UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case No. IPR2016-01257
`Patent: 8,457,113
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONER’S SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case No. IPR2016-01257
`Patent: 8,457,113
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONER’S SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I. INTRODUCTION ............................................................................................. 1
`
`A. Preliminary Matters .......................................................................................... 1
`B. Petitioner’s Supplemental Briefing .................................................................. 2
`II. THE ’113 PATENT’S DESCPRITION OF THE STATE OF THE ART
`AND THE ALLEGED INVENTION ..................................................................... 3
`
`III. CHALLENGES AND STATUTORY GROUNDS FOR CHALLENGES .. 7
`
`A. Motivation to Combine Lewis or LaPier and AAPA. ...................................... 8
`B. Challenge 2: Lewis in View of AAPA ............................................................. 9
`1. Claim 184: “intelligent interconnection at a TAC” and “control criteria” ... 9
`2. Claim 184: “intelligent interconnection between a PSTN and packet
`network” ............................................................................................................. 10
`3. Claim 184: “PSTN telecommunications network and switches”................ 11
`4. Claim 184: “enabling communications between the calls” ........................ 11
`C. Challenge 1: LaPier in View of the AAPA .................................................... 12
`1. Claim 184: “intelligent interconnection at a TAC” and “control criteria” . 12
`2. Claim 184: “intelligent interconnection between a PSTN and packet
`network” ............................................................................................................. 14
`3. Claim 184: “PSTN telecommunications network and switches”................ 14
`4. Claim 184: “enabling communications between the calls” ........................ 15
`
`
`
`
`
`
`
`
`
`i
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`
`
`
`
`
`
`Exhibit
`Number
`1101
`1102
`1103
`1104
`1105
`1106
`1107
`1108
`1109
`1110
`1111
`1112
`
`1113
`1114
`
`1115
`1116
`1117
`1118
`
`1119
`1120
`1121
`1122
`1123
`
`1124
`1125
`
`1126
`1127
`1128
`1129
`
`PETITIONER’S SUPPLEMENTAL BRIEF EXHIBIT LIST
`
`Document
`
`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
`Harry Newton, “Newton’s Telecom Dictionary” 15th Ed. (1999)
`Colin Low “The Internet Telephony Red Herring” (1996)
`Andrew S. Tanenbaum “Computer Networks” 3rd Ed. (1996)
`R.F. Rey, Ed. “Engineering and Operations in the Bell System” 2nd
`Ed. (1984)
`Douglas E. Comer “Internetworking with TCP/IP” (1991)
`Abdi R. Modarressi “An Overview of Signaling System No.
`7”(1992)
`Jon Thӧrner “Intelligent Networks” (1994)
`U.S. Patent No. 5,434,852 to La Porta
`ITU-T Recommendation H.323
`M. Handley et al. “SIP: Session Initiation Protocol” RFC 2543
`(2000)
`ITU-T Recommendation H.225
`ITU-T Recommendation H.245
`ITU-T Recommendation Q.1215
`U.S. Patent No. 5,802,160 to Kugell
`Jonathan Lennox et al. “Implementing Intelligent Network Services
`with the Session Initiation Protocol” Tech-Report No. CUCS-002-
`099
`GSM Technical Specification 03.78 (1997)
`International Publication No.WO 97/23988 to British
`Telecommunications PLC
`U.S. Patent No. 6,463,145 to O’Neal
`U.S. Patent No. 6,445,694 to Swartz
`W. Richard Stevens “The Protocols” (1994)
`U.S. Patent No. 5,206,901 to Harlow
`
`ii
`
`
`
`Exhibit
`Number
`1130
`
`1131
`1132
`1133
`1134
`1135
`1136
`1137
`
`1138
`
`1139
`
`1140
`
`1141
`1142
`1143
`1144
`
`1145
`1146
`1147
`1148
`1149
`1150
`
`1151
`1152
`1153
`1154
`1155
`1156
`
`1157
`
`
`
`
`
`Document
`
`PacketCable™ 1.0 Architecture Framework Technical Report
`“PKTTR-ARCH-V01-001201” (1999)
`U.S. Patent No. 5,434,913 to Tung
`ITU-T Recommendation Q.1211
`3G TS 22.228 V1.0.0 (2000-09)
`ITU-T Recommendation Q.931
`CCITT Recommendation M. 770 (1998)
`Colin Low “Integrating Communication Services”
`H. Lu et al. “Toward the PSTN/Internet Inter-Networking –Pre-
`PINT Implementation” RFC 2458 (1998)
`Press Release “Cisco Systems to Acquire Selsius Systems, Inc. for
`$145 Million” (October 14, 1998)
`Information Sciences Institute “Internet Protocol: Darpa Internet
`Program Protocol Specification” RFC 791 (1981)
`Securities and Exchange Commission Form S-1, Net2Phone, Inc.
