PBXs, that connect
`
`to the PSTN through edge switches.
`
`Other newly-added limitations are directed to the mechanisms of the TAC for
`
`processing the first and second calls of “initiating a second call request to establish
`
`a second call … without yet answering the first incoming call,” “answering the first
`
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`incoming call at the tandem access controller when the second call is answered,” and
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`Paper No. 26
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`“enabling communication between the first call and the second call by the tandem
`
`access controller when the second call is answered by connecting the first call to the
`
`second call.” These limitations are narrower than the Original Claim, and exclude
`
`PBXs and other devices known in the art that must answer an incoming call in order
`
`to process it before initiating a second call request to establish a second call.
`
`IV. SUPPORT FOR THE SUBSTITUTE CLAIM
`Support for the Proposed Substitute Claim from the original disclosure of the
`
`patent and from each earlier-filed disclosure for which benefit of the earlier filing
`
`date is sought is provided in Ex. 2041 (as relief granted by the Board). Support for
`
`the Proposed Substitute Claim is clear in the underlying disclosures, and a POSA
`
`would reasonably conclude that the inventors had possession of each of the features
`
`of the Substitute Claim. BatesDec, ¶¶45-46. Based on the state of the art and the
`
`supporting disclosure in the charts, a POSA would understand that Fig. 2 read in
`
`light of the whole underlying application support of the ’113 Patent (e.g., Fig. 5,
`
`4:55-5:3) discloses the TAC receiving a first call request of a first call from a tandem
`
`switch, initiating a second call request of a second call via a VOIP network, without
`
`yet answering the first incoming call, and enabling communication when the second
`
`call is answered, in addition to the other claim limitations of the Substitute Claim.
`
`V. CLAIM CONSTRUCTIONS
`
`4
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`Constructions are provided for the term “PSTN tandem switch” and the
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`Paper No. 26
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`language “call request to establish a call” which is found in several claim terms (e.g.,
`
`“a first call request to establish a first incoming call” and “initiating a second call
`
`request to establish a second call.”) These terms were not construed by any of the
`
`Parties in their submissions to date, or by the Board in its Institution Decisions.
`
`A. Tandem Switch
`Patent Owner submits a “PSTN tandem switch” be construed as “as a switch
`
`in the PSTN that interconnects other PSTN tandem switches and edge switches.”
`
`This construction is consistent with the various Petitioners’ description of tandem
`
`switches and the language of the Proposed Substitute Claim. If the Board, however,
`
`believes that because of footnote one in the ’777 Patent’s prosecution history, that
`
`“PSTN tandem switch” should be construed in a broader fashion (see e.g., -01262
`
`ID (Paper 19) at 12), there are specific claim limitations in the Proposed Substitute
`
`Claim that effectively limit the scope of the term “PSTN tandem switch” to
`
`approximately the proposed construction.
`
`As background, neither Patent Owner nor Petitioners have previously set forth
`
`a formal construction of the term “tandem switch” in this or any of the other Related
`
`POPRs. The Board declined to formally construe the term “tandem switch” when
`
`considering claim 94 of the ’113 Patent. -01261 ID (Paper 19) at 12.
`
`Nevertheless, Petitioners and Patent Owner have consistently described
`
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`tandem switches in a very similar manner. In all of the Related POPRs, Patent
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`Paper No. 26
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`Owner described tandem switches as being “connected to edge switches and other
`
`tandem switches.” Petitioner BHN states, “[t]he PSTN consists of switches known
`
`as tandem switches or class 4 switches (switching facilities in the claims) which
`
`serve to interconnect between different geographical regions and edge switches or
`
`class 5 switches, which connect to end-user devices, like telephones, within a local
`
`geographic area.” -01261 Pet. at 29 (emphasis added). BHN provided no
`
`construction otherwise. Id. at 10. Petitioner Cisco states, “[c]lass 3 switches are
`
`also known as tandem switches and generally provide long distance calling links by
`
`interconnecting between edge switches and other tandem switches.” -01254 Pet. at
`
`7 (emphasis added). Cisco provided no construction otherwise. Id. at 14-15.
