throbber
Paper 13
`Trials@uspto.gov
`571-272-7822 Entered: January 3, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01258
`Patent 7,764,777 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`YMax Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and 45 of U.S. Patent
`
`

`

`IPR2016-01258
`Patent 7,764,777 B2
`
`No. 7,764,777 B2 (Ex. 1001, “the ’777 patent”). Paper 1 (“Pet.”). Focal IP,
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). Petitioner filed a Reply. Paper 11 (“Reply”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Upon consideration of the Petition and Preliminary Response, we conclude
`the information presented shows there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claims 18, 21,
`23, 25, 26, 28–31, 37, 38, 41, and 45 of the ’777 patent.
`
`A. Related Matters
`The parties state that the ’777 patent is the subject of pending lawsuits
`in the Middle District of Florida, and these lawsuits include assertions
`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
`Pet. 1–2; Paper 4 (Patent Owner’s Mandatory Notices), 2–3. Another
`petitioner filed a petition also challenging claims of the ’777 patent (i.e.,
`IPR2016-01262). Paper 4, 3.
`
`B. The ’777 Patent
`The ʼ777 patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1001, 1:18–21. Figure 1 of the ’777
`patent is reproduced below.
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`
`
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional Public Service Telephone Network (PSTN) tandem switch
`16. Id. at 4:40, 41. According to the ’777 patent, “[d]etails of the operation
`of the existing phone network,” including directing of phone calls by
`“existing” PSTN tandem switch 16 to central offices 17, 18 are further
`described in a publication incorporated by reference, as well as “numerous
`books describing the PSTN.” Id. at 4:40–51.
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional 3rd-party features are applied to the call.” Id. at 4:40–44.
`More specifically, in the network illustrated in Figure 1, a call from calling
`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
`which places a second call, subject to 3rd party control information to
`subscriber 12. Id. at 4:52–55. The second call is placed “to the subscriber’s
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`‘private’ phone number,” without terminating the first call. Id. at 4:55–57.
`When subscriber 12 answers the call, tandem access controller 10 connects
`the first call to the second call so as to connect calling party 20 to subscriber
`12. Id. at 4:59–62.
`Figure 1 also shows web server 23 within World Wide Web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies 3rd-party call control features via web server 23 and these features
`are then relayed via World Wide Web 22 to tandem access controller 10. Id.
`at 5:13–21.
`
`C. Illustrative Claim
`Petitioner challenges claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and
`45 of the ’777 patent. Claims 18, 37, and 45 are independent claims.
`Claims 21, 23, 25, 26, and 28–31 depend directly from claim 18. Claims 38
`and 41 depend directly from claim 37. Independent claim 18, reproduced
`below, is illustrative of the claimed subject matter:
`18. A method for processing an incoming call from a
`switching facility on a communication network that comprises
`edge switches for routing calls to subscribers within a local
`geographic area and switching facilities for routing calls to edge
`switches, or other switching facilities local or in other geographic
`areas the method comprising the steps of:
`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with the
`switching facility;
`identifying one or more control criteria previously
`associated with the specified recipient, wherein the one or more
`control criteria was entered via a web-based interface;
`initiating a second call at the controlling device in
`accordance with the control criteria associated with the specified
`recipient; and
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` connecting the first and second calls at the controlling
`device after the second call is received by a communication
`device associated with the specified recipient.
`
`Id. at 15:12–30.
`
`Independent claim 37 is similar to claim 18, except that when the call
`is forwarded, the claim requires using a “packet-based connection.”
`Independent claim 45 is similar to claim 18, except that instead of initiating
`a second call to a specified recipient, the original first call is routed to a
`"voicemail server."
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and
`45 are unpatentable based on the following grounds (Pet. 4):
`Reference(s)
`Basis
`Challenged Claim(s)
`18, 23, 25, 26, 29–31, 37, 38,
`41, and 45
`21, 25, 28, and 37
`18, 26, 29, 30, 31, and 45
`18, 37, and 45
`
`O’Neal1
`O’Neal
`Schwab2
`O’Neal and Schwab
`
`§ 102(e)
`§ 103(a)
`§ 102(e)
`§ 103(a)
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`
`1 U.S. Patent No. 6,463,145 B1, issued Oct. 8, 2002 (Ex. 1003) (“O’Neal”).