`(1999)
`Webpage: Tempest News (1998)
`Selsius-CallManager™ (1998)
`Curriculum Vitae of Dean Willis
`Paul Baran “On Distributed Communications: I. Introduction to
`Distributed Communications Networks” (1964)
`ITU-T Recommendation E.131
`U.S. Patent No. 6,442,169 to Lewis
`U.S. Patent No. 6,333,931 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 (“the ’777 patent”)
`U.S. Patent No. 8,115,298 (“the ’298 patent”)
`Declaration of Thomas F. La Porta in Support of Petition for IPR of
`US Patent 7,764,777
`Declaration of Thomas F. La Porta in Support of Petitioner'
`Opposition to Patent Owner's Contingent Motion to Amend
`
`iii
`
`
`
`
`
`Exhibit
`Number
`1158
`1159
`1160
`1161
`1162
`1163
`
`
`Document
`
`CV of Dr. Thomas F. La Porta
`U.S. Patent 6,574,328
`U.S. Patent 7,324,635
`Excerpts of Deposition Transcript of Dr. La Porta, Feb. 24, 2017,
`for IPR2016-01259, -01261, -01262, and 01263
`Redlined Revised Reply to Patent Owner's Response
`Cisco Systems, Inc.’s Oral Hearing Demonstratives
`
`
`
`iv
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`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner submits this supplemental brief pursuant to the Board’s October
`
`19, 2017 order to address “the issue regarding the unpatentability of the proposed
`
`substitute [Claim 184 of U.S. Pat. No. 8,457,113 (“the ’113 Patent”)]” and
`
`specifically to “address[] original claim limitations not previously addressed by
`
`Petitioner based on the prior art in the record.” Paper 57 (“Aqua Order”), 6.
`
`Preliminary Matters
`
`A.
`In the Board’s March 21, 2017 order (Paper 29, 4-6), the Board held that the
`
`
`
`burden of persuasion on the Motion to Amend (Paper 24) is on the PO to show
`
`patentability of Claim 184. In Aqua Prods., Inc. v. Matal, No. 2015-1177, 2017
`
`WL 4399000 (Fed. Cir. Oct. 4, 2017), the Federal Circuit shifted the burden onto
`
`Petitioner to show unpatentability. Petitioner objects to and reserve its rights to
`
`challenge the Aqua decision, and any reliance on that decision by the Board.
`
`Petitioner objects to the Aqua Order (Paper 57, at 6-7) on the ground that: (1) in
`
`view of the absence of rules issued by the PTO addressing this burden, it is
`
`improper for the Board in the first instance to engage in rulemaking in its Order,
`
`and (2) it violates Petitioner’s due process rights. It is improper and unduly
`
`prejudicial for the Board to issue a rule limiting Petitioner to only 15 pages for this
`
`Supplemental Briefing, especially while prohibiting it from: (1) using expert
`
`testimony, including in support of any Graham analysis, and (2) incorporating by
`
`
`
`1
`
`
`
`
`
`reference arguments from prior briefing. Aqua Order, 5-7. Had it been permitted,
`
`Petitioner would have submitted further evidence and argument demonstrating the
`
`unpatentability of the amended claim, including expert testimony and additional
`
`grounds.
