Opposition to PO’s Motion to Amend
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`FOCAL IP, LLC,
`Patent Owner (“PO”)
`_____________________
`
`Case IPR2016-01257
`Patent 8,457,113 B2
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
`
`
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`FOCAL IP, LLC,
`Patent Owner (“PO”)
`_____________________
`
`Case IPR2016-01257
`Patent 8,457,113 B2
`
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................ 1
`I.
`SUMMARY OF THE UNPATENTABILITY GROUNDS ..................... 1
`II.
`PO’S ARGUMENTS FOR PATENTABILITY ........................................ 2
`III.
`IV. ARCHER DISCLOSES THE NEWLY ADDED FEATURES ................ 3
`V.
`BURGER DISCLOSES THE NEWLY ADDED FEATURES .............. 10
`VI. THE NEW ART DISCLOSES PO’S ADDED LIMITATIONS ............ 13
`A. Lewis Discloses the Newly Added Features .......................................... 13
`B. LaPier Discloses the Newly Added Features ......................................... 18
`VII. PO HAS NOT ATTRIBUTED PATENTABILITY TO ANY OF THE
`OTHER NEWLY ADDED LIMITATIONS ........................................... 23
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`PETITIONER’S EXHIBIT LIST
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`Exhibit Number
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`Document
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`1101
`1102
`1103
`1104
`1105
`1106
`1107
`1108
`1146
`1147
`1148
`1149
`1150
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`1151
`1152
`1153
`1154
`1155
`1156
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`1157
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`1158
`1159
`1160
`2019
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`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`Declaration of Dean Willis
`U.S. Patent No. 6,353,660 to Burger
`U.S. Patent No. 6,683,870 to Archer
`U.S. Patent No. 5,958,016 to Chang
`U.S. Patent No. 6,798,767 to Alexander
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,442,169 to Lewis
`U.S. Patent No. 6,633,931 to LaPier
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`U.S. Patent No. 5,164,879 (Honeywell v. ITT)
`U.S. Patent No. 6,618,707 (Chi. Bd. Options)
`U.S. Patent No. 4,893,306 (Telcordia Techs.)
`U.S. Patent No. 7,764,777 to Wood
`U.S. Patent No. 8,115,298 to Wood
`Expert Declaration of Dr. Thomas F. La Porta for IPR 2016-
`01259, -01261, -01262, and -01263
`Expert Declaration of Dr. Thomas F. La Porta ISO Petitioner’s
`Opposition to PO’s Motion to Amend
`CV of Dr. Thomas F. La Porta
`U.S. Patent No. 6,574,328 to Wood
`U.S. Patent No. 7,324,635 to Wood
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263
`ii
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`Exhibit Number
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`Document
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`2020
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`2022
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`2040
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`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263
`Declaration of Regis J. “Bud” Bates in Support of Patent
`Owner’s Response
`Declaration of Regis J. “Bud” Bates in Support of PO’s
`Contingent Motion to Amend in IPR2016-01261
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`iii
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`I.
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`INTRODUCTION
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`PO proposes substituting new Claim 184 for original Claim 143. PO has
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`not made the required showing that Claim 184 is patentable over the cited art, and
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`cannot show that Claim 184 is patentable over newly cited U.S. Patent No.
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`6,442,169 to Lewis (“Lewis”) (EX1146) and U.S. Patent No. 6,633,931 to LaPier
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`(“LaPier”) (EX1147). Accordingly, the Motion should be denied.
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`SUMMARY OF THE UNPATENTABILITY GROUNDS
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`II.
` The Board instituted the present trial on the following grounds:
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`Ground 1: Claims 143-147, 149, 150, 163, and 176-178 are obvious over
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`Burger (EX1104) in view of the knowledge of a POSA;
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`Ground 2: Claims 143-147, 149, 150, 163, and 176-178 are obvious over
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`Burger in view of Alexander (EX1106); and
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`Ground 3: Claims 143-147, 149, 150, 163, and 176-178 are obvious over
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`Archer (EX1104) in view of the knowledge of a POSA.
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`In its Response, PO asserted that the references do not disclose “a
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`controller” or “web-enabled processing system” because:
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` There is no disclosure of a call processing system coupled to a switching
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`facility/tandem switch because the reference’s gateways are edge devices
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`not switching facilities (and thus necessarily connected to a PSTN edge
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`switch).
