Reply to Patent Owner’s Response
`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
`––––––––––
`
`Case IPR2016-01257
`Patent 8,457,113 B2
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`
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ......................................................................................... 1 
`I. 
`II.  BURGER (GROUND 1), BURGER IN VIEW OF ALEXANDER
`(GROUND 2), AND ARCHER (GROUND 3) DISCLOSE EACH
`LIMITATION OF THE CHALLENGED CLAIMS ................................. 3 
`Burger (Ground 1) Discloses Interconnecting an Enhanced
`A. 
`Services Platform (e.g. “web-enabled processing system”) on
`an IP Network to a Tandem Switch in the PSTN ................................. 4 
`B.  Archer (Ground 3) Discloses a Gateway Interconnecting a
`Controller (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN ........................................... 6 
`C.  A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch
`or PSTN Edge Switch and Without any Technical Differences ........... 8 
`Burger in view of Alexander (Ground 2) Discloses a Gateway
`Interconnecting (e.g. “web-enabled processing system”) on an
`IP Network to a Tandem Switch in the PSTN .................................... 13 
`Conclusion: Burger (Ground 1), Burger in view of Alexander
`(Ground 2), and Archer (Ground 3) and Archer Disclose All of
`the Limitations of the Challenged Claims Even Under PO’s
`Constructions ....................................................................................... 15 
`III.  THE CHALLENGED CLAIMS ARE ALSO OBVIOUS
`BECAUSE APPLICANT DID NOT CLEARLY AND
`UNMISTAKABLY DISCLAIM THE CLAIM SCOPE OF
`“SWITCHING FACILITY” AS ASSERTED BY PATENT
`OWNER ........................................................................................................ 15 
`A.  Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by Patent
`Owner .................................................................................................. 16 
`
`D. 
`
`E. 
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`B. 
`
`D. 
`
`E. 
`
`F. 
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification is Inapposite as it Refers to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention” ............................................................................. 18 
`C.  Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the
`Scope of “Switching Facilities” is Not Limited to the Preferred
`Embodiment of a PSTN Tandem Switch ............................................ 20 
`“Switching Facility” / “Tandem Switch” / “Controller” (Resp.
`30-39) Are Not Limited to a “PSTN Tandem Switch” ....................... 24 
`“Coupled to” (Resp. 27-32) Is Not Limited to “Connected to
`Without an Intervening Edge Switch” ................................................ 25 
`“Tandem Access Controller” / “Controller” (Resp. 36-39,
`EX2022, ¶61, 62, 99-100) is Not Limited to a Controller
`Connected to a PSTN Tandem Switch Without an Intervening
`Edge Switch ......................................................................................... 25 
`Conclusion: Burger (Ground 1), Burger in View of Alexander
`(Ground 2), and Archer (Ground 3) Disclose All of the
`Limitations of the Challenged Claims Under the Broadest
`Reasonable Interpretation of the Claims or Patent Owner’s
`Constructions ....................................................................................... 26 
`IV.  CONCLUSION ............................................................................................ 27 
`
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`G. 
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`PETITIONERS’ REPLY EXHIBIT LIST
`
` Exhibit Number
`
`Document
`
`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
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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
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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` Exhibit Number
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`Document
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`2019
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`2020
`
`2022
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`2040
`
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263
`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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`iv
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`I.
`
`INTRODUCTION
`
`Nothing in Patent Owner’s Response refutes the strong grounds for
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`obviousness that led this Board to institute this Inter Partes review (“IPR”) on
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`Ground 1 (Burger (EX1103) in view of the knowledge of a person of ordinary skill
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`in the art (“POSA”)), on Ground 2 (Burger in view of Alexander (EX1106), and on
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`Ground 3 (Archer (EX1104)) as to claims 143-147, 149, 150, 163, and 176-178 of
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`U.S. Patent No. 8,457,113 (“the ’113 Patent”). Patent Owner’s arguments in
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`response to these Grounds include that:
`
`
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`
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`(1) a POSA understood that, in May 2000, the only way to connect to the
`
`PSTN was through a PSTN edge switch; and
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`(2) Grounds 1-3 do not disclose interconnecting “a controller” to a tandem
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`switch in the PSTN.