`2 U.S. Patent No. 6,381,323 B1, issued Apr. 30, 2002 (Ex. 1005)
`(“Schwab”).
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`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`1. “switching facility”
`
`Each of the independent claims 18, 37, and 45 recites “switching
`facility.” Petitioner contends that the broadest reasonable interpretation of
`“switching facility” is “any switch in the communication network.” Pet. 20
`(citing Ex. 10023 ¶¶ 59–64). Patent Owner contends that “switching
`facility” (1) is a switch for routing calls to edge switches or other “switching
`facilities” local or in other geographic areas; and (2) is not an edge switch or
`edge device. Prelim. Resp. 34, 40 (citing Ex. 20014 ¶¶ 69, 81).
`We begin with the plain language of the claims. Claim 18 is
`representative. The preamble of that claim recites “processing an incoming
`call from a switching facility on a communication network that comprises
`edge switches for routing calls to subscribers within a local geographic area
`and switching facilities for routing calls to edge switches, or other switching
`facilities local or in other geographic areas.” Both parties agree that the
`preamble is limiting. See, e.g., Pet. 24; Prelim. Resp. 34. On this record, we
`determine that the preamble is limiting. The preamble recites not only a
`“switching facility” but two other “switching facilities.” There is nothing in
`claim 18 itself that indicates that the switching facility, the switching
`
`
`3 Ex. 1002 is a Declaration of Dr. Tal Lavian.
`4 Ex. 2001 is a Declaration of Regis J. “Bud” Bates.
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`facilities for routing calls to edge switches, or the “other” switching facilities
`local are the same switching facility or make up the same structural
`components. Thus, we disagree with Patent Owner that the language of the
`claim itself dictates that the plain meaning of every “switching facility”
`recited in the claim be treated the same to mean a switch for routing calls to
`edge switches or other “switching facilities” local or in other geographic
`areas; and (2) is not an edge switch or edge device.
`We next turn to the Specification of the ’777 patent itself to discern
`the meaning of “switching facility.” As pointed out by both parties, the term
`“switching facility” is not found anywhere in the Specification of the ’777
`patent. The term was added during prosecution. Accordingly, there is not
`much, if anything intrinsically in the Specification of the ’777 patent that
`explicitly defines or informs a person of ordinary skill in the art at the time
`of the invention the meaning of “switching facility.”
`Petitioner argues, with supporting evidence, that a person having
`ordinary skill in the art at the time of the invention would have understood
`all switches in a telecommunications network, like the PSTN, are a
`“switching facility,” which would include edge switches. Pet. 20 (citing
`Ex. 1008, S-355; Ex. 1009, 757 (defining “switching centers” to refer to all
`five classes of switches in the PSTN). Petitioner argues that although the
`Specification of the ’777 patent shows a Tandem Access Controller directly
`connected to a tandem switch (class 4) and not to the CO (central office, the
`location of a class 5 switch), such figures and description are representative
`of a preferred embodiment, and that nowhere in the Specification did the
`
`
`5 Petitioner cites to C-8, which we understand to be a typographical error.
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`inventors provide a definition of “switching facility” that is narrower than
`the ordinary meaning. Pet. 21.
`Patent Owner counters that the prosecution history makes clear that
`switching facility cannot include an edge switch. Prelim. Resp. 35–36. The
`remarks made during prosecution, however, are equivocal, and do not
`persuade us of a disavowal or disclaimer of the scope of the term “switching
`facility” to exclude an edge switch. For example, the portion of the
`prosecution history that Patent Owner cites includes a footnote for defining a
`“switching facility” as:
`Any point in the switching fabric of converging networks, also
`referred to in industry as a signal transfer point (STP), signal
`control point (SCP), session border controller (SBC), gateway,
`access tandem, class 4 switch, wire center, toll office, toll
`center, PSTN switching center, intercarrier connection point,
`trunk gateway, hybrid switch, etc.