`
`Petitioner’s Supplemental Briefing
`
`B.
`In its Opposition (Paper 30), Petitioner addressed the two features that PO
`
`incorrectly asserted were not found in the prior art.1 Petitioner incorporates its
`
`Opposition herein, and also incorporates its Petition and Reply. Per the Board’s
`
`Aqua Order, this Supplemental Briefing is directed to the remaining limitations:
`
`Proposed Substitute Claim 184 Limitation
`“A method of providing an intelligent interconnection at a
`tandem access controller”
`
`“between a first communication network and a second
`communication network, comprising:”
`
`
`
`Abbreviation
`“intelligent
`interconnection at
`a TAC”
`“intelligent
`interconnection
`between a PSTN
`and packet
`network”
`“PSTN
`telecommunications
`network and
`switches”
`
`“receiving at the tandem access controller a first request to
`establish a first incoming call and call data which is
`associated with the first request to establish the first
`incoming call via a first communication network, wherein
`the first communication network is a PSTN
`communication network comprising a plurality of edge
`switches connected to telephones on one side and PSTN
`tandem switches on the other side, wherein the PSTN
`
`1 Petitioner’s Opposition to the Motion to Amend addressed the TAC limitations as
`
`well as the “call processing” limitations. See Paper 30 at 3.
`
`
`
`2
`
`
`
`
`
`tandem switches includes the particular PSTN tandem
`switch, wherein the PSTN tandem switches are not the
`edge switches, wherein the PSTN tandem switches are not
`directly connected to any of the telephones, wherein the
`tandem access controller is not any of the edge switches,
`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”
`“accessing control criteria by the tandem access controller
`based upon the call data”
`“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”
`II. THE ’113 PATENT’S DESCRIPTION OF THE STATE OF THE
`ART AND THE ALLEGED INVENTION
`
`“enabling
`communications
`between the calls”
`
`“control criteria”
`
`Based on the admissions in the specification and by PO’s expert described
`
`below, Petitioner has annotated Figure 2 to show the state of the art:
`
`Taking the annotated figure one piece at a time, the specification acknowledges
`
`that the alleged invention uses conventional edge switches and tandem switches in
`
`the existing PSTN (shaded in green); conventional SS7 signaling that is
`
`communicated between the switches in the existing PSTN; and conventional
`
`devices (e.g. telephones) for calling and called parties:
`
`
`
`
`
`3
`
`
`
`
`
`Conventional PSTN
`tandem switch 16
`
`Conventional PSTN signaling (SS7) and voice
`
`Conventional PSTN
`tandem switch 16
`
`Well‐known
`central office
`17
`
`Well‐known
`central office
`18
`
`Conventional VoIP
`signaling and voice
`
`Conventional
`Web /
`Internet
`
`Conventional phones (14, at 20),
`computers, VoIP‐capable phone 21
`
`Subscriber 12
`
`Calling party 20
`
`
`The Public Switched Telephone Network (PSTN) consists of a plurality of
`edge switches connected to telephones on one side and to a network of
`tandem switches on the other. The tandem switch network allows
`connectivity between all of the edge switches, and a signaling system is
`used by the PSTN to allow calling and to transmit both calling and called
`party identity. EX1101, 1:49-51, 4:47-54 (emphasis added).
`At the time of the invention, the PSTN utilized the Signaling System 7
`(“SS7”) protocol to set up calls. ‘Setting up’ calls refers to the exchange of
`control signaling that causes the establishment of a path over which voice
`data can flow. EX2022, ¶40; EX2040, ¶39 (emphasis added).
`The specification also acknowledges that it uses the conventional Web (e.g. the
`
`Internet) (shaded in blue); conventional equipment within the Web (e.g. servers);
`
`and conventional devices (e.g. computers, VoIP-capable phones) –in conventional
`
`ways (e.g. using a web portal to enter or change call control information, VoIP):
`
`
`
`4
`
`
`
`
`
`Today, there are web-based companies managing 3rd-party call control, via
`the toll-switch network, which allow users to enter call control information
`through a web portal. EX1101, 1:34-37, 5:13-15; EX1149, 271:8-18.