`
`Underlying these two arguments is Patent Owner’s third argument –
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`essentially rehashing its disclaimer arguments in support of narrowing certain
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`claim terms. However, as described below, Burger and Archer disclose each of the
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`limitations in the Challenged Claims even if the claims are narrowed as urged by
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`Patent Owner.
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`Patent Owner’s first argument—that the only way to interconnect a packet
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`network to the PSTN was through an edge switch—lacks any factual support and is
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`simply inaccurate. For example, during his deposition, Patent Owner’s expert (Mr.
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`Bates) acknowledged that it was well known to interconnect an IP carrier network
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`and the PSTN at a tandem switch. Additionally, in May 2000, a POSA understood
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`that PSTN and IP networks could be interconnected at the tandem level and doing
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`so posed no technical challenges over interconnecting such networks at a different
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`switch such as a PSTN end office switch. For example, as illustrated in LaPier
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`(EX1147) and Lewis (EX1146), from two of the major industry players in
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`converging networks (Cisco and Level 3, respectively), a POSA understood that
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`interconnecting the PSTN to a packet switched network through a tandem switch,
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`or an edge switch, provided maximum flexibility.
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`Because Patent Owner’s argument is unsupported and inaccurate, Burger,
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`Burger in view of Alexander, and Archer disclose all of the limitations of the
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`Challenged Claims even under Patent Owner’s proposed claim constructions of
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`“switching facility”, “tandem switch”, “coupled to”, and “tandem access
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`controller.” However, the Challenged Claims are also obvious under both Grounds
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`because Patent Owner’s third argument—that the specification of the ’113 Patent,
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`and prosecution history of related U.S. Patent No. 7,764,777 (“the ’777 Patent”),
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`clearly and unmistakably narrow the scope of these claim terms—is also
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`unsupported and inaccurate. Indeed, this third argument is simply a rehash of its
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`disclaimer arguments that are without any legal or factual support and for which
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`the Board has already twice rejected (see Papers 15, 18).
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`Unlike the cases on which Patent Owner relies, “switching facility”1 never
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`appears in the ’113 Patent specification, which it shares with the ‘’777 Patent and
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`U.S. Patent No. 8,115,298 (“the ’298 Patent”) (the “Shared Specification”), and
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`was first introduced during prosecution of the ’777 Patent. Additionally, Patent
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`Owner relies on statements originally made in the Shared Specification, which are
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`directed to a preferred or single embodiment, rather than “the invention” or “the
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`present invention” upon which the disclaimer case law is based. Moreover, Patent
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`Owner ignores arguments made, and definitions provided, during prosecution that
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`represent the Patent Owner’s assertion of the broad scope of “switching facility” in
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`the issued claims. Therefore, these disclaimer arguments should be given little
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`weight.
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`Accordingly, the Board should find that the instituted claims are obvious.
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`II. BURGER (GROUND 1), BURGER IN VIEW OF ALEXANDER
`
`
`1 Patent Owner’s proposed claim constructions of “tandem switch”, “coupled to”,
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`and “tandem access controller” are based on these identical disclaimer arguments
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`and, therefore, rise and fall with its unsupported and inaccurate construction of
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`“switching facility.” See §§III.C infra.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`
`(GROUND 2), AND ARCHER (GROUND 3) DISCLOSE EACH
`LIMITATION OF THE CHALLENGED CLAIMS
`A. Burger (Ground 1) Discloses Interconnecting an Enhanced
`Services Platform (e.g. “web-enabled processing system”) on an
`IP Network to a Tandem Switch in the PSTN
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`As set forth in the Petition, Burger discloses that its web-enabled processing
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`system (ESP 602), and its call processing system (ESP processing unit 62), is a
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`switching facility of the circuit-switched network 22 coupled to circuit interface 64
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`and packet interface 683. Pet., 31-42, EX1002, ¶¶, 142-150, EX1103, Figs. 1 (60,
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`62, 64, 68), Fig. 2 (2, 60), 4:1-12. Burger discloses that ESP 60’s packet interface
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`68 can be an external gateway which is coupled to ESP 60’s processing unit 62, in
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`the circuit switched network, which connects them to packet network 24. EX
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`2 Mr. Bates acknowledged that there is no such thing as an “edge switch” in IP
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`networks. EX1148, 110:9-13; 114:17-20; 178:21-24. Thus, PO’s argument (Resp.