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`1
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`In its amendment, PO makes the same arguments regarding each ground with
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`respect to Claim 184, asserting that Claim 184 is patentable over all cited art
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`because the cited art either discloses a tandem access controller or “TAC” (call
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`processing system) external to the PSTN and thus necessarily connected to an edge
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`switch of the PSTN, or (2) discloses a TAC (call processing system) internal to the
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`PSTN that does not receive call requests or initiate call requests to establish a call.
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`Stated simply, PO’s arguments for patentability of original Claim 143 are the same
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`arguments that it makes for Claim 184.
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`III. PO’S ARGUMENTS FOR PATENTABILITY
`PO grouped the prior art into two categories, external art (EXT Art) and
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`internal art (INT Art). PO asserts that EXT Art teaches “systems that apply call
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`features external to the PSTN via an edge switch or edge device [], rather than a
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`tandem switch.” PO asserts that INT Art teaches the “capability of applying call
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`features internal to the PSTN via an SCP.” Mot. to Amend, 15-16.
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`PO asserts that all of the art cited in the Petition is either EXT Art or INT
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`Art, and that “no Petitioner has come forward with any prior art that shows
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`something akin to a TAC connected to a tandem switch that does not communicate
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`call requests through an edge switch.” PO’s description of what third parties were
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`developing, including the “Baby Bells”, is dependent upon the testimony of PO’s
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`expert who does not provide factual support for these assertions. Nevertheless, PO
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`2
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`relies on this unsupported expert testimony and focuses its arguments for
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`patentability on the following two features that PO asserts are not known or
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`suggested in any known prior art:
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`1.
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`The TAC communicates, including communication related to call
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`requests, with the tandem switch without passing through an edge switch. Mot. To
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`Amend, 12.
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`2.
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`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
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`the first call only when the second call is answered, and connecting the two calls
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`after the second call is received and answered. Mot. to Amend, 13.
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`However, these two features are present in the art already of record in this
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`Petition, as well as newly cited art. Burger and Archer, which serve as the basis
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`for Grounds 1 and 3 includes both of these features. Likewise, the newly cited art
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`of Lewis and LaPier both disclose these two features.
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`IV. ARCHER DISCLOSES THE NEWLY ADDED FEATURES
`Archer discloses a server processor 128 in conjunction with database 138
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`and gateway 1261 coupled to a tandem switch in PSTN 118 (136). These same
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`1 PO’s position that Archer doesn’t use the term “gateway” with respect to
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`component 126 is simply false. See, e.g., EX1104, 5:34-35 (“Converter 126 can
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`also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
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`3
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`components also correspond to the newly claimed “tandem access controller” that
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`includes the two newly added features identified above.
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`A POSA would understand that Archer discloses the first added feature as
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`server processor 128 communicates with the tandem switch in PSTN 118 (136) via
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`gateway 126 and without passing through an edge switch. EX1157, ¶¶27-31 . As
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`set forth below, a POSA would understand that Archer’s gateway 126 is not an
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`edge device or an edge switch and communicates on the PSTN using SS7 signaling
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`and a digital voice protocol used by PSTN tandem switches. EX1157, ¶¶27-31.
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`Specifically, Archer discloses that gateway 1262 passes information (e.g.
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`voice and signaling) through it, and sends and receives such information in digital
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`gateway (i.e. converter 126) . . .”). Moreover, PO’s reliance on Archer’s other
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`nomenclature for the same component (“converter”) as indicating that gateway 126
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`only converts signals between analog and digital formats is also false as Archer
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`explicitly discloses that gateway 126 may “convert” or “translate” circuit-switched
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`digital voice (PCM) into multiple encoding schemes and digital packets suitable
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`for packet networks (e.g. IP packets). See, e.g., id., 5:27-28; 5:59-62; 6:7-9; 8:18-
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`21; 9:14-15; 11:23-25.