`PO’s expert also confirmed that the use of a web-enabled processing system to
`
`enter call control information was known:
`
`Q: “[I]t's your testimony that entering . . . call control information for
`telephone features through a web portal was known; is that right?” A: “It
`was disclosed as those things known in the industry.” EX1149, 271:12-18.
`Q: “A web portal would include a web server; correct?” A: “Typically, it
`would, yes.”); EX1149, 272:18-20; EX1148, 54:14-21, 55:6-15, 55:23-25.
`The specification also acknowledges that signaling and voice between
`
`converging networks (e.g. PSTN and the Internet) was done in a conventional
`
`manner—indeed, the only disclosure of communications between convergent
`
`networks is the bi-directional arrow labeled “VoIP” in Figure 2.
`
`Likewise, PO’s expert repeatedly confirmed that making a VoIP call and the
`
`systems that allowed VoIP to PSTN calls were conventional and known:
`
`“Q. Does the patent talk about how to connect a VoIP call to a circuit
`switch call? A. Not specifically in terms of how to do that . . . But once
`again, if a person of skill in the art knows that we're going to take a packet
`call and we're going to convert it into a PSTN or vice-versa, they would
`understand that.” EX1148, 137:6-11 (emphasis added).
`“Q. [N]one of the patents describe how to convert between IP signaling and
`circuit switch signaling, correct? A. Correct.” Id. at 135:14-23.
`
`
`
`5
`
`
`
`
`
`“Q. [T]his conversion protocol, because the patent doesn't describe it, it
`would have to be well-known to a person of ordinary skill in the art; is that
`correct? A. These are all features that have been -- these are all networks
`that have already been known, and one of skill in the art would understand
`it.” Id. at 134:20-135:13 (emphasis added).
`Against that background, the specification describes the “tandem access
`
`controller” (TAC 10 in Figure 2, shaded purple) as the only allegedly new
`
`component in this otherwise conventional architecture. However, the specification
`
`twice acknowledges that the TAC does not include any new hardware, firmware,
`
`or software, and that its software/firmware is programmed conventionally:
`
`The TAC 10 may use any combination of hardware, firmware, or software
`and, in one embodiment, is a conventional computer programmed to carry
`out the functions described herein. (EX1101, 4:39-42.)
`The TAC 10 may be implemented using conventional processor hardware. .
`. Devising the software/firmware used to control the TAC 10 is well within
`the capability of those skilled in the art since the various control features
`that can be made available are generally already known. (Id., 6:48-55.)
`Moreover, the programming was so well known that the TAC is described as
`
`implementing well-known call processing using known software techniques:
`
`Examples of features that can be selected by the subscriber include:
`conditional call blocking, call forwarding, call altering, time of day
`conditions, day of week conditions, follow-me, caller recognition/
`password, caller ID, call screening/retrieval from voice mail, speed dialing,
`interactive voice response, and speech recognition. Any other feature could
`
`
`
`6
`
`
`
`
`
`be added. These features can be implemented in the TAC 10 using known
`software techniques since such features are known. (Id., 5:26-32.)
`Indeed, according to PO’s expert, the invention of the ’113 Patent is not the
`
`TAC’s hardware or software or programming, but the idea of controlling
`
`conventional call processing from a more centralized network location than the
`
`Class 5 switch serving the subscriber:
`
`Handling calls at the tandem level maintains the quality of the call, as it is
`processed within the PSTN, where the signal may be in digital form and/or
`carried over high-quality lines (as opposed to the end lines that carry a call
`from a CO to a phone. (EX2040, ¶44; see also EX1148, 18:21-19:24.)