`
`Petitioner YMax states that “[w]hen a telephone call is placed on the PSTN . . . the
`
`call is then typically routed to one or more tandem switches (in sequence), until it
`
`reaches the edge switch that is directly connected to the recipient’s phone, and
`
`finally to the recipient’s phone.” -01260 Pet. at 13 (emphasis added). YMax
`
`provided no formal construction of “tandem switch.” Id. at 18-27.
`
`Related to the construction of “PSTN tandem switch” are the negative
`
`limitations found in the Proposed Substitute Claim. The Claim explicitly provides
`
`that the “PSTN tandem switch” is not an edge switch and does not connect directly
`
`
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`to the telephones of subscribers. These limitations were added to address the
`
`
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`Paper No. 26
`
`controversy surrounding the terms “switching facility”, “tandem switch”, and
`
`footnote one found in the prosecution history of the ’777 Patent. See, e.g., -01261
`
`Institution Decision at 7-12.
`
`In light of the foregoing, Patent Owner’s construction is consistent with the
`
`intrinsic and extrinsic record, as well as all of the Parties’ descriptions of “PSTN
`
`tandem switch.” But, a broader construction of “PSTN tandem switch” is effectively
`
`limited by the specific claim requirements that prevent the claimed “PSTN tandem
`
`switch” from being considered an edge switch or connecting directly to telephones.
`
`For example, these negative limitations would eliminate a “hybrid switch” from
`
`being considered a PSTN tandem switch since it connects directly to telephones.
`
`B. Call Request
`The term “call” was not previously construed by the Board or any of the
`
`
`
`Parties in this or any other of the Related IPRs.
`
`Nevertheless, two of the Petitioners agree that a traditional telephone call
`
`consists of two parts – signaling and media. For a typical person-to-person call,
`
`signaling between PSTN switches sets up the call, then the voice connection is
`
`established so that two people can speak to each other. See, e.g., -01261 Pet. at 12
`
`(BHN) and -01254 Pet. at 10 (Cisco). Patent Owner characterizes this call setup as
`
`“the exchange of control signaling that causes the establishment of a path over which
`
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`voice data can flow.” See, e.g., -01261 POPR (Paper 11) at 7.
`
`
`
`Turning back to the construction of the phrase of a request “to establish a call”,
`
`the proper construction of this phrase is “signaling indicating a request to set up a
`
`connection that provides for a two way voice communication.” In the context of a
`
`“request to establish a call” this can only refer to signaling, which the Parties agree
`
`must precede the establishment of two way voice communications. This
`
`construction is also supported by the ’113 Patent, which gives an example of call
`
`data associated with an “incoming call” as a “call request” exemplified by “SS7 data
`
`indicating an incoming call.” ’113 Pat., Fig. 5, Box 1 and 5:61.
`
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE
`A. The Level of Ordinary Skill in the Art
`Patent Owner believes that a person of ordinary skill in the art with respect to
`
`
`
`the ’113 Patent in 1999-2000 would have a bachelor’s degree in electrical
`
`engineering, computer science, or the equivalent thereof and approximately 2-3
`
`years of professional experience within the field of telecommunications or network
`
`communications. BatesDec, ¶22. This is consistent with the positions taken by the
`
`Petitioners in the Related IPRs. See, e.g., -01262 La Porta Dec (Ex. 2064) at ¶28; -
`
`01258 Lavian Dec (Ex. 2065) at ¶19; -01257 Willis Dec (Ex. 2027) at ¶21.
`
`B.
`State of the Art as of the Priority Date
`Related to the growth of the internet during the 1990’s was the growth of
`
`
`
`VoIP. VoIP would grow significantly after the turn of the century, and certain
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`businesses saw this potential back in the 1990s and began to innovate in this space.