`
`Ex. 2005, 82 n.1.
`The above description does not explain that a switching facility does
`not include an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad. We have considered all of the
`arguments and evidence regarding the term “switching facility,” and at this
`juncture of the proceeding determine that the broadest reasonable
`interpretation of the term is any switch in the communication network.
`
`2. “in communication with”/“coupled to”
`
`Each of the independent claims 18, 37, and 45 recites “controlling
`device in communication with the switching facility.” Claim 30, which
`depends from claim 29, which in turn depends from claim 18, recites “the
`tandem access controller . . . coupled to . . . the switching facilities.” The
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`parties analyze the “in communication with” and “coupled to” terms
`together. Pet. 25–27; Prelim. Resp. 40–42. Petitioner argues that the
`broadest reasonable interpretation of “coupled to” means “connected directly
`or indirectly,” and “in communication with” means “in direct or indirect
`communication.” Although Patent Owner does not dispute that the plain and
`ordinary meaning of the term “in communication with” or “coupled to” does
`not require a direct connection between the controlling device (tandem
`access controller) and the switching facility, Patent Owner argues that the
`terms should be interpreted to mean direct communication and direct
`connection, respectively. Prelim. Resp. 40–42. In Patent Owner’s view, the
`configuration of an indirect connection or communication of these elements
`was allegedly disclaimed by Applicants. Id.
`However, the portion of the prosecution history cited by Patent Owner
`for support (Ex. 2005, 66) is, at most, ambiguous. The Amendment that
`added the limitation “coupled to a switching facility for routing calls to edge
`switches or other switching facilities in local or other geographic areas” is
`silent as to whether “coupled to” requires a direct connection between the
`elements. Id.
`Patent Owner also contends that the controlling device cannot be
`coupled to a switching facility through an edge switch because this
`construction reflects Applicants’ disclaimer of controllers that applied call
`control features through an edge switch. As discussed above, we are not
`persuaded by Patent Owner’s disclaimer arguments that the term “switching
`facility” excludes an edge switch.
`Based on the record before us at this juncture of the proceeding, we
`determine that the broadest reasonable interpretation of “coupled to” and “in
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`communication with” includes direct or indirect coupling and
`communication.
`At this juncture of the proceeding, we determine that it is not
`necessary to provide an express interpretation of any other term of the
`claims.
`
`B. Claims 18, 23, 25, 26, 29–31, 37, 38, 41, and 45 - Anticipated by O’Neal
`
`Petitioner contends claims 18, 23, 25, 26, 29–31, 37, 38, 41, and 45
`are unpatentable under 35 U.S.C. § 102(e) as anticipated by O’Neal.
`Pet. 35–53. Relying on the testimony of Dr. Tal Lavian, Petitioner explains
`how O’Neal describes all of the claim limitations. Id. (citing Ex. 1002).
`
`1. O’Neal
`O’Neal describes communication services available via a data-centric
`network and a telephony-centric network. Ex. 1003, 1:48–50. A subscriber
`of various communication services reviews and customizes communication
`options, in an interactive and simplified manner, via either the data-centric
`network or the telephony-centric network. Id. at 1:52–57.
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`Figure 1 of O’Neal is reproduced below.
`
`
`
`As illustrated in Figure 1 of O’Neal, unified messaging system 101 is
`connected to a public telephone network 129, such as PSTN through
`telephone link 128. Id. at 9:9–30, Fig. 1. Unified messaging system 101
`includes telephony server 126 that receives calls made to a subscriber and
`reroutes the call in accordance with a subscriber's communication option
`setting by forwarding the call to the subscriber via an alternate number. Id.
`at 9:55–58, 11:40–51, 15:14–43.
`The subscriber may use user computer 100 to access the unified
`messaging system through a website over a data-centric network 102 such as
`the Internet. Id. at 16:35–17:10, 5:41–60, Fig. 1. Website access allows the
`subscriber to review and/or modify their communication options. Id. at
`16:36–64, 7:45–8:22, Fig. 1. For example, with regard to call forwarding,
`the subscriber is “able to check whether it is enabled, verify the forwarding
`number, select a number from a preprogrammed list, add a new number to a
`preprogrammed list, or enter a temporary number.” Id. at 5:62–6:9. When a
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`caller calls the subscriber, the call is routed over public telephone network
`129 and received by the telephony server of the unified messaging system.