`But the hardware, software, programming, and architecture necessary for
`
`implementing this control was known. Indeed, PO’s expert acknowledged during
`
`his deposition that “the network as it existed” “prior to May 4, 2000” included a
`
`“connecting node between an IP carrier [network] and the PSTN . . . at a higher
`
`switch level, like a tandem switch” and that this “higher level switch, like a tandem
`
`switch” would communicate with “PCM” or “TDM” on “the PSTN side.”
`
`EX1148, 155:13-158:11; 250:23- 251:17. Similarly, during his deposition,
`
`Petitioner’s expert confirmed that converging IP and PSTN telephone networks
`
`typically connected at tandem (Class 4) switches and not edge (Class 5) switches.
`
`EX1161, 350:4-24; EX1148, 202:3-11, 211:21-212:3.
`
`We will refer to the foregoing as Applicant’s Admitted Prior Art (“AAPA”).
`
`III. CHALLENGES
`
`AND
`
`STATUTORY
`7
`
`GROUNDS
`
`FOR
`
`
`
`
`
`
`
`CHALLENGES
`
`Ground
`1
`2
`
`Basis for Challenge
`Obvious under §103(a) by Lewis in view of AAPA
`Obvious under §103(a) by LaPier in view of AAPA
`A. Motivation to Combine Lewis or LaPier and AAPA.
`Like proposed Claim 184, Lewis and LaPier are directed to telephony across
`
`converging VoIP and PSTN networks. EX1146, FIGS. 1, 4, 5, 9A, 10A, 12:50-56,
`
`14:65-15:1, 25:9-10, 25:35-44, 26:4-14; EX1147, FIGS. 1B-1C, 7A, 4:58-5:4,
`
`8:61-9:7, 35:13-16, 35:54-62; EX1157, ¶¶67-69, 84-86. Lewis and LaPier show
`
`that it was well known to control call processing in a more centralized network
`
`location than the Class 5 switch serving the subscriber. EX1147, 2:25-31, FIG.
`
`1B; EX1146, FIGS. 4-5, 19:24-28; cf. EX2040, ¶44. Lewis and LaPier also
`
`demonstrate that 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 an end office switch. EX1146, FIGS. 4, 5, 15:7-23,
`
`19:24-28, 19:54-61; EX1147, 1B, 1C, 6:55-62.
`
`Lewis and LaPier were filed by two of the major players in converging IP and
`
`PSTN networks in the late 1990s (Level 3 and Cisco Systems). EX1157, ¶65, n.4.
`
`Both PO’s and Petitioner’s expert testified in their depositions that converging IP
`
`carrier and PSTN networks typically connected at tandem (Class 4) switches and
`
`not at edge (Class 5) switches. See §II infra. Furthermore, a POSA understood the
`
`advantages of connecting a controller to a tandem switch in the AAPA as taught in
`
`
`
`8
`
`
`
`
`
`LaPier and Lewis, including that doing so: (i) allows efficient control of the
`
`routing of calls using standard switching protocols and equipment, and (ii) reduces
`
`switching traffic of the PSTN. EX1102, ¶¶181, 185-186, 290.
`
`B. Challenge 2: Lewis in View of AAPA
`1.
`Claim 184: “intelligent interconnection at a TAC” and “control
`criteria”
`
`Lewis discloses this limitation. Lewis discloses a TAC (open architecture
`
`switch 502 within open architecture platform 402 including gateway 508, tandem
`
`Network Access Server (NAS) Bays 504 and modem NAS bays 514) that performs
`
`the steps of the method recited in proposed Claim 184. EX1146, FIGS. 4, 5, 9A,
`
`10A, 12:50-56, 14:65-15:1, 19:24-28, 19:54-61, 25:35-39, 26:4-14, 27:3-5, 27:50-
`
`52, 27:59-62, 28:26-30, 29:1-11, 29:44-41, 30:13-19, 30:24-43; EX1157, ¶¶68-81.