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`49-50, EX2022, ¶¶81-83) that Burger’s ESP 60 (which is clearly on an IP network)
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`is an edge switch is nonsensical. EX1003, Figs. 2, 6; 6:6-9; 6:51-53.
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`3 In his deposition, Mr. Bates defined a “tandem switch” as a “switch that passes
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`some form of information through it.” EX1149, 356:9-357:8. Thus, Burger’s
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`gateway/packet interface (68) cannot be an “edge switch” because it meets this
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`definition and is at least in part on an IP network.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`1103, Fig. 1 (60, 64, 68), 4:1-12, 4:19-22 (interface 68 can be a CISCO AS5300
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`Voice Gateway, connecting to the ESP processing unit 62”); EX 1002, ¶ 146.
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`Specifically, Burger discloses that PSTN-to-IP packet interface/gateway 68 would
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`be connected to a tandem switch in the PSTN 22 because it receives voice from the
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`PSTN as time division multiplexing (TDM) which is used by a tandem switch but
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`not an edge switch. EX1003, Figs 1, 2, 5:59-62. PO’s expert (Mr. Bates)
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`confirmed that PCM/TDM protocol is used by a tandem switch and would
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`overcome the transmission loss and impairment problems identified in the Shared
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`Specification (’113 Patent, 1:59-65). EX1148, 22:23-23:8; 26:7-15; 205:15-206:11
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`Ex. 2022, ¶50. Thus, PO’s arguments that Burger’s gateway 68 interconnecting
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`the PSTN 22 to a packet network 24 must be connected to an edge switch, ignores
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`the express teaching of Burger and its own expert’s testimony. Id., Resp., 49-51,
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`53-57; Ex. 2022, ¶¶70-72, 81-83; EX2019, 267:19-268:4; 271:2-273:12 (as applied
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`to Archer, but applies to Burger for the same reasons).
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`Rather, a POSA would understand that, as set forth in the Petition, Burger
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`discloses that ESP 60 is coupled to a PSTN tandem switch in PSTN 22 via PSTN-
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`to-IP network gateway 68. Pet., 17-23; EX1102, ¶¶135-142, 157, 159-162;
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`EX1148, 22:23-23:8; 26:7-15; EX2022, ¶45; EX2027, 108:5-18; 120:5-121:19.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`Moreover, even if the claims are narrowed as urged by the PO in its
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`Response such that “switching facility” can only be a PSTN tandem switch, and
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`not a gateway, and that the “call processing system” must be directly connected to
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`such a PSTN tandem switch, Burger discloses this architecture. TLP Dec., ¶. For
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`example, Burger discloses a tandem access controller (ESP 60 containing
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`gateway/packet interface 68) interconnecting an IP network to the PSTN through a
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`PSTN tandem switch as shown in Figures 1 and 2. EX1103, FIGS. 1, 2, 6; Pet. 17-
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`23.