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`Paper No. 26
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`One obvious issue with the growth of VoIP was how to integrate VoIP systems with
`
`the already existing PSTN. BatesDec, ¶47.
`
`Related to the development of VoIP were PBXs. As a bit of history, PBXs
`
`(private branch exchanges) were private telephone switches used by businesses of
`
`all sizes. PBXs allowed businesses to share a handful of voice lines, and provided
`
`various calling features, such as voice mail, conference calling, call forwarding, and
`
`call waiting. Since at least the mid-1980s, PBXs provided users with call features
`
`such as call forwarding and conference calling. See, e.g., U.S. Pat. No. 4,646,296
`
`(filed on July 9, 1984) (Ex. 2056) and BatesDec, ¶48.
`
`There was a need for PBXs that could adapt intra-office VoIP calls (or VoIP
`
`calls generally) to the PSTN, which was primarily an analog system at the local level,
`
`and vice versa. This is at issue in Alexander, Archer, Burger, O’Neal, Schwab, and
`
`Swartz. See e.g., Alexander (Ex. 2051), Background, 1:14-33. BatesDec, ¶49.
`
`In summary, during the 1990s, inventors were working on the problem of how
`
`to better integrate circuit and packet switched voice networks. These innovations,
`
`however, were largely being implemented from outside the PSTN by companies
`
`other than the Baby Bells (i.e., the original regional Bell operating companies that
`
`resulted as the breakup of AT&T in 1984 - Ameritech, Bell Atlantic, BellSouth,
`
`NYNEX, Pacific Telesis, Southwestern Bell, and US West), as opposed from inside
`
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`the PSTN itself. BatesDec, ¶50.
`
`Generally speaking, the Baby Bells (and other regional phone companies such
`
`as Cincinnati Bell) owned the equipment that made up the PSTN and controlled
`
`access to the PSTN. These companies generally only allowed access to the PSTN
`
`through edge switches. Edge switches served as “firewalls” to the rest of the PSTN.
`
`As one of their functions, they serve to protect the switching fabric of the PSTN
`
`from malfunctioning/malicious end user equipment such as PBXs. Thus, consumers
`
`of PBXs only had access to the PSTN though the lines provided to them by the local
`
`telecommunication companies through edge switches. These lines generally
`
`consisted of analog phone lines (common for residences) and digital T1 connections
`
`(which provided up to 24 simultaneous voice paths, common for larger businesses).
`
`These lines originated from edge switches. In sum, the only practical interface into
`
`the PSTN (from the outside) was through central offices. BatesDec, ¶51.
`
`A second development was taking place during the 1980s up until the time of
`
`the invention as well. Unlike the VoIP/PBX development discussed above, the
`
`implementation of features by the Baby Bells and others did not involve equipment
`
`to be attached to the peripheral of the PSTN. The Baby Bells did not attempt to
`
`utilize switching equipment similar to the claimed TAC to be attached to existing
`
`switching equipment within the PSTN. Rather, the Baby Bells and others
`
`contemplated modifications to switching and signaling equipment, referred as
`
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`intelligent networking. Id.
`
`Chang is a representative example of this second development. Chang teaches
`
`that switching equipment, such as edge switches and tandem switches, can be
`
`modified to serve as Service Switching Points to initiate database queries to SCPs.
`
`Chang (Ex. 2049), 9:13-17; Fig. 1, elements 11E and 11T. In these modified edge
`
`and tandem switches, database queries are sent to an SCP that stored call control
`
`information, and the SCP returns a response to the switch that the switch can utilize
`
`to process the call. See Chang, 10:19-31. In Chang, the edge and tandem switches
`
`have been modified to contain enhanced functionality to send and receive the query
`
`and response signaling with an SCP. BatesDec, ¶52
`
`The Baby Bells were incentivized to add call features such as call waiting and
`
`call forwarding because the pricing of such features was not regulated like the cost
`
`of providing actual telephone service and was extremely profitable. See, e.g., $200
`
`Billion Broadband Scandal, Bruce Kushnick, 2006 (Ex. 2057) at 135 (“Some
`
`services could now be “market priced.” Ameritech could charge what customers
`
`were willing to pay, even though there was no competition in 1994. In this bucket
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`would be “calling features”, such as Call Waiting, Call Forwarding, etc., that cost
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`about one penny to offer, but could sell for $5.00 per month per line.). BatesDec,
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`¶53.
