Petition for Inter Partes Review
`U.S. Patent No. 7,764,777
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 7,764,777
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 18, 21, 23, 25, 26,
`28, 29, 30, 31, 37, 38, 41, and 45 OF U.S. PATENT NO. 7,764,777 UNDER 35
`U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 7,764,777
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 18, 21, 23, 25, 26,
`28, 29, 30, 31, 37, 38, 41, and 45 OF U.S. PATENT NO. 7,764,777 UNDER 35
`U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
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`Petition for Inter Partes Review
`U.S. Patent No. 7,764,777
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS........................................................................................... i
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`LIST OF EXHIBITS................................................................................................ vi
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MANDATORY NOTICES, STANDING, AND FEES..................................1
`
`A.
`
`Real Parties in Interest – 37 C.F.R. § 42.8(b)(1).............................................1
`
`B.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)........................................................1
`
`C.
`
`Lead and Back-up Counsel – 37 C.F.R. § 42.8(b)(3)......................................2
`
`D.
`
`Service Information – 37 C.F.R. § 42.8(b)(4)................................................2
`
`E.
`
`Certification of Grounds for Standing – 37 C.F.R. § 42.104(a)......................3
`
`F.
`
`Payment of Fees – 37 C.F.R. § 42.15(a) and § 42.103....................................3
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF PRECISE
`
`RELIEF REQUESTED..............................................................................................3
`
`A.
`
`Claims For Which Review Is Requested.........................................................3
`
`B.
`
`The Proposed Alternative Grounds Are Not Redundant.................................4
`
`IV.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW .............5
`
`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ...............5
`
`A.
`
`Summary of the ‘777 Patent ............................................................................5
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`1.
`
`2.
`
`3.
`
`4.
`
`Priority Date ...............................................................................................6
`
`Prosecution History of the ‘777 Patent ......................................................6
`
`An Embodiment of the ‘777 Patent............................................................7
`
`Overview Of The Challenged Independent Claims ...................................9
`
`B.
`
`Person Of Ordinary Skill In The Art .............................................................12
`
`C.
`
`State of the Art of Telecommunications by June 1999 .................................12
`
`1.
`
`2.
`
`3.
`
`THE PSTN / Circuit Switching Networks ...............................................13
`
`Signaling...................................................................................................16
`
`Packet-Switching Networks: the Internet and Voice over IP .................16
`
`D.
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`Claim Construction........................................................................................19
`
`1.
`
`2.
`
`"switching facility"...................................................................................20
`
`“a communication network that comprises edge switches for routing calls
`
`to subscribers within a local geographic area and switching facilities for
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`routing calls to edge switches, or other switching facilities local or in other
`
`geographic areas”..............................................................................................24
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`3.
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`4.
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`“is coupled to”..........................................................................................25
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`“in communication with” .........................................................................27
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`5.
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`6.
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`7.
`
`“a controlling device”...............................................................................27
`
`“tandem access controller”.......................................................................28
`
`Summary of Claim Construction .............................................................29
`
`E.
`
`Summary of the Prior Art ..............................................................................30
`
`1.
`
`2.
`
`O’Neal ......................................................................................................30
`
`Schwab .....................................................................................................32
`
`F.
`
`There is a Reasonable Likelihood that
`
`the Challenged Claims are
`
`Unpatentable.........................................................................................................35
`
`1.
`
`Ground 1: Claims 18, 23, 25, 26, 29, 30, 31, 37, 38, 41, and 45 Are
`
`Anticipated By O’Neal......................................................................................35
`
`a. Claim 18................................................................................................35
`
`b. Claim 23................................................................................................43
`
`c. Claim 25................................................................................................44
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`d. Claim 26................................................................................................45
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`e. Claim 29................................................................................................45
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`f. Claim 30................................................................................................46
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`g. Claim 31................................................................................................48
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`h. Claim 37................................................................................................48
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`i. Claim 38................................................................................................50
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`j. Claim 41................................................................................................51
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`k. Claim 45................................................................................................51
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`2.