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`2 Mr. Bates also testified that there is no such thing as an “edge switch” in IP
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`networks. Tr. Bates Depo. 5-8-17 110:9-13; 114:17-20; 178:21-24. Thus, gateway
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`126 (which clearly has an IP address and is thus on an IP network) cannot be an
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`4
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`formats3 (e.g. PCM voice and IP voice packets). EX1104, 5:10-11 (“Circuit-
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`switched network 118 can be . . . a digital network”); 5:23-27 (“[T]he heart of most
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`telephone networks today is digital.”); 5:33-35; 5:42-46; 5:59-62 (“PSTN-to-IP
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`network gateway (i.e. converter 126) should be able to support the translation of
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`PCM to multiple encoding schemes to interwork with software from various
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`vendors.”); EX1157, ¶¶30-32.
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` A POSA would understand that gateway 126 communicates both VoIP and
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`PSTN signaling (i.e. SS7) over PSTN 118 (136) and IP network 130 such as, for
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`example, when it receives VoIP call notification messages from server processor
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`128, and translates such messages into PSTN signaling to cause a called party
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`telephone (e.g. 120) to ring. EX1104, 9:7-19, 9:31-34, 11:20-25; EX1157, ¶¶30-
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`32. Additionally, for example, Mr. Bates testified that the digital format used by
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`Archer’s gateway 126 to communicate voice information with PSTN 118 (136)—
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`PCM—was typical for the “tandem level” in the PSTN, was used by PSTN tandem
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`edge switch. EX1104, FIGS. 2, 6; 6:6-9; 6:51-53, 6:64-67, 9:10-14; EX1157,
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`¶¶30-34.
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`3 In its Motion, PO ignores the explicit disclosure in Archer that the gateway
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`receives digital voice (PCM) from the PSTN when it incorrectly asserts that Archer
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`discloses that gateway 126 only receives analog signals over analog lines. Motion,
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`18-19; EX2040, ¶¶84-86.
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`5
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`switches (but not edge switches), and would “maintain the quality of the call.”
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`EX1148, 22:23-23:8; 26:7-15; EX2040, ¶44. As such, Mr. Bates acknowledged
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`that Archer’s gateway 126 would typically be connected to a PSTN tandem switch,
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`and not an edge switch, in PSTN 118 (136). Id.; see also EX2019, 267:19-268:4;
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`271:2-273:12; EX1157, ¶¶33-36.
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`Moreover, in his deposition, Mr. Bates defined an “edge device” as an “end
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`user device”, and testified that (1) like “edge switch”, there is no “edge device” in
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`an IP network such as the Web/Internet, and (2) a node interconnecting an IP
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`carrier network and the PSTN is not an “edge device.” EX1148, 54:14-55:15;
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`163:24-164:3; 172:2-9. Thus, contrary to PO’s arguments in its Motion to Amend
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`(Mot. to Amend, 18-19, EX2040, ¶¶84-86), Archer’s gateway 126 is not an “edge
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`device” because it: (1) communicates bi-directionally over PSTN 118 (136) using
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`PCM, (2) communicates bi-directionally over IP network 130 using IP packets, (3)
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`is at least in part within the IP network (130) (where there are no edge devices),
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`and (4) is not an end user device. EX1157, ¶¶35.
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`As illustrated in FIG. 2 of Archer (annotated below), Archer discloses a
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`TAC which includes gateway 126, server processor 128 and database 138. The
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`TAC communicates, including communication related to call requests, with the
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`tandem switch without passing through an edge switch. EX1157, ¶¶33-36.
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`6
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`Specifically, gateway 126 receives call requests in the form of SS7 signaling from
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`a PSTN tandem switch without passing through an edge switch. EX1157, ¶¶35-37.