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`B. Archer (Ground 3) Discloses a Gateway Interconnecting a
`Controller (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN
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` Archer also discloses this element. As set forth in the Petition, Archer
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`discloses that gateway 126, that is coupled to server processor 128, passes
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`information (e.g. voice and signaling) between the PSTN 118 (136) and a packet
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`network 130 (e.g. IP network). Pet., 40-44, EX1002, ¶¶1249-53. A POSA would
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`understand that, as set forth in the Petition, Archer discloses that server processor
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`128 is coupled to a PSTN tandem switch in PSTN 118 (136) via PSTN-to-IP
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`network gateway 126. Pet., 40-44; EX1102, ¶¶249-53; EX2019, 267:19-268:4;
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`271:2-273:12; EX1148, 22:23-23:8; 26:7-15; EX2022, ¶45.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`Moreover, even if the claims are narrowed as urged by the PO in its
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`Response such that “switching facility” can only be a PSTN tandem switch, and
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`not a gateway, and that the “call processing system” must be directly connected to
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`such a PSTN tandem switch, Archer discloses this architecture. TLP Dec., ¶. For
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`example, Archer discloses a tandem access controller (gateway 126 and server
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`processor 128 and database 138 annotated in purple) interconnecting an IP network
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`(annotated in blue) to the PSTN (annotated in green) through a PSTN tandem
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`switch (annotated in green below and as set forth supra)) as shown in annotated
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`Figure 2: EX1104, FIGS. 2 (annotated above), 6; Pet. 48-53, EX1102, ¶¶249-53;
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`EX2019, 267:19-268:4; 271:2-273:12; EX1148, 22:23-23:8; 26:7-15; EX2022,
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`¶45.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`PSTN 
`PSTN tandem 
`switch
`PCM
`
`TAC
`
`SS7
`
`IP network
`
`
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`C. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch and Without any Technical Differences
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`PO’s assertions that (1) Burger or Archer discloses its gateway must be
`
`connected to the PSTN through a PSTN edge switch and therefore the gateway is
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`an “edge device”; (2) Burger Archer does not inherently disclose that its gateway is
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`connected to a tandem switch; and (3) it would not be obvious to connect Burger or
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`Archer’s gateways to a tandem switch (Resp., Resp., 48-51), all stem from its
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`expert’s misrepresentation of the state of the art. In May 2000, it was well-
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`understood to a POSA to interconnect an IP network to the PSTN through an edge
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`switch or a tandem switch to provide flexibility. For example, Level 3’s patent to
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`Lewis (EX1146) discloses a tandem access controller (open architecture switch
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`502 annotated in purple) interconnecting an IP network (annotated in blue) to the
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`PSTN (annotated in green) through a PSTN tandem switch (AT 106) (and
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`separately, also through an edge switch (EO 104)) as shown in annotated Figures 4
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`and 5. EX1146, FIGS. 4 (annotated below), 5 (annotated below), 9A, 10A, 10C,
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`18A-18B, 12:50-56, 15:7-23, 19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21,
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`26:9-14, 29:44-51, 30:4-35.
`
`
`
`
`
`SS7
`
`PSTN 
`
`PSTN tandem 
`switch 106
`
`PSTN edge 
`switch 104
`PCM
`
`SS7
`
`PCM
`
`TAC 502
`
`IP network
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`
`PSTN 
`
`PCM
`
`SS7
`
`TAC 502
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`IP network
`
`SS7
`
`SS7
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` Likewise, Cisco’s patent to LaPier (EX1147) discloses a tandem access
`
`controller (Network Access Server (NAS) 118a and Signaling Access Server 112
`
`annotated in purple) interconnecting an IP network (annotated in blue) to the PSTN
`
`(annotated in green) through a PSTN tandem switch 114 (and separately also
`
`through an edge switch 116) as shown in annotated FIG. 1B. EX1147, FIGS. 1B
`
`(annotated below), 1C, 7A, 7B, 4:58-5:4, 6:55-62, 9:18-22, 8:61-9:7, 9:26-29,
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`14:3-11, 35:13-16, 35:54-62, 38:13-40, 38:51-62.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`
`PSTN 
`
`PSTN tandem 
`switch 114
`PSTN edge 
`switch 116
`
`SS7
`
`PCM
`
`TAC
`
`SS7
`
`IP network
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` PO’s expert’s contrary opinion—a POSA in May 2000 would understand
`
`that the state of the art taught that devices external to the PSTN must receive or
`
`send call requests via the PSTN through an edge switch first, not a tandem
`
`switch—is inaccurate. Id., Resp., 49-51; EX2022, ¶68. Notably, Mr. Bates
`
`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
`
`Challenged Claims). EX1148, 192:11-14. It is also noteworthy that Mr. Bates
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`cited no factual support for his own opinion (EX2022, ¶68), and his citations to the
`
`testimony of Petitioners’ expert, and the experts of other Petitioners in different
`
`IPRs, were taken out of context. Indeed, both Dr. La Porta (Petitioners expert) and
`
`Mr. Willis (expert in other IPRs) testified that Mr. Bates’s opinion that devices
`
`external to the PSTN must connect to the PSTN through an edge switch first is
`
`inaccurate with respect to converging PSTN and IP networks. See, e.g., EX2019,
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`350:4-24; EX1150, 80:9-20. When presented with this conflicting testimony
`
`during his deposition, Mr. Bates acknowledged that it was well known to
`
`interconnect an IP carrier network and the PSTN at a tandem switch. Id.; EX1148,
`
`201:22-202:11, 205:15-206:16, 211:21-213:14.