`
`Like the TAC of the ’113 Patent, Lewis describes that the TAC implements well-
`
`known call processing for various call “class functions”, and stores and accesses
`
`call control information for subscribers (e.g. called parties) from a database 516
`
`(716), showing an intelligent interconnection. §II infra; EX1146, FIGS. 5, 7, 9A-
`
`9B, 11, 13, 20:64-21:2 (“GW 508 comprises SS7 gateway (SS7 GW) 512, control
`
`server 510, and database 516 communicating with control server 510.”), 22:36-42,
`
`22:50-57 (“OAP database 716 contains the destination of the call, any class
`
`functions associated with the call, the type of routing algorithm that should be
`
`used.”), 22:64-23:9. As such, Lewis describes accessing control criteria by the
`
`
`
`9
`
`
`
`
`
`TAC 502 based upon call data. §II infra; EX1146, FIGS. 5, 7, 9A-9B, 11, 13, 6:8-
`
`14; 20:64-21:2, 22:36-42, 22:50-57. For example, Lewis’ control servers process
`
`calls and “determine appropriate tasks” based upon the call data. Id. It would have
`
`been obvious to a POSA to allow Lewis’s subscribers to enter or change call
`
`control information for storage in Lewis’s database 516 (716) in Lewis’s TAC 502,
`
`and by coupling the Web servers communicating with Lewis’s Web interface to
`
`the TAC, because, as the ’113 Patent and PO’s expert acknowledge, doing so is the
`
`conventional approach, widely supported by conventional web portals and web
`
`browsers. §II infra; EX1102, ¶¶55-59. Doing so was also well understood to
`
`achieve various predictable benefits. Id.
`
`2.
`
`Claim 184: “intelligent interconnection between a PSTN and
`packet network”
`
`Lewis discloses this limitation. Lewis discloses the PSTN including edge
`
`switches EO 104 and tandem access switches AT 106 connected to a packet
`
`network (e.g. IP network) 408 with the TAC 502 serving as an intelligent
`
`interconnection (see also §III.B.1) between the two converging networks and
`
`coupled to the particular tandem switch AT 106. EX1146, FIGS. 4, 5, 9A, 12:47-
`
`49, 12:50-56, 14:65-15:1, 15:6-10, 15:13-16, 15:21-23, 15:44-47, 19:54-67, 25:9-
`
`10, 25:35-44, 26:4-14; EX1157, ¶70. It was well known, as acknowledged by the
`
`’113 Patent and PO’s expert, that the conventional PSTN, like described in Lewis
`
`
`
`10
`
`
`
`
`
`included a network of PSTN tandem switches, including the particular tandem
`
`switch AT 106. Id., §II infra; EX1157, ¶¶71, 75; EX1149, 298:3-13; 299:12-17.
`
`3.
`Claim 184: “PSTN telecommunications network and switches”2
`Lewis discloses this limitation. It was well known, as acknowledged by the
`
`’113 Patent and PO’s expert, that the conventional PSTN like described in Lewis
`
`includes edge switches EO 104 connected to telephones 110 on one side and
`
`tandem switches AT 106, which are not directly connected to telephones 110, on
`
`the other side, wherein the tandem switches AT 106 are not the edge switches EO
`
`104, wherein the edge switches route calls from and to subscribers within a local
`
`geographic area and the tandem switches route calls to the edge switches or the
`
`PSTN tandem switches local or in other geographic areas. EX1146, FIGS. 4, 5,
`
`9A, 15:7-23; §II infra; EX2041, p. 5-6; EX1157, ¶¶70-71.
`
`Claim 184: “enabling communications between the calls”
`
`4.
`Lewis discloses this limitation. Lewis discloses a TAC that performs the
`
`steps of the method recited in proposed Claim 184. §III.1.C.1 supra. Lewis
`
`discloses that this method performed by the TAC enables communication between
`
`a first call and a second call when the second call is answered (which had not yet
`
`been answered (see §II infra)). EX1157, ¶¶69, 72, 75, 79. Lewis describes a VoIP
`
`call as voice traffic over a data network or data connection. EX1146, FIGS. 5, 9A,
`
`
`2 Remaining limitations may be found at least at Paper 30 (Opposition) at 16-19.