`
`Ground 2: Claims 21, 25, 28, and 37 Are Obvious Over O’Neal............53
`
`a. Claim 21................................................................................................53
`
`b. Claim 25................................................................................................55
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`c. Claim 28................................................................................................58
`
`d. Claim 37................................................................................................59
`
`3.
`
`Ground 3: Schwab Anticipates Claims 18, 26, 29, 30, 31, and 45. .........59
`
`a. Claim 18................................................................................................59
`
`b. Claim 26................................................................................................65
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`c. Claim 29................................................................................................66
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`d. Claim 30................................................................................................67
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`e. Claim 31................................................................................................68
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`f. Claim 45................................................................................................69
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`4.
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`Ground 4: Claims 18, 37, and 45 Are Obvious Over O’Neal in view of
`
`Schwab ..............................................................................................................70
`
`a. Claim 18................................................................................................70
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`b. Claims 37 and 45...................................................................................73
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`VI. CONCLUSION..............................................................................................73
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`LIST OF EXHIBITS
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`1001
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`U.S. Patent No. 7,764,777 to Wood et al. (the “’777 patent”)
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`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`Declaration of Tal Lavian, Ph.D.
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`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”).
`
`W. Bressler, SS7 Level Two over IP, dated January 1999
`
`U.S. Patent No. 6,381,323 to Schwab et al. (“Schwab”)
`
`Prosecution history of U.S. Patent No. 6,529,596
`
`1007
`
`Prosecution history of U.S. Patent No. 7,764,777
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`1008
`
`Federal Standard 1037C (Glossary of Telecommunications
`
`Terms) (Aug. 7, 1996)
`
`1009
`
`1010
`
`1011
`
`1012
`
`Newton’s Telecom Dictionary (February 1999)
`
`http://www.internetlivestats.com/total-number-of-websites
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`U.S. Patent No. 8,457,113 to Wood et al.
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`ITU-T Specification of Signaling System No. 7 Q.700 dated
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`March 1993
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`1013
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`http://www.thefreelibrary.com/eBay's+AuctionWeb+Tops+One
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`+Million+Bids%3B+Leading+Online+Auction...-a018940197
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`1014
`
`B. Leiner, et al., The Past and Future History of the Internet,
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`Communication of the ACM, Feb. 1997, Vol. 40, No. 2
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`1015
`
`1016
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`1017
`
`1018
`
`1019
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`U.S. Patent No. 6,031,836 to Haserodt
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`Curriculum vitae for Tal Lavian, Ph.D.
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`ITU-T Recommendation Q.700-Q.705. Introduction to CCITT
`
`Signaling System Number 7. Melbourne 1988-1992.
`
`http://www.speakfreely.org/history.html
`
`Lucent Technologies and Ascend Communications announce
`
`voice over IP interoperability, dated June 2, 1999
`
`1020
`
`C. Huitema, et al., Media Gateway Control Protocol (MGCP)
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`Call Flows, dated January 20, 1999
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`1021
`
`C. Huitema, et al., Media Gateway Control Protocol (MGCP)
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`Call Flow Test Case 1, dated February 25, 1999
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`1022
`
`The iNOW! [VoIP Interoperability Now!] Joint Press Release,
`
`dated December 19, 1998
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`1023
`
`L. Ong, et al. Framework Architecture for Signaling Transport,
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`Petition for Inter Partes Review
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`dated October 1999
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`
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`Petition for Inter Partes Review
`U.S. Patent No. 7,764,777
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`I.
`
`INTRODUCTION
`
`YMax Corporation (“YMax” or “Petitioner”) requests inter partes review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq. of claims 18,
`
`21, 23, 25, 26, 28, 29, 30, 31, 37, 38, 41, and 45 of U.S. Patent No. 7,764,777 (“the
`
`‘777 patent”) to Wood et al., titled “Branch Calling and Caller ID Based Call
`
`Routing Telephone Features.” See Ex. 1001.
`
`II. MANDATORY NOTICES, STANDING, AND FEES
`
`A.
`
`Real Parties in Interest – 37 C.F.R. § 42.8(b)(1)
`
`The real parties in interest are YMAX CORPORATION (Petitioner) and
`
`magicJack VocalTec Ltd., which owns ten percent (10%) or more of the shares of
`
`Petitioner and is publicly traded.