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`In summary, a POSA in 2000 would have been familiar with PBXs and their
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`ability to provide call features. Such PBXs were available for at least fifteen years
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`prior to the priority date. With respect to these PBXs, a POSA would also have been
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`aware of industry efforts to integrate these traditional PBXs with the nascent VoIP
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`systems. A POSA would have also been aware of the Baby Bell’s 15 year effort to
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`provide call features from inside the PSTN. A POSA would have known that these
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`features were being applied by modifying the software that operates edge switches
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`and tandem switches. As it relates to the Proposed Substitute Claim, a POSA would
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`have been familiar with the various efforts in the VoIP space to provide equipment
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`for use by businesses to integrate VoIP with traditional voice systems. Also, a POSA
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`would have been familiar with a different field of endeavor – that of the Baby Bells’
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`efforts to upgrade the PSTN with an IN architecture to force others to use their call
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`features to drive additional, high-margin revenues. BatesDec, ¶54.
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`VII. SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM
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`The primary goal of the newly added language to the Proposed Substitute
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`Claim is to make explicit the disclaimers of claim scope Patent Owner believes result
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`from disclaimers in the priority document and the prosecution history. Specifically,
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`most of the added language is to make clear that the TAC cannot be connected to an
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`edge switch. Instead, the TAC communicates, including communication related to
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`call requests, with the tandem switch without passing through an edge switch. This
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`concept is not disclosed or suggested in any known prior art.
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`Also, the TAC performs the steps of initiating a second call request to
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`establish a second call, without yet answering the first incoming call, answering the
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`first call only when the second call is answered, and connecting the two calls after
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`the second call is received and answered. As discussed below, this implementation
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`is not disclosed or suggested in any known prior art either. BatesDec, ¶152.
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`Also, certain negative limitations were added to make clear that tandem
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`switches are different than edge switches, that tandem switches are not directly
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`connected to the telephones of subscribers, that communications between the tandem
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`switch and TAC occur without passing through an edge switch, and that the TAC is
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`not an edge switch. With respect to these negative limitations, the Federal Circuit
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`has approved of the use of such limitations when drafting claims. Nike, Inc. v.
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`Adidas AG, 812 F.3d 1326, 1348 (Fed. Cir. 2016).
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`VIII. DISTINCTIONS OVER THE ART
`A.
`Scope of the Art and Deficiencies of the Art
`There are approximately 400 U.S. and non-U.S. patent documents cited in the
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`“References Cited” portion of the ’113 Patent and other patents that claim priority
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`to the same provisional application cited to by the ’113 Patent. In addition, there are
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`approximately 20 “Other References” cited to in these patents. In the underlying
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`district court cases, approximately 44 different patent documents and other
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`publications were cited as potentially invalidating art.
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`In the Related IPR Proceedings, Petitioners relied upon ten different
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`references - Alexander, Archer (Ex. 2048), Burger (Ex. 2050), Chang, McMullin
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`(Ex. 2053), O’Neal (Ex. 2047), Schwab (Ex. 2046), Shtivelman (Ex. 2052), Swartz
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`(Ex. 2054), and the SS7 Paper (Ex. 2055). The IDs in the various Related IPR
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`Proceedings were based on all of these references except for Schwab. In the
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`prosecution of the ’777 Patent, four references were substantively discussed:
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`Schwab, Sidhu (Ex. 2058), Shah (Ex. 2059), and Kugell (Ex. 2060). No references
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`were substantively discussed in the prosecution of the ’113 Patent.