`
`
`
`11
`
`
`
`
`
`12:50-56, 14:65-15:1 (“Calling party 102 and called party 110 can be ordinary
`
`telephone equipment...or applications running on a host computer.”); 25:23-26,
`
`25:35-39, 26:4-14 (“NAS bay 942 can...provide[] both the tandem functions of
`
`tandem NAS bay 504, and the modem functions of modem NAS bay
`
`514…[C]alling party 914, via its host computer, has the additional feature of
`
`providing voice over IP (VoIP) service over communications link 944.”); EX1157,
`
`¶77.
`
`In one embodiment, using an architecture that is virtually identical to the
`
`’113 Patent, Lewis teaches the TAC receives call requests in the form of SS7
`
`signaling, and voice, from tandem switch AT 106 and converts the voice and SS7
`
`signaling to formats suitable for use on the packet network 408 to ensure that
`
`PSTN to VoIP calls are routed properly to the called party as a VoIP called party
`
`when the second call is answered. Id., see also EX1146, Figures 4, 10A, 25:9-10,
`
`27:3-5, 27:50-52, 27:59-62, 28:26-30, 29:1-11, 29:44-51, 29:66-30:9, 30:13-19;
`
`EX1157, ¶¶69, 72.
`
`C. Challenge 1: LaPier in View of the AAPA
`1.
`Claim 184: “intelligent interconnection at a TAC” and “control
`criteria”
`
`LaPier discloses this limitation. LaPier discloses a TAC (Network Access
`
`Server (NAS) 118 and Signaling Access Server (SAS) 112) that performs the steps
`
`of the method recited in proposed Claim 184. EX1147, FIGS. 1B, 7A, 4:58-5:4,
`
`
`
`12
`
`
`
`
`
`8:61-9:7, 35:54-62, 38:1-4, 35:13-22, 35:26-40; EX1157, ¶¶86-100. Like the TAC
`
`of the ’113 Patent, LaPier describes that the TAC implements well-known call
`
`processing for various call features, and stores and accesses call control
`
`information from a database. EX1147, 16:1-16 (“The computer system used to
`
`implement the [SAS] 112 may also execute one or more other intelligent network
`
`applications. In this configuration, one or more separate applications execute on
`
`the SAS host . . . For example, a separate application may carry out intelligent
`
`routing to the appropriate [NAS] based on the type of service that is required. This
`
`type of application could improve utilization of [NAS] resources by re-directing
`
`calls to the [NAS] that is best able to supply the required service.”), 16:17-32,
`
`16:44-51, 35:13-16, 36:54-64 (“[SAS] 112 can store access control lists of network
`
`addresses. The access control lists may be used to block messages that contain
`
`calling numbers identified in the lists . . . [SAS] 112 can store access control lists
`
`of destination point codes . . . [that] may be used to block call processing messages
`
`that are directed to one of the point codes identified in the lists.”)
`
`As shown above LaPier further describes accessing control criteria by the
`
`TAC. Id. at 16:1-32, 36:54-65. Thus, LaPier describes providing an intelligent
`
`interconnection at a tandem access controller and accessing control criteria. It
`
`would have been obvious to a POSA to allow users to enter or change call control
`
`information for access by LaPier’s TAC, and via LaPier’s web interface to the
`
`
`
`13
`
`
`
`
`
`TAC, because, as the ’113 Patent and PO’s expert acknowledge, doing so is the
`
`conventional approach, widely supported by conventional web portals and web
`
`browsers. §II infra; EX1102, ¶¶55-59. Doing so was also well understood to
`
`achieve the readily apparent and predictable benefits of improving the system’s
`
`function by providing an easy-to-use interface for users with 24-hour access to the
`
`TAC from anywhere in the world using standard computer software. Id.
`
`2.