`
`B.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`Records of the U.S. Patent and Trademark Office indicate that the ’777
`
`patent, assigned on its face to Telemaze, LLC, and subsequently assigned to Focal
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`IP, LLC ("Patent Owner"), issued from U.S. Patent Application No. 11/948,965,
`
`filed November 30, 2007
`
`Judicial Matters: The '777 patent is being asserted against Petitioner in the
`
`U.S. District Court for the Middle District of Florida in matter Patent Asset
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`Licensing, LLC v. YMax Corporation, 3:15-cv-00744. The '777 patent is also
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`being asserted against third parties in the U.S. District Court for the Middle District
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`of Florida in the following matters: Patent Asset Licensing, LLC v. Bright House
`
`Networks, LLC (3:15-cv-00742), Patent Asset Licensing, LLC v. T3
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`Communications, Inc. (3:15-cv-00747), Patent Asset Licensing, LLC v. Birch
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`Communications, Inc. (3:15-cv-00746), and Patent Asset Licensing, LLC v.
`
`Wideopenwest Finance, LLC et al. (3:15-cv-00743).
`
`Administrative Matters: U.S. Patent Application No. 12/821,119, filed June
`
`22, 2010, issued as U.S. Patent No. 8,457,113; U.S. Patent Application No.
`
`13/905,036, filed May 29, 2013, issued as U.S. Patent No. 9,083,719; and U.S.
`
`Patent Application No. 14/737,243, filed June 11, 2015 (issue fee paid June 2,
`
`2016) claim priority through the '777 application. Petitioner has or will file
`
`separate petitions for inter partes review of U.S. Patent No. 8,457,113 and U.S.
`
`Patent No. 8,155,298, both of which are related to the '777 patent, owned by Patent
`
`Owner, and being asserted in each of the above listed litigations.
`
`C.
`
`Lead and Back-up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`Petitioner identifies Mark D. Passler (Reg. No. 40,764), of Akerman LLP, as
`
`Lead Counsel and Brice S. Dumais (Reg. No. 65,800), of Akerman LLP, as Back-
`
`up Counsel. A Power of Attorney is filed concurrently herewith.
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`D.
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`Service Information – 37 C.F.R. § 42.8(b)(4)
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`Service of any documents to Counsel may be made via hand delivery or
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`postal mailing to Akerman LLP, 777 South Flagler Drive, Suite 1100 West Tower,
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`West Palm Beach, FL 33401. Telephone: (561) 653-5000; Facsimile: (561) 659-
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`6313.
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`Petitioner
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`consents
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`to
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`service
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`by
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`electronic mail
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`at
`
`(a)
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`mark.passler@akerman.com; and (b) brice.dumais@akerman.com.
`
`E.
`
`Certification of Grounds for Standing – 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the ’777 Patent is available for inter partes review
`
`and that the Petitioners are not barred or estopped from requesting inter partes
`
`review of the claims of the ’777 Patent on the grounds set forth herein.
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`F.
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`Payment of Fees – 37 C.F.R. § 42.15(a) and § 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 02-0384.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`PRECISE RELIEF REQUESTED
`
`A.
`
`Claims For Which Review Is Requested
`
`Petitioner
`
`requests inter partes review under 35 U.S.C. § 311 and
`
`cancellation of claims 18, 21, 23, 25, 26, 28, 29, 30, 31, 37, 38, 41, and 45 of the
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`’777 patent on one or more of the following grounds:
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`Ground 1: O'Neal Anticipates Claims 18, 23, 25, 26, 29, 30, 31, 37, 38, 41,
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`and 45 under 35 U.S.C. § 102(e).
`
`Ground 2: Claims 21, 25, 28, and 37 Are Obvious Over O’Neal under 35
`
`U.S.C. § 103.
`
`Ground 3: Schwab Anticipates Claims 18, 26, 29, 30, 31, and 45 under 35
`
`U.S.C. § 102(e).
`
`Ground 4: Claims 18, 37, and 45 Are Obvious Over O’Neal in view of
`
`Schwab under 35 U.S.C. § 103.