`
`Therefore, Mr. Bates’ opinion should be entitled to little weight. The state
`
`of the art prior to May 2000 included systems in which devices external to the
`
`PSTN (e.g. on an IP network) sent and received call requests via the PSTN through
`
`(1) controllers on IP networks connected to PSTN tandem switches (and not PSTN
`
`edge switches) via gateways (e.g. Archer) or (2) controllers connected to PSTN
`
`tandem switches (and not PSTN edge switches) (e.g. Lewis, LaPier). Moreover, as
`
`demonstrated by LaPier (EX1147) and Lewis (EX1146), interconnecting PSTN
`
`and IP networks at the tandem level was well known and posed no technical
`
`challenges over interconnecting such networks at a different switch such as a
`
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`PSTN end office switch. EX1146, FIGS. 4, 5, 15:7-23, 19:24-28, 19:54-61;
`
`EX1147, 1B, 1C, 6:55-62.
`
`D. Burger in view of Alexander (Ground 2) Discloses a Gateway
`Interconnecting (e.g. “web-enabled processing system”) on an IP
`Network to a Tandem Switch in the PSTN
`
`
`
`As set forth in the Petition, Alexander discloses that PSTN tandem switch
`
`that is coupled to call manger 26a (that is similar to Burger’s ESP 60). Pet., 40-44.
`
`Alexander’s call manger 26a is a web-enabled processor that implements call
`
`control features over circuit- and packet-switched networks. EX1106, Abstract.
`
`Alexander’s call manager 26a is coupled to the circuit-switched network via
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`several different switching facilities, including gateways 52 and 64a, PBX 50, CO
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`62a, and long distance network 66. EX1106, Fig. 1; EX1102, ¶169-176.
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
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`
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`Gateways 52 and 64a are switching facilities that convert VOIP protocols to
`
`SS7 for call routing over circuit switches. EX1106, Figs. 1, 5a, 5:42-45, EX1102,
`
`¶173. As explained throughout this Reply, applicant has defined switching facility
`
`to include gateways. EX1108, at 87 n.1; EX1002, ¶172. Further, PBX 50 and CO
`
`62a are also switching facilities because they “rout[e] calls to other edge switches
`
`or other switching facilicies local or in other geographic areas” as recited in claim
`
`65. EX1101, cl. 65.
`
`In addition, gateways 52, 64a, 65b, PBX 50, and CO 62a form parts of the
`
`PSTN. EX1106, 3:17-24, 3:27-53; Fig. 1; EX1012, ¶176. For example, gateway
`
`
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`64a is part of the PSTN 60 through its connection to CO 62a. EX1106, Fig. 1,
`
`EX1102, ¶176. Alexander’s web-enabled processor is coupled to PSTN switching
`
`facilities including tandem switches. Pet., 40-44.
`
`E. Conclusion: Burger (Ground 1), Burger in view of Alexander
`(Ground 2), and Archer (Ground 3) and Archer Disclose All of
`the Limitations of the Challenged Claims Even Under PO’s
`Constructions
`
`Even if the Board adopts PO’s constructions of a “switching facility” and a
`
`“tandem switch” as a PSTN tandem switch, of “coupled to” as being connected to
`
`without an intervening edge switch, and of “tandem access controller” as a
`
`controller connected to a PSTN tandem switch without an intervening edge switch,
`
`the Challenged Claims are invalid as obvious over Burger (Ground 1), Burger in
`
`view of Alexander (Ground 2), and Archer (Ground 3) because a POSA would
`
`understand all four grounds disclose a web-enabled processing system connected
`
`to a PSTN tandem switch without an intervening edge switch. Id.; see also
`
`EX1149, 303:15-304:4; 325:10-15; 326:11-327:12; 356:16-357:8; 365:25-366:6;
`
`367:25-368:11; 369:5-370:17; 380:4-381:17. Furthermore, the Challenged Claims
`
`are invalid as obvious over Burger (Ground 1), Burger in view of Alexander
`
`(Ground 2), and Archer (Ground 3) because all of the limitations of the Challenged
`
`Claims are disclosed. §§II.A-D.
