IPR2016-01258
`U.S. Patent No. 7,764,777
`
`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
`U.S. Patent No. 7,764,777
`
`DECLARATION OF LEONARD J. FORYS, PH.D.
`IN SUPPORT OF PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`YMAX EXHIBIT 1042
`YMAX CORP. V. FOCAL IP
`
`

`

`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction......................................................................................................1
`
`Qualifications...................................................................................................2
`
`III. Materials Considered.....................................................................................10
`
`IV. Applicable Legal Standards...........................................................................10
`
`V.
`
`Person of Ordinary Skill in the Art................................................................14
`
`VI. Overview of the Substitute Claims................................................................14
`
`VII. Claim Interpretation.......................................................................................19
`
`VIII. Background Technologies .............................................................................22
`
`A.
`
`B.
`
`Access Tandems/Tandem Switches ....................................................22
`
`SS7.......................................................................................................24
`
`IX. Overview of Lamb.........................................................................................26
`
`X.
`
`XI.
`
`Lamb teaches that “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” ...............................................................................................28
`
`The PBX-based prior art teaches that “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”.................................................................38
`
`XII. The prior art teaches “answering the first incoming call at the tandem access
`controller when the second call is answered” and “connecting the first
`incoming call and the second call at the tandem access controller after the
`second call is received and answered” ..........................................................41
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`XIII. The prior art teaches “establishing the voice communication between the
`calling party and the subscriber, by the tandem access controller, after the
`second call is completed and answered, across both the packet network and
`the second network” ......................................................................................48
`
`XIV. It would have been obvious to connect O'Neal’s UMS directly to a tandem
`switch.............................................................................................................51
`
`XV.
`
`It would have been obvious to include the call sequencing feature in
`O'Neal’s system .............................................................................................52
`
`ii
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`DECLARATION OF LEONARD J. FORYS, PH.D.
`IN SUPPORT OF PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`I, Dr. Leonard J. Forys, declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I am over 21 years of age and otherwise competent to make this
`
`Declaration. I make this Declaration based upon facts and matters within my own
`
`knowledge and on information provided to me by others. I have used my education
`
`and my years of experience working in the field of telecommunications and my
`
`understanding of the knowledge, creativity, and experience of a person of ordinary
`
`skill in the art, in forming the opinions expressed in this report.
`
`2.
`
`I have been retained as an expert witness to provide testimony on
`
`behalf of YMax Corporation (“YMax” or “Petitioner”) in two inter partes review
`
`proceedings (“IPRs”): IPR2016-01258 concerning U.S. Patent No. 7,764, 777 (“the
`
`‘777 patent”) and IPR2016-01260 concerning U.S. Patent No. 8,457,113 (‘the ‘113
`
`patent”).
`
`3.
`
`I understand that in each of these proceedings Patent Owner has
`
`submitted a contingent Motion to Amend the claims of patent. In particular, it my
`
`understanding that the Motion in IPR2016-01258 seeks to substitute original claim
`
`18 of the ‘777 patent with proposed substitute claim 47 and original claim 37 with
`
`proposed substitute claim 48. It is also my understanding that the Motion in
`
`1
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`

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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`IPR2016-01260 seeks to substitute original claim 1 of the ‘113 patent with
`
`proposed substitute claim 183.
`
`4.
`
`I am being compensated for my time in connection with these IPRs at
`
`a rate of $400.00 per hour. I am also being compensated for any out-of-pocket
`
`expenses for my work in these proceedings. My compensation as an expert is in no
`
`way dependent upon the results of any investigations I undertake, the substance of
`
`any opinion I express, or the ultimate outcome of the review proceedings. I have
`
`been advised that Bryan Cave LLP represents the Petitioner YMax Corporation in
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`this matter. I have no personal or financial stake or interest in the outcome of this
`
`matter.
`
`II. Qualifications
`
`5.
`
`I have nearly 50 years of experience in the telecommunications industry
`
`working for corporations including AT&T Bell Telephone Laboratories for almost
`
`two decades and Bellcore (formerly Bell Communications Research), the research
`
`and development organization for the Bell Operating Companies (e.g., Bell Atlantic,
`
`Southwestern Bell, US West, etc.), for over a decade. As detailed below, I have
`
`worked on many projects and technologies highly relevant to the subject matter of
`
`the ‘777 and ‘113 patents.