`
`Petitioner’s detailed statement of the reasons for the relief requested is set
`
`forth below in Section V. titled “Statement of Reasons for Relief Requested.” In
`
`accordance with 37 C.F.R. § 42.6(c), copies of the supporting exhibits are filed
`
`herewith, including the declaration of Tal Lavian, Ph.D. (Ex. 1002).
`
`B.
`
`The Proposed Alternative Grounds Are Not Redundant
`
`The proposed grounds for institution are not redundant.
`
`Ground 1 addresses Claims 18, 23, 25, 26, 29, 30, 31, 37, 38, 41, and 45 as
`
`being anticipated by O'Neal.
`
`Ground 2, on the other hand, addresses at least Claims 21 and 28 as being
`
`obvious over O'Neal. These claims were not addressed by Ground 1.
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`Also, the Patent Owner may attempt to (incorrectly) argue that the limitation
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`"a controlling device in communication with the switching facility" should be
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`interpreted to mean a controlling device in direct communication with a switching
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`facility other than an edge office switch. Although O'Neal does not expressly
`
`disclose this interpretation, Schwab does.
`
`Specifically, Schwab discloses a
`
`controlling device in direct communication with an “IXCs facility point of the
`
`presence (POP)” (Ex. 1005, 5:65-6:4), which meets the Patent Owner's own
`
`definition of a switching facility because it is an “intercarrier connection point.”
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`Ex. 1007 at 94 n.1.
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`In light of this, Ground 3 addresses Claims 18, 26, 29, 30, 31, and 45 as
`
`being anticipated by Schwab, and Ground 4 addresses Claims 18, 37, and 45 as
`
`being obvious over O’Neal in view of Schwab
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`IV. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
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`A petition for inter partes review must demonstrate “a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. § 314(a). This Petition meets this threshold. For each of
`
`the grounds of unpatentability proposed below, there is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the challenged claims.
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`V.
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`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`A.
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`Summary of the ‘777 Patent
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`Petition for Inter Partes Review
`U.S. Patent No. 7,764,777
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`1.
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`Priority Date
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`The ‘777 patent reflects a chain of patent applications dating back to May 4,
`
`2000. However, in pending litigation against Petitioner YMax Corporation in
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`which the ‘777 patent is being asserted, the plaintiff asserting infringement has
`
`stated that the claims of the ‘777 patent may be entitled to a priority date as early
`
`as June 1, 1999.
`
`2.
`
`Prosecution History of the ‘777 Patent
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`The '777 Patent was filed on November 30, 2007, and issued as a patent on
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`July 27, 2010. See Ex. 1001. Prior to issuing, various claims of the application
`
`were rejected in two separate office actions. Ex. 1007, Pages 171-174 and 130-
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`135. However, the challenged claims in this case were never rejected by the
`
`examiner.1
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`Instead, these claims were newly added in the amendment dated
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`February 16, 2010. Ex. 1007, Pages 80-87 and 95. With regard to these claims,
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`1 Other claims of the '777 patent application were rejected using U.S. Patent No.
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`6,381,323 to Schwab et al. (“Schwab”); however, the challenged claims were not.
`
`Furthermore, the examiner was never made aware of an embodiment in Schwab
`
`where the platform 18 is connected to an “IXCs facility point of the presence
`
`(POP)” (Ex. 1005, 5:65-6:4), as opposed to an end office switch.
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`the applicant merely stated "Applicants have also presented some new claims for
`
`the Examiner's consideration, including ones that define the particular features, for
`
`example, routing to voice mail and call blocking." Id. The Examiner then allowed
`
`each of the challenged claims. Ex. 1007, Pages 51-56.
`
`In allowing the challenged claims, the Examiner provided the following
`
`reasons for allowance: "The prior art fails to disclose edge switches for local and
`
`other switching facilities; a controlling apparatus that will receive a 1st call and
`
`then initiating a 2nd call in accordance with control criteria entered by a specified
`
`user thru the Internet, and then the controlling device coupling the 1st and 2nd calls
`
`together. No obvious combination of references would have taught one of ordinary
`
`skill in the art to make and use applicant's method as claimed." Ex. 1007, Page
`
`55.