`
`III. THE CHALLENGED CLAIMS ARE ALSO OBVIOUS BECAUSE
`
`
`
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY”
`AS ASSERTED BY PATENT OWNER
`
`The Challenged Claims are also obvious over both grounds because Patent
`
`Owner’s disclaimer arguments regarding “switching facility” are factually and
`
`legally unsupported.
`
`The term “switching facility” does not appear in the specification of any of
`
`the claimed priority documents4, but was instead introduced for the first time
`
`during prosecution of the application leading to the ’777 Patent in February 2010.
`
`EX1108, 66, 68-80, 84-88. Specifically, Applicant amended several existing
`
`claims to include “switching facility” and added new claims reciting the term.
`
`EX1108, 68-80. Four months later, on June 22, 2010, Applicant filed the
`
`application leading to the ’113 Patent, as a continuation of the ’777 Patent, which
`
`included “switching facility” only in the claims and again not in the specification.
`
`EX1107, 211-234.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by Patent Owner
`
`
`4 The ‘777 Patent application (EX2042), App. No. 09/565,565 (EX2044; EX1159),
`
`and App. No. 10/426,279 (EX2043; EX1160). EX1101, 1.
`
`
`
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`
`As a threshold matter, the undisputed fact that “switching facilities” was not
`
`used in the Shared Specification distinguishes this case from all but one5 of the
`
`cases relied upon by Patent Owner for its disclaimer arguments. EX1154; Resp.,
`
`16-20, 27-35. In each of these cases, the claim terms at issue were used throughout
`
`the specification to provide evidence as to their meaning. In re Man Mach.
`
`Interface Techs. LLC, 822 F.3d 1282, 1286-1287 (Fed. Cir. 2016); OpenWave
`
`Systems, Inc. v. Apple Inc., 808 F.3d 509, 511-516 (Fed. Cir. 2015); Chi. Bd.
`
`Options Exch., Inc. v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1363-1365, 1371-
`
`1373 (Fed. Cir. 2014); Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1367-
`
`1370, 1374-1375 (Fed. Cir. 2010); Akamai Techs. Inc. v. Limelight Networks, Inc.,
`
`629 F.3d 1311, 1323-1328 (Fed. Cir. 2010); Biogen, Inc. v. Berlex Labs., Inc., 318
`
`F.3d 1132, 1132-1137 (Fed. Cir. 2003); SciMed Life Sys., Inc. v. Advanced
`
`Cardiovascular Sys., Inc., 242 F.3d 1337, 1339-1340, 1342-1343 (Fed. Cir. 2001).
`
`Notwithstanding the boundaries of its own cited cases, Patent Owner argues
`
`that the Shared Specification, despite the Applicant not using “switching facility”
`
`therein, retroactively limits the meaning of this term because it identified (1)
`
`various problems in prior art systems and (2) directly connecting the controller to a
`
`PSTN tandem switch as the preferred embodiment. Resp., 15, 20-26, 26, 34;
`
`5 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006); §III.B
`infra.
`
`
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`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`EX2022, ¶¶42-52, 62, 66. However, such retroactive narrowing is only permitted
`
`if the Shared Specification clearly and unmistakably identified “the invention” or
`
`“the present invention” as: (1) directly connecting the controller to a PSTN tandem
`
`switch (which it does not), or (2) solving all of identified prior art problems (which
`
`it does not). See Honeywell Int’l, 452 F.3d at 1315-1316, 1318; Honeywell Inc. v.
`
`Victor Co. of Japan, LTD., 298 F.3d 1317, 1323-1326 (Fed. Cir. 2002).
`
`B.