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`PSTN
`PSTN tandem
`switch
`PCM
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`TAC
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`SS7
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`IP network
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`With respect to the second added feature, a POSA would understand that
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`Archer discloses the second added feature as software executing on server
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`processor 128 communicates signaling with gateway 126 on IP network 130 and
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`establishes the voice communication across IP network 130 and PSTN 118 (136)
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`via gateway 126. EX1157, ¶¶39-41. Archer discloses software executing on
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`server processor 128 receiving call data from the call request received by gateway
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`126 which is associated with a first call via a circuit-switched network (118, 136),
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`preferably the PSTN. EX1104, Fig. 2, 5:10-46, 8:27-34, 8:50-60, 9:62-64;
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`EX1157, ¶¶39-42. When a caller makes a first call to a called party using phone
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`7
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`equipment (114), the call request containing the call data from the first call, in the
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`form of the called party’s telephone number, is routed through PSTN 118 (136), to
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`gateway 126, which packages the call data into IP packets for transmission over IP
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`network 130 to server processor 128. EX1104, Figs. 2, 4, 5, 5:32-34, 5:59-63,
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`8:50-60; EX1101, cls. 134, 136 (call data includes the called party’s telephone
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`number); EX1157, ¶¶40-43. Server processor 128 receives the call packets from
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`gateway 126 which contain subscriber information (e.g., the dialed telephone
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`number) which server processor 128 extracts and uses to query the database 138
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`for destination addresses associated with the subscriber. EX1104, Figs. 2 (128), 4
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`(52, 54), 5, 2:45-49, 6:33-38, 6:49-51, 6:57-62. 8:27-34, 8:50-60, 9:62-64,
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`EX1157, ¶¶41-44.
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`Archer teaches the server processor 128 initiates a call over the second
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`network by creating and multicasting IP call request packets addressed to the
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`subscriber’s communication devices based on the control criteria (device addresses
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`and priorities) retrieved from database 138. EX1104, Figs. 4 (54-66), 5, 7:3-13,
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`9:9-16, 6:57-59, 9:10-15; 11:1-11; EX1157, ¶¶43-46. Archer teaches that server
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`processor 128 uses the call data to initiate the second call because it uses the called
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`telephone to search database 138 in order to determine which destination addresses
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`to use to generate the multicast call packets. EX1104, 6:57-67, 8:61-65; EX1157,
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`¶¶43-46. For communications directed to devices on PSTN 118 (136), server
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`8
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`processor 128 generates packets with the IP address of gateway 126 (132) which
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`contain the telephone number of telephones (120a, 120b). EX1104, 6:55-67. The
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`gateway 126 then translates the packets for transmission over PSTN 118 (136) and
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`calls the telephone (120a, 120b). EX1104, 7:3-15, 9:7-16. For communications
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`addressed to communications devices (134a) on IP network 130 server processor
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`128 generates packets with the IP address of the IP communications devices
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`(134a). EX1104, Figs. 2 (128, 132, 134), 4 (54, 62), 5 (108), 6:57-59, 6:64-7:4,
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`9:10-15, 11:15-17; EX1157, ¶¶43-45.
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`Archer discloses that “FIG. 4 is a flowchart of the software which will
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`execute on server processor 128” and Figure 4 describes such software executing
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`the step of:
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`EX1157, ¶46; EX1104, 6:47-48, Figure 4 (68), 7:14–21. Archer also discloses that
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`software executing on server processor 128 performs this step after receiving
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`signaling
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`that
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`the called party has answered (e.g. “response”, “pick-up
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`notification”), which Mr. Bates acknowledged is when the “call is completed.” Id.;
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`see also EX1104, Figure 4 (64), 6:30-32, 8:43-45, 9:31-36; EX1148, 250:23-
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`251:17; EX1149, 331:17-332:20; EX1157, ¶47.
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`9
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`By failing to properly address this prior art of record, PO has failed to meet
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`its burden that Claim 184 is patentable.
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`V. BURGER DISCLOSES THE NEWLY ADDED FEATURES
`Burger discloses a web-enabled processing system (ESP 60), and its call
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`processing system (ESP processing unit 62) coupled to a tandem switch in the
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`PSTN. Pet. at 31. These same components also correspond to the newly claimed
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`“tandem access controller” that includes the two newly added features identified
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`above.
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`A POSA would understand that Burger discloses the first added feature as
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`ESP 60s communicates with the tandem switch in PSTN 22 via packet interface 68
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`and without passing through an edge switch. EX1157, ¶¶49-52. As set forth below,
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`a POSA would understand that Burger’s packet interface 68 is not an edge device
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`or an edge switch and communicates on the PSTN using a digital voice protocol
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`used by PSTN tandem switched. EX1157, ¶¶51-52.