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`Contrary to the Examiner's reasoning, these limitations (and each of the
`
`challenged claims) were neither new nor nonobvious as of June 1, 1999, as is
`
`explained in detail below.
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`3.
`
`An Embodiment of the ‘777 Patent
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`The ’777 Patent discloses “a system for allowing a subscriber to select
`
`features of the subscriber's telephone service.” Ex. 1001, 1:18-21.
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`In particular,
`
`the specification discloses a “tandem access controller (TAC) 10” that is connected
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`to a “PSTN tandem switch 16” of the “Public Switched Telephone Network
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`(PSTN).” Ex 1001, 1:40-46; 4:32-46; Fig. 1. This configuration is seen in Figure
`
`1:
`
`This TAC 10 is accessible over the world wide web 22, allowing a
`
`subscriber 12 to select or modify “call control features” (such as “call forwarding”)
`
`to be used when the subscriber 12 is called. Ex. 1001, 5:13-44. In operation, when
`
`a caller (item 20 in Figure 1) calls the subscriber 12 (using the “subscriber's public
`
`phone number”), the TAC receives the call from the PSTN’s tandem switch. Ex.
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`1001, 4:52-4:67. Using the “call control features,” the TAC 10 determines a
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`second phone number (such as the “subscriber's 'private' phone number”), and then
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`places a second call to the second phone number.
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`Id. When the second call is
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`answered,
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`the TAC 10 connects the first call
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`to the second call, “thereby
`
`connecting the calling party 20 to the subscriber 12.” Id; see also Ex. 1002, ¶¶ 56-
`
`57.
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`45.
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`4.
`
`Overview Of The Challenged Independent Claims
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`Three independent claims are challenged in this Petition: claims 18, 37, and
`
`Claim 18 essentially claims using a website to configure the call forwarding
`
`feature for calls received over the conventional telephone network (the PSTN) and
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`a controlling device to effectuate the call forwarding.
`
`(Call forwarding is the
`
`feature that allows you to redirect a telephone call made to one phone number to
`
`another phone number, so that, for example, telephone calls made to your house
`
`phone are re-routed to your cell phone, or to your friend’s house.)
`
`Claim 37 is similar to claim 18, except that when the call is forwarded, the
`
`claim requires using a “packet-based connection” such as Voice over IP rather than
`
`the conventional telephone network (the PSTN).
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`Claim 45 is similar to claim 18, except that instead of initiating a second call
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`to a specified recipient, the original first call is routed to a "voicemail server."
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`As detailed below, these claimed methods were neither new nor nonobvious
`
`as of June 1, 1999. As addressed below, the dependent claims add nothing new or
`
`nonobvious, even in combination. Ex. 1002, ¶¶ 23-29.
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`Notably, the ’777 Patent itself admits that the primary elements of the patent
`
`claims are in the prior art.
`
`For example, in its “Background” section, the patent acknowledges that Call
`
`Forwarding is not just known but a “popular provision.” Ex. 1001, 2:12-16.
`
`The patent also admits that “[t]here are Voice Over Internet Protocol (VoiP)
`
`products emerging that provide better user interfaces and control…” Ex. 1001,
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`2:46-49.
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`The patent further admits that “Voice mail systems” are already in use to
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`“screen incoming, or inbound, calls.” Ex. 1001, 1:25-29.
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`The patent asserts, however, that setting up features like call forwarding
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`“typically require[s] access from the first or second party’s device [that is, from a
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`telephone] and are extremely awkward to program.” The patent further claims that
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`in the past, setting up such features “required a subscriber to make the feature
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`selection through the telephone business office. Central office workers would then
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`implement the provisioning under request of the business office.” Ex. 1001, 1:46-
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`48, 2:1-11.