`
`Claim 184: “intelligent interconnection between a PSTN and
`packet network”
`
`LaPier discloses this limitation. LaPier discloses the PSTN including edge
`
`switches 116 and tandem access switches 114 connected to a packet network 122
`
`with the TAC serving as an intelligent interconnection (see also §III.C.1) between
`
`the two converging networks and coupled to the particular tandem switch 114.
`
`EX1147, FIGS. 1B-1C, 4:58-5:4, 5:28-35, 6:60-62, 8:61-9:7, 35:13-16, 35:54-62;
`
`EX1157, ¶¶86-88. It was well known, as acknowledged by the ’113 Patent and
`
`PO’s expert that the conventional PSTN described in LaPier included a network of
`
`PSTN tandem switches. Id., §II infra; EX1157 ¶89; EX1149 298:3-13; 299:12-17.
`
`Claim 184: “PSTN telecommunications network and switches”3
`3.
`LaPier discloses this limitation. It was well known, as acknowledged by the
`
`’113 Patent and PO’s expert, that the conventional PSTN described in LaPier
`
`
`3 Remaining limitations may be found at least at Paper 30 (Opposition) at 21-23.
`
`
`
`14
`
`
`
`
`
`includes edge switches 116 connected to telephones 105 on one side and tandem
`
`switches 114, which are not directly connected to telephones 105, on the other
`
`side, wherein the tandem switches 114 are not the edge switches 116, wherein the
`
`edge switches route calls from and to subscribers within a local geographic area
`
`and the tandem switches route calls to the edge switches or the tandem switches
`
`local or in other geographic areas. EX1147, Figures 1B-1C, 5:28-35, 6:60-62, 7:1-
`
`3; §II infra; EX2041, p. 5-6; EX1157, ¶¶88-89.
`
`Claim 184: “enabling communications between the calls”
`
`4.
`LaPier discloses this limitation. LaPier discloses that the TAC enables
`
`communication between the first call and the second call when the second call is
`
`answered. EX1157, ¶¶86-87, 90. The SAS 112 of the TAC in LaPier receives call
`
`requests in the form of SS7 signaling, NAS 118 of the TAC receives voice from
`
`tandem switch 106, and the TAC converts the voice and SS7 signaling to formats
`
`suitable for use on the packet network 122 to ensure that voice calls are routed
`
`properly. Id., ¶¶86-87, 90; EX1147, FIGS. 1B-1C, 4:58-5:4, 5:8-16, 5:28-43, 6:4-
`
`9, 6:49-54, 6:60-62, 8:61-9:7, 9:18-22, 9:26-29, 35:13-16, 35:54-62, 38:13-40,
`
`38:51-62. The TAC in LaPier interconnects the voice calls between the PSTN and
`
`the packet-switched network 122 when the second call is answered (which had not
`
`yet been answered (see §II infra)). EX1147, 5:8-16, 5:28-35, 6:10-27, 6:55-62,
`
`8:61-9:7, 38:26-40, 38:51-62; EX1157, ¶87.
`
`
`
`15
`
`
`
`
`
`
`
`Dated: October 31, 2017
`
`BAKER BOTTS L.L.P.
`ATTN: Wayne O. Stacy
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Tel: (415) 291-6206
`Fax: (415) 291-6306
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/Wayne O. Stacy/
`Wayne Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`
`
`
`16
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6(e)
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on the 31st
`
`day of October 2017, a complete and entire copy of this Supplemental Brief to
`
`Petitioner’s Opposition to Patent Owner’s Motion to Amend and all supporting
`
`exhibits not already of record in this proceeding were provided via the Patent Trial
`
`and Appeal Board End to End (PTAB E2E) System as well as delivering a copy
`
`via email on the following counsel for Patent Owner at:
`
`
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`Victor Siber
`vsiber@siberlaw.com
`
`Hanna Madbak
`hmadbak@siberlaw.com
`
`
`
`
`Dated October 31, 2017
`
`LEAD COUNSEL FOR PETITIONER
`
`
`By: /Wayne O. Stacy/
`Wayne Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`
`
`1
`
`
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