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`Specifically, Burger discloses that ESP 60’s packet interface 68 can be an
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`external gateway (see fn 2) that is coupled to ESP 60’s processing unit 62, in the
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`circuit switched network, which connects them to packet network 24. EX1103,
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`Fig. 1 (60, 64, 68), 4:1-12, 4:19-22 (interface 68 can be a CISCO AS5300 Voice
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`Gateway, connecting to the ESP processing unit 62”); EX1157, ¶51. Specifically,
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`Burger discloses that PSTN-to-IP packet interface/gateway 68 would be connected
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`10
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`to a tandem switch in the PSTN 22 because it receives voice from the PSTN as
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`time division multiplexing (TDM) which is used by a tandem switch but not an
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`edge switch. EX1104, Figs 1, 2, 5:59-62. EX1157, ¶¶52-55. Additionally, for
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`example, Mr. Bates confirmed that PCM/TDM protocol is used by a tandem switch
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`and would overcome the transmission loss and impairment problems identified in
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`the Shared Specification (’113 Patent, 1:59-65). EX1148, 22:23-23:8; 26:7-15;
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`205:15-206:11 Ex. 2022, ¶45. Thus, PO’s arguments that Burger’s gateway 68
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`interconnecting the PSTN 22 to a packet network 24 must be connected to an edge
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`switch, ignores the teaching of Burger and its own expert’s testimony. Id.; Ex.
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`2022, ¶¶73-75, 86-89; EX2019, 267:19-268:4; 271:2-273:12; EX1157, ¶¶50-53.
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`A POSA would under that Burger discloses a tandem access controller (ESP
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`60 containing gateway/packet interface 68) interconnecting an IP network to the
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`PSTN through a PSTN tandem switch as shown in Figures 1 and 2. EX1104,
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`FIGS. 1, 2 6; EX2019, 267:19-268:4; 271:2-273:12; EX1148, 22:23-23:8; 26:7-15;
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`EX2022, ¶45; EX1157, ¶¶50-53.
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`With respect to the second added feature, a POSA would understand that
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`Burger discloses the second added feature as software executing on ESP 60
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`communicates signaling on packet network 24 and PSTN 22 via packet interface
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`68—further, Burger discloses initiating a second call without yet answering the
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`first incoming call and answering the first incoming call when the second call is
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`11
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`answered.. EX1157, ¶¶57-59. A POSA reading Burger would understand that the
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`reference discloses establishing a voice communication across both the circuit-
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`switched network and the packet network and that the voice communication is
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`established after the second call is answered. EX1157, ¶¶57-60. Burger’s ESP 60
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`establishes a voice communication across both the circuit-switched and packet-
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`switched network for connecting a two way call path between the caller and the
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`subscriber so that the two parties can communicate. EX1104, Abstract, 8:34-40,
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`9:19-23, 11:30-32, Fig. 5 (298); EX1157, ¶¶59-63.
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`For example, when a subscriber answers a call and authorizes
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`communication, ESP 60 connects the caller and subscriber for a two-way
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`communication path across circuit switched network 22 and packet network 24
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`which enables the communication after the second call is answered. Id.; EX1157,
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`¶¶59-62. A POSA would understand connecting and receiving calls from the PSTN
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`and the packet-network, when executed by ESP processing unit 62, are processing
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`calls across both a circuit- and packet-switched network that result in establishing a
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`voice communication for the parties upon the second call being answered.
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`EX1157, ¶¶59-63.
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`Thus, in its Motion, PO fails to properly address the art of record in the
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`Petition, including Burger. By failing to properly address this prior art of record,
`12
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`PO has failed to meet its burden that Claim 184 is patentable.
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`VI. THE NEW ART DISCLOSES PO’S ADDED LIMITATIONS
`The Lewis (EX1146) and LaPier (EX1147) patents were filed by two of the
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`major industry players in converging networks (Level 3 Communications and
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`Cisco Systems, respectively) in the late 1990s. PO’s arguments in its Motion to
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`Amend hinge on its expert’s unsupported opinion that no technology being
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`developed by third parties disclosed or involved “something akin to a TAC
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`connected to a tandem switch that does not communicate call requests through an
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`edge switch.” Mot. to Amend., 22-25; EX2040, ¶¶145, 148-151. However, this
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`opinion is refuted by both patents, which show the use of a TAC connected to a
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`PSTN tandem switch without first going through an edge switch. The prior art
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`discussed below show that the two features that PO added in its contingent
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`amendment and asserts provide patentability to Claim 184 were in the prior art.