`Id. at 8:41–62, 9:20–30, 15:14–43, 17:11–49, Fig. 1. The telephony server
`then uses the subscriber’s communication option settings to “decide how to
`handle the message.” Id. at 8:41–9:9. If the subscriber has enabled “call
`forwarding,” the “telephony server receives the forwarding number from the
`database server and initiates an outgoing call (step 706) to the forwarding
`number on another port (e.g., one of the outgoing lines as seen in FIG. 2).”
`If “the call is accepted” by the subscriber, the telephony server completes the
`call by “connect[ing] the port of the incoming call with the port of the
`outgoing call.” Id. at 17:11–49, 11:40–51, Figs. 1, 3–4, and 7. In this
`manner, the telephony server may route the call back through the public
`telephone network to the subscriber “in accordance with a subscriber's
`communication option setting.” Id. at 8:41–62, 9:20–30, 9:55–58, 11:40–51,
`15:14–43, 17:11–49, Fig. 1.
`O’Neal further discloses that the subscriber could be using a computer
`“enable[d] [with] digital/Internet telephony.” Id. at 19:1–8. The telephony
`server can re-route the call to the subscriber through the Internet “in
`accordance with a subscriber's communication option setting.” Id. at 9:55–
`58, 18:19–23, 19:1–8, Fig. 1.
`
`2. Discussion
`Petitioner asserts that O’Neal describes all of the elements of
`independent claims 18, 37, and 45. Pet. 35–43, 48–50, 51–53. We begin
`our analysis with claim 18. The preamble of claim 18 recites “processing an
`incoming call from a switching facility on a communication network that
`comprises edge switches for routing calls to subscribers within a local
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`geographic area and switching facilities for routing calls to edge switches, or
`other switching facilities local or in other geographic areas.” Ex. 1001,
`15:12–17.
`Petitioner contends that O'Neal’s unified messaging system processes
`calls made to subscribers of the unified messaging system’s service,
`“rerout[ing]” the call “in accordance with a subscriber's communication
`option setting”, such as by “forwarding” the call to the subscriber via an
`“alternate number.” Pet. 35–36 (citing Ex. 1003, Fig. 1, 9:55–58, 11:40–51,
`15:14–43). Petitioner further contends that the incoming calls come from
`the “Public Telephone Network,” i.e., the “Public Service Telephone
`Network (PSTN).” Id. at 36 (citing Ex. 1004, 9:10–19, Fig. 1). Petitioner
`asserts that it is inherent that incoming calls come from a switch of the
`public telephone network. Id. (citing Ex. 1007 at 94; Ex. 1002 ¶ 83).
`Petitioner contends that connections with the public telephone
`network over which telephone calls leave the network are connections with
`one of the network’s switches. Petitioner asserts, with supporting evidence,
`that one of ordinary skill in the art would have understood that the
`connection between the unified messaging system and the public telephone
`network illustrated by arrows 128 in Figure 1 is a connection with a switch
`of the network. Id. at 36 (citing Ex. 1002 ¶ 83). Based on Petitioner’s
`proposed interpretation of the preamble, Petitioner argues that because the
`PSTN is a “communication network that comprises edge switches for
`routing calls to subscribers within a local geographic area and switching
`facilities for routing calls to edge switches, or other switching facilities local
`or in other geographic areas,” O’Neal discloses all elements of the
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`preamble’s communication network. Id. at 36–37 (citing Ex. 1003, 8:41–62,
`9:20–30, 15:14–43, Fig. 1; Ex. 1002 ¶ 84).