`
`6. My academic background in electrical engineering and computer
`
`science provides a technical foundation for work in telephone communications
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`networks. I received a Bachelor of Science Degree in Electrical Engineering from
`
`the University of Notre Dame in 1963. I received both a Science Master in
`
`Electrical Engineering and the degree of Electrical Engineer from the
`
`Massachusetts Institute of Technology in 1965. I received the degree of Doctor of
`
`Philosophy in Electrical Engineering and Computer Science from the University of
`
`California at Berkeley in 1968.
`
`7. While at Berkeley, I was an Assistant Professor of Electrical
`
`Engineering and Computer Science, teaching courses in network theory, systems
`
`theory and communications theory, performing research in communications
`
`systems and serving as faculty advisor to 20 undergraduates.
`
`8.
`
`From 1968 to 1973, I was a member of the technical staff at Bell
`
`Telephone Laboratories (known commonly as Bell Labs). I engaged in various
`
`research activities involving network engineering and performance management in
`
`telephone networks. I taught several in-house courses in performance analysis and
`
`traffic engineering in telephone networks.
`
`9.
`
`From 1973 to 1984, I was Technical Supervisor at Bell Telephone
`
`Laboratories, heading a group of technical experts, primarily Ph.D.'s. I was
`
`responsible for performance management/analysis and development of traffic
`
`engineering algorithms for various telecommunications networks and their
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`3
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`components, primarily processor based voice switches, automatic call distributors,
`
`and Private Branch Exchanges (“PBXs”).
`
`10. As part of this effort, I successfully rescheduled the processor tasks in
`
`several of these systems to increase their capacity and improve their performance.
`
`These tasks included digit detection capabilities, call progress tone generation,
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`interdigit timing and switch features such as three-way calling and call forwarding. I
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`participated in network architecture studies involving the impact of various network
`
`designs on the capacity of tandem switches.
`
`11. My department did the original traffic engineering work for the
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`Advanced Mobile Phone System, AMPS, which was the predominant mobile
`
`service in North America in the 1980s. I provided management reviews for this
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`work.
`
`12.
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`I also was responsible for all of the call center staffing algorithms for
`
`the Bell System and for the engineering of the network elements used for call
`
`centers such as the TSPS (Traffic Service Position System), Rockwell ACDs, and
`
`the #5 CrossBar ACD. ACDs are Automatic Call Distributors, special purpose
`
`switches used to provide call center functionality. In particular, these network
`
`elements were used during this time period to provide collect calling as they handled
`
`both automatic and operator assisted coin phones and automatic and assisted collect
`
`calling. In particular, the Bell System call centers implemented various billing
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`options, both manual and mechanized billing such as AABS (Automatic Alternative
`
`Billing Services). These allowed for credit card verification and billing as well as
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`automated collect billing procedures.
`
`13. From 1984 to 1994, I was District Manager for Bell Communications
`
`Research (“Bellcore”), heading a group of 7 to 15 technical experts, primarily
`
`Ph.D.'s. I was responsible for the specification and testing of a variety of voice
`
`network components. This work included writing sections of the requirements used
`
`by the Bell Operating Companies to buy network components in their networks. I
`
`also tested the compliance (to the requirements) of several voice switches made by
`
`various companies, e.g., Nortel, Lucent, Ericsson, Fujitsu, NET, and Siemens.
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`14. During this time period, I further consulted on the engineering and
`
`performance of various supplemental telephonic services such as Voice Mail
`
`systems, including those manufactured by Boston Technologies, Unisys, and Digital
`
`Sound Corporation, as well as supporting equipment such as SMDI (Simplified
`
`Message Display Interface) links. An essential element of these services was the use
`
`of Interactive Voice Response units (IVRs). During this time period, I headed a
`
`group doing architectural and performance studies of Personal Cellular Service,
`
`PCS. This work was done on behalf of the Regional Bell Operating Companies, the
`
`RBOCs. I was asked to chair a session on traffic performance of PCS at an
`
`international symposium. The PCS technologies I researched included SMS
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`capabilities. I also participated and contributed to various national and international
`
`voice and data standards organizations. I also engaged in various studies where data
`
`was detected from voice in order to determine the amount of data traffic present on
`
`voice circuits.