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`A. Lewis Discloses the Newly Added Features
`Lewis is titled “System and Method for Bypassing Data From Egress
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`Facilities” and was filed November 20, 1998 and issued on August 27, 2002. It
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`qualifies as prior art under 102(e). Lewis was not cited by the examiner during
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`prosecution of the ’113 Patent. Lewis is directed to a telecommunications
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`architecture that routes a call from a calling party to a called party by bypassing the
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`edge switch connected to a called party in order to avoid the cost associated with
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`13
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`sending the call through an edge switch. EX1146, 7:6-27; 12:50-56; EX1157,
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`¶¶68-74. In one embodiment, using an architecture that is virtually identical to the
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`’113 Patent, a call request from a calling party through the PSTN can be converted
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`into a protocol suitable for a data network to complete the call to the called party as
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`a VOIP called party. EX1146, FIGS. 1, 4, 5, 9A 12:50-56, 25:9-10, 25:35-44;
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`EX1157, ¶¶69.
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`As illustrated in FIG. 4 (annotated below), Lewis discloses a PSTN network
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`including edge switches EO 104 and tandem access switches 106 connected to a
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`packet network (e.g. IP network) with an intelligent interconnection between the
`
`two networks called an open architecture switch 502, within open architecture
`
`platform 402, coupled to the PSTN through the tandem switch 106.
`
`
`
`14
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`
`
`
`
`
`
`EX1146, FIGS. 4, 5, 9A, 12:50-56, 19:54-67, 25:9-10, 25:35-44; EX1157, ¶70.
`
`The edge switches 104 are connected to telephones 102 on one side and PSTN
`
`tandem switches 106 on the other side, wherein the edge switches route calls from
`
`and to subscribers within a local geographic area and the PSTN tandem switches
`
`route calls to the edge switches or the PSTN tandem switches local or in other
`
`geographic areas. EX1146, FIGS. 1, 4, 15:7-23; EX1157, ¶¶70-71. Tandem
`
`switch 106 is not directly connected to any telephones. Id.
`
`Open architecture switch 502 receives call requests in the form of SS7
`
`signaling and receives voice from tandem switch 106 and converts the voice and
`
`SS7 signaling to formats suitable for use on the packet network. EX1146, FIGS. 1,
`
`4, 5, 9A, 10A, 27:2-14, 27:19-38, 27:59-61, 29:1-8; EX1157, ¶¶71-73. As further
`
`illustrated below, in annotated FIG. 5 from Lewis, open architecture switch 502,
`
`including gateway 508, tandem Network Access Server (NAS) Bays 504 and
`
`modem NAS bays 514 are the claimed TAC that include the two newly added
`
`features identified above.
`
` EX1146, FIGS. 4, 5, 9A; EX1157, ¶¶71-73.
`
`
`
`15
`
`
`
`
`
`
`
`Lewis discloses the first added feature as a TAC (gateway 508 and tandem
`
`NAS Bays 504) that communicates SS7 signaling and voice directly with the
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`tandem switch AT 106 without passing communications through an edge switch
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`EO 104. EX1146, FIGS. 4, 5, 9A, 27:2-15, 27:59-61, 29:1-8; EX1157, ¶¶72-74.
`
`Lewis discloses the second added feature as gateway 508 that receives a first
`
`call request associated with a first call and as tandem NAS bay 504 and modem
`
`NAS bay 514 that process a second call associated with a second call request and
`
`that establish voice communications across both a packet network and a network of
`
`tandems after the second call is answered. Id.; EX1146, FIG. 10A-10C, 12:50-56,
`
`29:44-51, 30:4-37, 30:48-50, 26:9-14; EX1157, ¶¶75-76. Specifically, gateway 508
`
`receives signaling information to set up data calls and voice calls from a calling
`
`party to a called party. EX1146, FIGS. 4, 5, 9A, 10A-10C, 27:3-5, 27:50-52,
`
`27:59-62, 28:15-22, 28:26-30, 29:1-11, 29:44-51; EX1157, ¶¶75-76. Gateway 508
`
`converts the signaling information into an open architecture protocol format for
`
`delivery in a packet network. Id.; EX1146, 25:35-39, 27:3-14, 30:13-19; EX1157,
`
`¶¶76-77. Lewis references a VOIP call as voice traffic over a data network or data
`
`connection. EX1146, 12:50-56; 26:9-13; EX1157, ¶¶76-77. In a call from the
`
`PSTN to the packet network as a VOIP call, the PSTN call is terminated at modem
`
`NAS bay 514 for conversion to a VOIP format:
`
`Definitions: packetized voice or voice-- One example of packetized
`
`
`
`16
`
`
`
`
`
`voice is voice over a backbone over internet protocol (VOIP). Voice
`over packet refers to the carrying of telephony or voice traffic over a
`data network, e.g. voice over frame, voice over ATM, voice over
`Internet Protocol (IP), over virtual private networks (VPNs), voice
`over a backbone, etc. EX1146, 12:50-56.