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`To address the alleged problems in the prior art, the ’777 patent discloses
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`allowing a user to select or modify features for their telephone service “by means
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`of the world wide web.” Ex. 1001, 5:13-44 (emphasis added). This “allow[s] a
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`subscriber to remotely control features…” Ex. 1001, 2:53-55. The patent
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`emphasizes that giving the user “[d]irect 3rd-party control means that the ability to
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`provision the 3rd-party features is directly available to a subscriber, eliminating the
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`need to go through the telephone company (telco) business office.” Ex. 1001,
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`3:19-22 (emphasis added). 2
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`Thus, in short, the specification asserts that the alleged invention is a system
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`that allows users of the conventional telephone network (the PSTN) to directly
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`control telephone service features like call forwarding using a website. See Ex.
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`1001, 1:18-21; 5:13-16 (“FIG. 1 illustrates the preferred method for an authorized
`
`subscriber to modify the 3rd-party control criteria by means of the world wide web
`
`22 (and web server 23) using an internet browser.”)
`
`2 Both the title of the patent and other parts of the specification focus on two
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`telephony features: branch calling, and caller ID based call routing. None of the
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`challenged claims, however, contain limitations directed to either of those features.
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`{38560099;2}
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`However, as detailed below, not only was use of a website to configure
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`telephone features an obvious thing to do by June 1999, but allowing telephone
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`users to configure features such as call forwarding directly via use of a website was
`
`in fact already disclosed in the prior art. Ex. 1002, ¶¶ 30-37.
`
`B.
`
`Person Of Ordinary Skill In The Art
`
`As set forth in the Declaration of Tal Lavian, Ph.D. ("Lavian Dec.") (Ex.
`
`1002), a person of ordinary skill in the art with respect to the ’777 patent in 1999-
`
`2000 would have a bachelor’s degree in electrical engineering, computer science,
`
`or the equivalent thereof and approximately 2 years of professional experience
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`within the field of telecommunications or network communications. Ex. 1002, ¶
`
`19.
`
`The ’777 patent concerns the basic architecture of the telephone network that
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`has existed in the United States for many decades, as well as basic Internet
`
`technology that was well known by 1999-2000. Because the technology involved
`
`in the ’777 patent
`
`involves well-known technologies and functionalities, an
`
`engineer or computer scientist with approximately 2 years of experience in
`
`telecommunications would be well-versed in the concepts disclosed in the ’777
`
`patent. Id. at ¶ 20.
`
`C.
`
`State of the Art of Telecommunications by June 1999
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`1.
`
`THE PSTN / Circuit Switching Networks
`
`The PSTN (public switched telephone network) is the world’s collection of
`
`interconnected circuit-switching telephone networks.
`
`In the United States, the PSTN is the conventional telephone network,
`
`primarily built by AT&T when it was “the” telephone company in the United
`
`States. Telephone calls have been made over the PSTN in the United States for
`
`over a century.
`
`In the United States, the PSTN is a countrywide network of switches
`
`connected to each other by wires. The wires and switches between them connect
`
`the telephone of a calling party to the telephone of the called party. Once a
`
`telephone call between two landline telephones is established, there is a continuous
`
`physical path of wires, linked by one or more switches, between the telephones at
`
`each end of the call that is dedicated solely to that call. This is the meaning of the
`
`term “circuit switching.” The term refers to the switching of infrastructure from
`
`one dedicated use to another. The network focus is on circuit-based, or connection-
`
`oriented, systems designed for delivery of voice communications.
`
`Even more specifically, the PSTN uses a hierarchy of switches. See Ex.
`
`1012.
`
`This makes it possible to scale the telecommunications network to
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`accommodate a large number of end users across the country. Traffic is managed
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`between the various switching offices depending on the type of traffic that was to
`
`be connected: local traffic, long distance traffic, and international traffic.
`
`The switches in the PSTN use a five-level hierarchy: edge or end (class 5),
`
`toll or tandem (class 4), primary (class 3), sectional (class 2) and regional (class 1).
`
`Landline phones in people’s houses are generally connected to a geographically
`
`local class 5 switch (also called an edge switch, end switch, or central office
`
`switch).