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification
`is
`Inapposite as
`it Refers
`to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention”
`
`In the only case relied upon by Patent Owner in which a claim term was
`
`introduced for the first time during prosecution (Honeywell Int’l, Inc.), the
`
`specification characterized, on several occasions, the “invention” or “the present
`
`invention” as the narrower meaning adopted by the Federal Circuit for the newly
`
`introduced term. 452 F.3d at 1315-1316, 1318; EX1151 at 1:8-9; 1:40-43; 1:43-
`
`49; 3:41-43. In contrast, here, the identified solutions to prior art problems in the
`
`Shared Specification explicitly refer to a “preferred”, “one”, or “another”
`
`embodiment or system:
`
`A preferred embodiment of the inventive system described herein
`connects at the tandem, thereby eliminating these problems. EX1101,
`2:1-3;
`
`
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`

`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`
`In one embodiment, the system includes a processor (referred to
`herein as a tandem access controller) connected to the PSTN which
`would allow anyone to directly provision, that is to say set-up and
`make immediate changes to, the configuration of his or her phone
`line. In another embodiment, a tandem access controller (TAC)
`subsystem is connected internally to the PSTN in a local service area.
`The TAC provides features, selected by the subscriber, to all edge
`switches connected to the PSTN tandem switch. Connecting directly
`to the PSTN tandem switch (or embedding the system into the tandem
`switch) eliminates the signal degradation problems previously
`described. Id., 3:28-40; see also id., 3:66-4:3, FIG. 1 (“in one
`embodiment”), 3:15-27 (“the preferred system”).
`This undisputed absence of statements regarding “the invention” or “the
`
`present invention” also further distinguishes the facts in this case from those in six
`
`of the other aforementioned cases (§ II.A.1 supra) on which Patent Owner relies.
`
`OpenWave, 808 F.3d at 512, 515-517; Chi. Bd. Options, 677 F.3d at 1372; EX1152
`
`at 6:49-58; Telcordia, 612 F.3d at 1374-75; EX1153 at 1:26-31, 4:39-43, 4:48-49;
`
`Akamai, 629 F.3d at 1326-27; Biogen, 318 F.3d at 1136; SciMed, 242 F.3d at 1340,
`
`1343-44.
`
`The fact that a patent indicates that a preferred embodiment improves upon
`
`various identified problems in prior art systems, or can achieve several objectives,
`
`does not (without significantly more) require that each of the claims be limited to
`
`
`
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`

`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`systems that improve upon each of these problems or achieve all of these
`
`objectives. Ventana Medical Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173,
`
`1180-1182 (Fed. Cir. 2006); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
`
`908-909 (Fed. Cir. 2004); Honeywell, Inc., 298 F.3d at 1325-1326. Rather,
`
`because there is no unequivocal disclosure in the Shared Specification that the
`
`invention is required to solve all of these identified problems, and that using the
`
`identified “preferred” embodiment is the only way to do so, Patent Owner’s
`
`retroactive disclaimer arguments fail. Id., Cf. Honeywell Int’l, Inc., 452 F.3d at
`
`1315-1316, 1318.
`
`C. Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the Scope
`of “Switching Facilities”
`is Not Limited to the Preferred
`Embodiment of a PSTN Tandem Switch
`
`Contrary to Patent Owner’s arguments (Resp., 227-35, EX2022, ¶¶55-59,
`
`62), a POSA would understand that the Applicant broadly defined “switching
`
`facilities”, and specified different locations and functions for “switching
`
`facilities” in different claims, when it introduced the term during prosecution of
`
`the ’777 Patent. EX1108, 65-66, 68-80. For example, the first time Applicant
`
`uses the term, it explicitly states that the “switching facilities” located on the
`
`PSTN are of two different types, namely end office switches and tandem
`
`switches:
`
`
`
`20
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`

`Reply to Patent Owner’s Response
`Case IPR2016-01257
`U.S. Patent No. 8,457,113
`
`
`The PSTN is a configuration of switching facilities for routing
`calls from calling parties to called parties, comprising a plurality
`of end office switches (also referred to as central office switches or
`edge switches (e.g., a class 5 switch)) and a plurality of
`interconnected switching facilities (also referred to as tandem
`switches). EX1108, 87.
`Then, Applicant broadly and explicitly ascribed a meaning to the second
`
`type of “switching facilities” (“tandem switching facilities”) as “any point in the
`
`switching fabric of converging networks” and enumerated several examples
`
`including “signal transfer point (STP), signal control point (SCP), session border
`
`controller (SBC), gate