`
`In step 1002 of FIG. 10A, the technique receives signaling
`information to set up data calls and voice calls from a calling party to
`a called party. In step 1004, the technique converts the signaling
`information into an open architecture protocol format. In step 1006 [of
`FIG. 10A], data calls . . . are received at open architecture switch 502 .
`. . In step 1012, the method terminates data calls to modems in a
`modem NAS bay, e.g., in modem NAS 514, for conversion to a
`packetized data format for transmission to network nodes. Id., 27:3-
`14; EX1157, ¶¶77-78.
`
`After the first call is made to modem NAS bay 514, a second call is placed
`
`to the end user. EX1146, FIG. 10C, 20:44-53; EX1157, ¶¶77-78.
`
`Gateway 508 looks up the called party number in internal or external
`
`database 516 to determine how to route the call and informs modem NAS bay 514.
`
`EX1146, 29:44-51; EX1157, ¶¶78-79. NAS bay 514 converts the PSTN call to
`
`data packets in a VOIP protocol using the routing information provided by
`
`gateway 508. EX1146, FIG. 10C, 24:5-19, 25:35-39, 30:13-19; EX1157, ¶¶79-80.
`
`Gateway 508 then sends an address complete (ACM) message out over SS7
`
`network and edge switch plays a ringing signal for calling party 102. EX1146,
`
`
`
`17
`
`
`
`
`
`30:24-35; EX1157, ¶¶78-79. After the called party answers the second call, voice
`
`communication is established across both the packet network and the PSTN
`
`between the calling party and the called party. EX1146, FIGS. 10C, 18A, 18B,
`
`30:36-43, 30:48-50, 26:9-14; EX1157, ¶¶78-80.
`
`As shown in FIG. 4 (annotated above), tandem switch 106 is different than
`
`edge switch 104 and tandem switch 106 is not directly connected to the telephones
`
`of subscribers. EX1157, ¶¶78-80. Thus, Lewis describes all of the features that PO
`
`seeks to add in Claim 184 . Specifically, Lewis is an example of a call processing
`
`system that was connected into the PSTN through a tandem switch, without the
`
`need to access the PSTN only through an edge switch. EX1157, ¶¶81-83. PO’s
`
`expert is unaware of the work like Lewis that happened at a major telecom
`
`company (Level 3 Communications) prior to May 2000 and even acknowledged
`
`that, in preparing his declarations, he did not research the state of the art with
`
`respect to converging IP and PSTN networks (as recited in the Proposed Claim).
`
`EX1148, 192:11-14.
`
`Therefore, PO has failed to meets it burden for showing the patentability of
`
`Claim 184 over Lewis.
`
`LaPier Discloses the Newly Added Features
`
`B.
`LaPier is titled “Method and System for Interconnecting a Circuit-Switched
`
`Telephony Network and a Packet-Switched Data Network, And Applications
`
`
`
`18
`
`
`
`
`
`Therefore” and was filed December 28, 1998 and issued on December 25, 2001. It
`
`qualifies as prior art under 102(e). LaPier was not cited by the examiner during
`
`prosecution of the ’113 Patent. LaPier is directed to interconnecting voice calls
`
`between the PSTN and a packet switched network. EX1147, FIGS. 1B (annotated
`
`below), 1C, 4:58-5:4, 8:61-9:7, 35:13-16, 35:54-62; EX1157, ¶¶84-85. LaPier
`
`discloses an intelligent interconnection architecture between the PSTN and the
`
`packet-switched network including a Signaling Access Sever (SAS) and the
`
`Network Access Server (NAS). Id. The SAS converts the signaling into the
`
`proper protocol suitable for the PSTN and the packet-switched network to ensure
`
`that the voice call is routed properly. Id.; EX1147, 4:67-5:2, 6:4-9, 6:49-54, 9:18-
`
`22, 9:26-29, 38:13-25, 38:51-62; EX1157, ¶¶85-86. The SAS and NAS
`
`interconnect the voice calls between the PSTN and the packet-switched network.