`
`Tandem/Class 4 switches generally connect edge/class 5 switches
`
`together, although nearby class 5 switches can be connected directly. In the PSTN,
`
`class 2 and 3 switches are used infrequently, and class 4 switches can be connected
`
`to one another as well as by a class 1 switch. The basic architecture of the PSTN
`
`can therefore be illustrated by the following diagram:
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`The PSTN switch hierarchy does not mandate physical separation. Switches
`
`from one or more adjacent classes (specifically edge and tandem) can be located
`
`together in the same physical facility. A combined class 4/class 5 switch is often
`
`called a “hybrid” switch.
`
`When a telephone call is placed on the PSTN, the call typically travels from
`
`the caller’s phone to the edge switch in the caller’s local central office. Unless the
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`recipient is in the same geographical area and directly connected to the same
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`central office, the call is then typically routed to one or more tandem switches (in
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`{38560099;2}
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`U.S. Patent No. 7,764,777
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`sequence), until
`
`it reaches the edge switch that
`
`is directly connected to the
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`recipient’s phone, and finally to the recipient’s phone. The switches use the
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`telephone number dialed by the caller to know where to route the call. Thus, the
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`network of switches enables the communication network to connect users either
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`within or outside a local geographic area. Ex. 1002, ¶¶ 39-45
`
`2.
`
`Signaling
`
`In addition to carrying voice communications,
`
`the PSTN also carries
`
`signaling, which is information used to control the call. Signaling communicates
`
`information the network needs to operate, such as the signal sent to the local
`
`central office from a telephone when the handset is picked up that notifies the
`
`central office to send the telephone a dial tone, or the signal from the central office
`
`that tells a telephone to ring because there is an incoming call. The protocol that is
`
`used for signaling on the PSTN is called Signalling System 7, or SS7. Ex. 1017.
`
`The SS7 signaling protocol was first issued in 1980 (and was revised in
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`1984, 1988, and 1992). Ex. 1002, ¶¶ 46-47.
`
`3.
`
`Packet-Switching Networks: the Internet and Voice over IP
`
`Websites on the Internet were well known even to the general public by June
`
`1, 1999. Mosaic - the first graphic web browser - was publicly released in
`
`September 1993. By June of 1999, there were over 3 million websites on the web,
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`{38560099;2}
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`including Yahoo (launched in 1994), Amazon (launched in 1995), and eBay
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`(launched in 1995). See Ex. 1010. Indeed, in 1996 – over two years prior to June
`
`1, 1999 – eBay hosted over 250,000 auctions that received over one million bids.
`
`See Ex. 1013. And Leiner et al. explain in the February 1997 issue of
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`Communications of the ACM, the Internet was already well established as a
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`commercial platform:
`
`In the last
`
`few years, we have seen a new phase of
`
`commercialization. Originally, commercial
`
`efforts mainly
`
`comprised vendors providing the basic networking products and
`
`service providers offering connectivity and basic Internet
`
`services. The Internet has now become almost a “commodity”
`
`service, and much of the latest attention has been on the use
`
`of this global information infrastructure as support for other
`
`commercial services. …
`
`Ex. 1014 (emphasis added).
`
`As explained above, the PSTN is a circuit-switched network, which requires
`
`a dedicated point-to-point connection during a phone call. In contrast, the Internet
`
`is a packet-switched network. There is no dedicated route between two computers
`
`that are communicating over the Internet. Rather, information to be transmitted
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`{38560099;2}
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`Petition for Inter Partes Review
`U.S. Patent No. 7,764,777
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`through the Internet is broken down into small blocks called packets, each of
`
`which includes the address of the destination computer. Each packet may travel a
`
`different route through the connected parts of the Internet before arriving at the
`
`destination computer.
`
`The packets are then reassembled at
`
`the destination
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`computer.
`
`TCP/IP is a collection of protocols used for, among other things, sending
`
`information through the Internet. The “IP” stands for Internet Protocol.
`
`Voice over IP (VoIP). VoIP is the transmission of voice that has been
`
`converted into digital packets of data using the Internet Protocol. VoIP
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`communications typically take place over the Internet, though they could use a
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`private network.
`
`As the ’777 patent admits, VoIP was invented and used before the alleged
`
`invention of the ’777 patent. Ex. 1001, 2:46-49 (“There are Voice Over Internet
`
`
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