`
`15. Also during this period, I continued my involvement with call center
`
`technology. In particular, I was responsible for the engineering of all call centers
`
`for the Bell Operating Companies. This included analyzing specific network
`
`elements used to handle inmate telephone calls such as Nortel's TOPS (Traffic
`
`Operator Position System) and MPP (Multi-Purpose Position) systems and AT&T's
`
`No. 5 OSPS (Operator Services Position Station).
`
`16. Another of my responsibilities while at Bellcore was analyzing and
`
`providing engineering algorithms for data network components used by the Bell
`
`Operating Companies. As part of this endeavor, I was a leader in developing novel
`
`traffic engineering methods for Internet data networks and other high-speed data
`
`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This
`
`included characterizing Internet traffic and developing loading guidelines for
`
`network components including routers and switches. I also worked on some of the
`
`earliest deployed packet-based networks, some of which included voice over packet
`
`technologies.
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`17.
`
`I was Bellcore's prime technical leader for determining root causes of,
`
`and proposed solutions for, several Signaling System No. 7 ("SS7") data network
`
`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
`
`Washington, D.C., Pittsburgh, and Los Angeles outages. I was responsible for
`
`writing new sets of requirements for SS7 networks and was involved in a large
`
`scale testing and analysis program for a wide variety of SS7 network components.
`
`18.
`
`In 1992 I was named a Bellcore Fellow — only the fifth person to
`
`receive such an award. From 1994 to 1995, I was a Chief Scientist at Bellcore,
`
`overseeing the technical work of 50 technical experts, many of whom had Ph.D.'s. I
`
`was involved in the teaching of teletraffic engineering and performance
`
`management to various bodies, including the Federal Communications
`
`Commission, which included various aspects of both voice and data networks,
`
`including voice mail systems. I served as a “trouble shooter,” responsible for
`
`identifying root causes for diverse network problems involving a variety of
`
`technologies including both high speed data networks as well as telephone
`
`networks. As part of this work, I uncovered a traffic synchronization problem
`
`which involved access tandems fed traffic from edge/central office switches. This
`
`synchronization problem caused the access tandems to lose up to 1/3 of their
`
`capacity. I solved this problem by proposing modifications to the priority schedule
`
`which were implemented by the manufacturer. The same phenomenon has since
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`been observed by others in Intelligent Networks utilizing the SS7 protocol and is
`
`conjectured to be responsible for “Internet storms.”
`
`19.
`
`I analyzed the potential impact of earthquakes and other natural
`
`disasters on telecommunications network performance. The National Science
`
`Foundation sponsored me to be the sole U.S. telecommunications industry
`
`representative at the First International Joint U.S.-Japan Earthquake Symposium in
`
`1993.
`
`20. Since 1995, I have been President of my own company, The Forys
`
`Consulting Group, Inc., providing consulting in voice and data communications
`
`services including mobile telephony. I used HP's SS7 network monitoring
`
`capabilities to analyze Internet traffic patterns in a large metro area. As part of a
`
`team of international experts, I investigated a wide range of issues involving the
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`introduction of a new line of vendor products in a foreign national network. In 1996
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`I experimented with some of the first VoIP systems, including a 1996 version of
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`Vocaltec's Internet Phone.
`
`21. As a consultant to a large telephone company, I advised them on
`
`quality of service issues in providing voice over ATM (with and without IP), Voice
`
`over IP, Internet and Multiprotocol Label Switching (MPLS) networks, which are
`
`used extensively in VoIP. I further analyzed various supplier components for
`
`providing hybrid fiber coax access in cable networks. I consulted with a large
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`company on the economic and technical problems associated with providing voice
`
`and data communications over a foreign cable network.