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`With respect to Sidhu and Shah, the examiner used the Sidhu and Shah
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`references as a basis to show it would have been obvious to allow a user to provision
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`a telephone service through the internet. See, e.g., ’777ProHist (Ex. 2005) at 121.
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`These references are not believed to be relevant to the Proposed Substitute Claim
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`beyond these teachings. BatesDec, ¶58. Kugell was used by the examiner to reject
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`dependent claims by allegedly disclosing a system that can ring multiple phones at
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`one time. See, e.g., ’777ProHist at 122. This reference is not relevant to the
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`Proposed Substitute Claim beyond this in that it is cumulative to art that shows call
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`control features being applied at an edge switch. BatesDec, ¶59. The SS7 Paper
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`discusses standard SS7 signaling that was known at the time of the invention and is
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`not relevant to the Proposed Substitute Claim, other than discussing call requests.
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`BatesDec, ¶¶60-61.
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`In the discussion below, Patent Owner will concentrate on the references on
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`Paper No. 26
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`which the IDs in the Related IPR Proceedings were based (the “IPR Art”). Patent
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`Owner and Patent Owner’s expert are not aware of any prior art that is more relevant
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`and material to the Proposed Substitute Claim than the IPR Art. BatesDec, ¶62.
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`Special attention will be paid to Archer and Chang, as that specific combination is
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`at issue in five of the nine IPRs, and at least one of those references is at issue in
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`seven of the nine IPRs. Further, Patent Owner believes those references are
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`representative of the two categories of all known prior art, discussed below.
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`Instituted in this proceeding were obviousness grounds directed to Burger and
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`the knowledge of a POSA, Burger and knowledge of a POSA and Alexander, and
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`Archer and the knowledge of a POSA. As described below, the Proposed Substitute
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`Claim is patentable and not obvious over each of these grounds. BatesDec, ¶¶120-
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`122, 116-128.
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`All of the known material prior art can be broken down into two categories.
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`The first category includes the overwhelming majority of the art that disclose and
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`teach systems that apply call features external to the PSTN via an edge switch or
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`edge device (the “EXT Art”), rather than a tandem switch, as disclosed and taught
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`by Alexander (BatesDec, ¶¶97-101), Archer (BatesDec, ¶¶83-86), Burger
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`(BatesDec, ¶¶93-96), McMullin (BatesDec, ¶¶106-109), O’Neal (BatesDec, ¶¶76-
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`82), Schwab (BatesDec, ¶¶65-75), Shtivelman (BatesDec, ¶¶102-105), and Swartz
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`(BatesDec, ¶¶110-114). Then, in the Intelligent Network Art (“IN Art”), which is
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`disclosed in Chang, which discloses the capability of applying call features internal
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`to the PSTN via an SCP.
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`Turning now to the EXT Art, none of these references disclose a purported
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`controller comparable to the TAC in communication with a tandem switch, rather
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`than an edge switch, where communications, including a call request to establish a
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`call, between a PSTN tandem switch and the TAC occur without passing through an
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`intermediary edge switch. BatesDec, ¶116. Notably, none of the EXT Art contains
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`the term “tandem switch”, “class 4”, “transit switch” or other term to refer to what
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`the ’113 Patent refers to as a tandem switch. BatesDec, ¶117. There is simply no
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`disclosure in these references of tandem switches, let alone connecting a controller
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`to one. BatesDec, ¶117.
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`Rather, the majority of the EXT Art explicitly discloses that the purported
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`TAC is connected to a central office/edge switch of the PSTN, rather than a tandem
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`switch, where the edge switch is directly connected to telephones, modems,
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`gateways, PBXs, and other devices external to the PSTN. Id. Some references (e.g.,
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`O’Neal and Archer) disclose that the purported TAC resides outside the PSTN
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`without illustrations as to where the purported TAC connects. But a POSA (without
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`knowledge of the teachings of t