`Claim 18 recites “receiving a first call, which is intended for a
`specified recipient, at a controlling device in communication with the
`switching facility.” Petitioner contends that O’Neal’s unified messaging
`system is a controlling device in communication with (through 128) a
`switching facility of the communications network 129 (the Public Telephone
`Network). Id. at 37 (citing Ex. 1003 Fig. 1, 9:26–30). Petitioner asserts that
`because the PSTN is disclosed as an example of network 129 (Ex. 1003,
`9:10–19), and because communications with the PSTN are more specifically
`made with one of the PSTN’s switches, one of ordinary skill in the art would
`have understood O’Neal to disclose that the telephone signals are
`transmitted between unified messaging system 101 and a switching facility
`of the telephony-centric network 129. Id. at 37–38 (citing Ex. 1002, ¶¶ 85–
`86).
`
`Petitioner alternatively contends that even if the phrase “switching
`facility” were to be interpreted so as to exclude edge switches and/or to be
`only tandem switches, O’Neal still discloses at least indirect communication
`between the unified messaging system and a tandem switch of the PSTN.
`Based on record evidence, Petitioner contends that when the unified
`messaging system’s telephony server initiates an outgoing call to a
`forwarded number on the PSTN, it is in at least indirect communication with
`one or more tandem switches as the call and related signaling is transmitted
`from the telephony server “via an outgoing telephone line” through the
`switches of the PSTN. Id. at 38 (citing Ex. 1003, 11:26–50, Fig. 7 items 706
`and 708, 17:29–34; Ex. 1002 ¶ 87; Ex. 1007, 94).
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`Claim 18 further recites “identifying one or more control criteria
`previously associated with the specified recipient, wherein the one or more
`control criteria was entered via a web-based interface.” Petitioner relies on
`O'Neal’s subscriber communication options such as call forwarding, follow
`me service, or alternate number service stored by the unified messaging
`system in a subscriber communication profile database as meeting the
`control criteria element of claim 18. Id. at 38–39 (citing Ex. 1003, 7:45–65,
`2:44–64, 11:13–12:65, Figs. 3–4). Petitioner further contends that the
`communication options are “previously associated” as claimed because they
`are used to route subsequent calls. Id. at 39 (citing Ex. 1003, 7:57–65).
`Petitioner relies on O’Neal’s description that a subscriber “review[s] and/or
`modif[ies] [their] communication options” using a website provided by web
`server 122 of the unified messaging system as meeting the entered with a
`web base server limitation of claim 18. Id. (citing Ex. 1003, 16:36–64,
`7:45–8:22, Fig. 1). Petitioner further contends that the communication
`options are identified by the unified messaging system when a call is
`received. Id. (citing Ex. 1003, 8:41–9:9, 13:10–15).
`Claim 18 recites “initiating a second call at the controlling device in
`accordance with the control criteria associated with the specified recipient.”
`Petitioner asserts that O’Neal discloses that the communication option
`settings (control criteria) for a subscriber may indicate that the “call
`forwarding” option is enabled, and that calls to the subscriber should be
`forwarded to a particular number, such as “1234567890.” Id. at 42 (citing
`Ex. 1003, Fig. 3). Petitioner directs attention to O’Neal’s description that
`“the telephony server receives the forwarding number from the database
`server and initiates an outgoing call (step 706) to the forwarding number on
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`another port (e.g., one of the outgoing lines as seen in FIG. 2).” Id. at 42
`(citing Ex. 1003, 17:11–49, 11:40–51, Figs. 1, 3, 4, and 7). Petitioner argues
`that the initiation of the outgoing call discloses “initiating a second call at
`the controlling device in accordance with the control criteria associated with
`the specified recipient.” Id. at 42 (citing Ex. 1002, ¶ 94).
`Claim 18 further recites “connecting the first and second calls at the
`controlling device after the second call is received by a communication
`device associated with the specified recipient.” Petitioner contends that
`O’Neal’s description of connecting the outgoing call to telephony server,
`which connects to the port of the incoming call to complete the end-to-end
`connection (step 712), meets the above limitation. Id. at 42–43 (citing Ex.
`1003, 17:29–42; Ex. 1002 ¶ 95).