`
`22. During this period, I also performed extensive consulting for various
`
`data communications systems, including Internet access using satellite systems with
`
`LAN in the sky technologies for airplanes. I analyzed the performance, provided
`
`traffic inputs and helped specify traffic network management/congestion controls
`
`for three satellite data communications systems capable of handling both packetized
`
`voice as well as Internet traffic.
`
`23.
`
`In the period between 1995-2001 I worked as a consultant to
`
`GLADSIS. GLADSIS provided software for servers that controlled screen based
`
`landline phones (often with keyboards) using the Analog Display Service Interface
`
`(ADSI) protocol which alternated data and voice. During this time, GLADSIS
`
`developed software for providing SMS receipt and delivery to British Telecom
`
`customers using ADSI capable telephones. I was involved in developing various
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`marketing and billing strategies for the use of these types of phones, particularly for
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`the application in the UK. In addition, I researched the use of SMS to control
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`Bluetooth capable devices for a possible patent application. I have been involved in
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`a number of consulting tasks involving VoIP networks using both H.323 and SIP
`
`signaling technologies. These included several patent cases, including cases
`
`brought against major VoIP carriers such as Level 3, Comcast, Time Warner Cable,
`
`9
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`Verizon FIOS, and Sprint. I also have been involved in various consulting tasks
`
`involving alternative billing strategies such as pre-paid calling cards provided by
`
`Alternative Service Providers.
`
`24. My Curriculum Vitae is provided as Exhibit 1043, which contains
`
`further details on my education, experience, publications, and other qualifications to
`
`render an expert option.
`
`III. Materials Considered
`25.
`In forming my opinions expressed in this declaration, I have
`
`considered and relied upon my education, background, and experience. In addition,
`
`I have reviewed and relied upon various materials in preparation of this declaration,
`
`including: the references cited herein; papers (and supporting exhibits) submitted
`
`by the parties in connection with the proceedings concerning the ‘777/’113 patent
`
`family; and decisions of the Board in connection with the proceedings concerning
`
`the ‘777/’113 patent family.
`
`IV. Applicable Legal Standards
`26.
`I am not an attorney and do not expect to offer any opinions regarding
`
`the law. However, counsel at Bryan Cave LLP have informed me of certain legal
`
`principles relating to patent claim construction and invalidity that aided in
`
`developing my opinions set forth in this report.
`
`10
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`

`

`Anticipation
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
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`27.
`
`I understand that a patent claim is invalid as anticipated if each and
`
`every limitation of that claim is disclosed in a single prior art reference that enables
`
`a person of ordinary skill in the art to make the allegedly anticipated subject matter.
`
`I understand that to be anticipatory, a reference must enable one of ordinary skill in
`
`the art to practice an embodiment of the claimed invention without undue
`
`experimentation.
`
`28. My understanding is that if a prior art reference does not disclose a
`
`given limitation expressly, it may do so inherently. I have been informed by
`
`counsel and I further understand that a prior art reference will inherently anticipate
`
`a claimed invention if any claim limitations or other information missing from the
`
`reference would nonetheless be known by the person of ordinary skill in the art to
`
`be necessarily present in the subject matter of the reference.
`
`Obviousness
`
`29.
`
`I understand that a patent claim is invalid as obvious if it can be shown
`
`that the differences between the patented subject matter and the prior art are such
`
`that the subject matter as a whole would have been obvious, at the time the
`
`invention was allegedly made, to a person having ordinary skill in the art. Relevant
`
`considerations include the level of ordinary skill in the art, the scope and content of
`
`the prior art, differences between the prior art and the claims at issue, and any
`
`objective secondary considerations of non-obviousness.
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`11
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`30. My understanding is that the obviousness inquiry requires that the
`
`prior art be considered in its entirety. I also understand that, in order to evaluate the
`
`obviousness of a patent claim over a given prior art combination, one should
`
`analyze whether the prior art references included collectively in the combination,
`
`disclose each and every element of the allegedly invalid claim as those references
`
`would have been understood by the person of ordinary skill in the art at the time of
`
`the invention. Then one should determine whether that combination makes the
`
`challenged claim obvious to the person of ordinary skill in the art by a
`
`preponderance of the evidence. I understand that such preponderance of the
`
`evidence is satisfied if the proposition is more likely to be true than not true.