`
`EX1147, 5:8-16, 5:28-35, 6:10-27, 6:55-62, 8:61-9:7, 38:26-40, 38:51-62;
`
`EX1157, ¶¶85-86.
`
`As illustrated in annotated FIG. 1B, LaPier discloses a PSTN network
`
`including edge switches 116 and tandem access switches 114 connected to a packet
`
`network 122 with an intelligent interconnection between the two networks as a
`
`TAC (Network Access Server (NAS) 118 and Signaling Access Server (SAS) 112)
`
`coupled to the tandem switch 114. EX1147, FIGS. 1B-1C, 5:28-35, 6:60-62 (“The
`
`Network Access Servers 118 are coupled by voice links V to one or more switches
`
`
`
`19
`
`
`
`
`
`such as . . . tandem switch 114.”); EX1157, ¶¶86-87. The edge switches 116 are
`
`connected to telephones 105 on one side and PSTN tandem switches 114 on the
`
`other side, wherein the edge switches route calls from and to subscribers within a
`
`local geographic area and the PSTN tandem switches route calls to the edge
`
`TAC
`
`SS7
`
`PSTN
`
`PSTN tandem
`switch 114
`PSTN edge
`switch 116
`
`SS7
`
`PCM
`
`IP network
`
`switches or the PSTN tandem switches local or in other geographic areas. Id.,
`
`EX1147, 7:1-3; EX1157, ¶¶87-88. Tandem switch 114 is not directly connected to
`
`any telephones (e.g. 105, 107). Id.; EX1157, ¶¶87-88.
`
`
`
`20
`
`
`
`
`
`Signaling Access Server (SAS) 112 receives call requests in the form of SS7
`
`signaling and NAS 118a receives voice from tandem switch 106 and converts the
`
`voice and SS7 signaling to formats suitable for use on the packet network 122.
`
`EX1147, 4:67-5:4, 5:8-16, 5:28-43, 6:49-54, 6:60-62, 35:54-62, 38:13-40, 38:51-
`
`62; EX1157, ¶¶88-89. NAS 118a and SAS 112 are the claimed TAC that include
`
`the two newly added features identified above. EX1157, ¶¶89-90. LaPier discloses
`
`the first added feature as SAS 112 and NAS 118a each communicates directly with
`
`the tandem switch 114 without passing through an edge switch 116. EX1157,
`
`¶¶89-90.
`
`LaPier discloses the second added feature as SAS 112 receives a first call
`
`request associated with a first call, SAS 112 and NAS 118a process a second call
`
`associated with a second call request, and NAS 118a establishes voice
`
`communications across both a packet network and a network of tandems after the
`
`second call is answered. EX1157, ¶¶91-92. Specifically, SAS 112 receives
`
`signaling information to set up voice calls from a calling party to a called party.
`
`EX1147, FIGS. 1B (SS7 signaling from tandem switch 114 to STP 106 to SAS
`
`112), 7A (704), 5:39-43; 16:57-60; 38:13-18 (“[SS7 trunk 20] delivers an Initial
`
`Address Message 704 to the Signaling Access Server (SAS) 112.”); EX1157,
`
`¶¶91-92. SAS 112 converts the signaling information into a protocol format for
`
`communication with NAS 118a. EX1147, FIGS. 1B, 7A, 5:61-6:1, 7:14-21,
`
`
`
`21
`
`
`
`
`
`16:54-57; EX1157, ¶¶92-93. In a call from the tandem switch 114 in the PSTN to a
`
`called party on the packet network 122 (e.g. IP network), the PSTN call is
`
`terminated at SAS 112 for conversion to a VoIP format and origination of a VoIP
`
`call at the illustrated top one of the NAS 118a (see annotated FIG. 1B above). Id.,
`
`38:26-32, 35-54-62; EX1157, ¶¶93-94.
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