`Independent claims 37 and 45 are similar to claim 18. Petitioner has
`made a showing with respect to claims 37 and 45 similar to its showing with
`respect to claim 18. See, e.g., Pet. 48–50, 51–53. To the extent that claims
`37 and 45 are different from claim 18, Petitioner has accounted for such
`differences. We also have reviewed Petitioner’s showing with respect to
`dependent claims 23, 25, 26, 29–31, 38, and 41.
` Patent Owner’s arguments are premised on its proposed narrow
`interpretation of “switching facility” and “in communication with.” Prelim.
`Resp. 53–56. At this juncture of the proceeding, and for reasons provided
`above, we have not adopted Patent Owner’s proposed interpretations.
`Accordingly, we are not persuaded by Patent Owner’s arguments.
`Based on the current record before us, we determine that there is a
`reasonable likelihood that Petitioner would prevail in establishing that
`claims 18, 23, 25, 26, 29–31, 37, 38, 41, and 45 are anticipated by O’Neal.
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`C. Asserted Obviousness over O’Neal
`
`Petitioner contends claims 21 and 28 are unpatentable under
`35 U.S.C. § 103(a) as obvious over O’Neal. Pet. 53–59. Relying on the
`testimony of Dr. Tal Lavian, Petitioner explains how O’Neal allegedly
`teaches or suggests all of the claim limitations. Id. (citing Ex. 1002).
`At this juncture of the proceeding, Petitioner has accounted
`sufficiently for the limitations of claims 21 and 28. For example, claim 21
`depends directly from claim 18 and recites “wherein the controlling device is
`implemented using a distributed architecture spanning at least two
`locations.” Petitioner contends that at the time of the invention, using a
`distributed architecture for components in a network (whether a computer
`network or a telecommunications network), was a known design option.
`Pet. 54. Petitioner explains, with supporting evidence, that at the time of the
`invention, PSTN telecommunications networks were based on a distributed
`architecture spanning many locations that would reduce the risk of a network
`failure caused by a disaster at a particular location, such as a power outage
`or fire. Id. (citing Ex. 1002 ¶¶ 123–125). Petitioner concludes that it would
`have been obvious to one of ordinary skill in the art at the time of the
`invention to implement the system and method disclosed in O’Neal using a
`distributed architecture spanning at least two locations. Id.
`We also have reviewed the Petition with respect to claim 28 and
`determine that Petitioner has accounted sufficiently for claim 28 at this
`juncture of the proceeding. Patent Owner does not argue for the separate
`patentability of claims 21 and 28 with respect to this challenge. Prelim.
`Resp. 56.
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`For the foregoing reasons, we determine the information presented
`shows a reasonable likelihood that Petitioner would prevail in establishing
`that claims 21 and 28 would have been obvious over O’Neal.
`
`D. Remaining Grounds Challenging the Claims of the ’777 Patent
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`result, and in determining whether to institute an inter partes review of a
`patent, the Board, in its discretion, may “deny some or all grounds for
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
`§ 42.108(b).
`Based on the record before us, we exercise our discretion and decline
`to institute review based on any of the other asserted grounds advanced by
`Petitioner that are not identified below as being part of the trial. See, e.g.,
`37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented establishes a reasonable likelihood that Petitioner would prevail in
`showing that claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and 45 of the ’777
`patent are unpatentable. At this preliminary stage, we have not made a final
`determination with respect to the patentability of the challenged claims or
`any underlying factual and legal issues.
`
`18
`
`

`

`IPR2016-01258
`Patent 7,764,777 B2
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41,
`and 45 of the ’777 patent on the following grounds of unpatentability:
`Reference
`Basis
`Challenged Claims
`18, 23, 25, 26, 29–
`31, 37, 38, 41, and
`45
`21 and 28
`
`O’Neal
`
`O’Neal
`
`§ 102(e)
`
`§ 103(a)
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`commences on the entry date of this decision; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified immediately above, and no other ground is authorized.
`
`FOR PETITIONER:
`
`Mark Passler
`Brice Dumais
`AKERMAN LLP
`ip@akerman.com
`brice.dumais@akerman.com
`
`FOR PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
`
`19
`
`

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