`
`31.
`
`I understand that obviousness cannot be proven by mere conclusory
`
`statements or by merely showing that a patent claim is a combination of elements
`
`that were already previously known in the prior art. Rather, it is my understanding
`
`that a party challenging a patent claim in an inter partes review proceeding must
`
`further establish that there was an apparent reason with some rational
`
`underpinnings that would have caused a person of ordinary skill in the art at the
`
`time of the alleged invention to have combined and/or altered these known
`
`elements to arrive at the claimed invention. Such reasons might include, for
`
`example, teachings, suggestions, or motivations to combine that would have been
`
`apparent to a person of ordinary skill in the art or that the proposed modification
`
`would have been “obvious to try.”
`
`12
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`32. My understanding is that one should avoid the use of “hindsight” in
`assessing whether a patent claim would have been obvious.1 For example, a claim
`should not be considered in view of what persons of ordinary skill in the art would
`
`know today, nor should it be reconstructed after the fact by starting with the claims
`
`themselves and/or by reading into the prior art the teachings of the invention at
`
`issue.
`
`33. Counsel has informed me, and I understand, that I should assume for
`
`the purposes of this declaration that the “time of invention” applicable to the
`
`challenged claims of the ‘777 and ‘113 patents is between Mid-1999 and Mid-2000.
`
`Claim Language
`
`34.
`
`I understand that, in inter partes review proceedings, claim terms are
`
`to be given the broadest reasonable construction in light of the specification as
`
`would be understood by a person of ordinary skill in the relevant art.
`
`35. As a result of my education and experience, I believe that I understand
`
`how the challenged claims of the ‘777 and ‘113 patents would be understood by a
`
`person of ordinary skill in the art applying the above standard.
`
`1 Based on my discussions with counsel, I understand that that the term “obvious”
`
`has both a legal and a technical meaning. When the term is used throughout this
`
`declaration, my opinions and conclusions will be directed to the technical meaning
`
`of obvious (i.e., whether subject matter was within the technical grasp of a person
`
`of ordinary skill in the art at the time of the patent in question).
`
`13
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`V.
`
`Person of Ordinary Skill in the Art
`36.
`I understand that Petitioner and its expert Dr. Lavian previously
`
`submitted that a person of ordinary skill in the art at the time of the ‘777 and ‘113
`
`patents would have a bachelor’s degree in electrical engineering, computer science,
`
`or the equivalent thereof and approximately 2 years of professional experience
`
`within the field of telecommunications or network communications. I agree with
`
`this definition.
`
`VI. Overview of the Substitute Claims
`37. As discussed above, I understand that for the ‘777 patent, Patent
`
`Owner has proposed substitute claims 47 and 48. Claim 47 is intended to replace
`
`claim 18, while claim 48 is intended to replace claim 47 of the ‘777 patent. The
`
`substitute claims are reproduced below:
`
`Claim 47
`
`A method for processing a first incoming call from a particular PSTN tandem
`switch on a PSTN communication network using a tandem access controller,
`wherein the PSTN communication network comprises edge switches connected to
`telephones on one side and to PSTN tandem switches on the other side, wherein the
`particular PSTN tandem switch is one of the PSTN tandem switches, wherein the
`edge switches route calls to subscribers within a local geographic area, and wherein
`the PSTN tandem switches route calls to the edge switches or to the PSTN tandem
`switches local or in other geographic areas, wherein the PSTN tandem switches are
`not the edge switches, and wherein the PSTN tandem switches are not directly
`connected to the telephones, the method comprising the steps of:
`
`receiving a first request to establish the first incoming call, which is intended
`for a specified recipient, at a tandem access controller in communication with the
`particular PSTN tandem switch, 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,
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`identifying one or more control criteria previously associated with the
`specified recipient at the tandem access controller, wherein the one or more control
`criteria was entered via a webbased interface;
`
`initiating the sending of a request to establish a second call, without yet
`answering the first incoming call, at the tandem access controller in accordance
`with the control criteria associated with the specified recipient;
`
`answering the first incoming call at the tandem access controller when the
`second call is answered by a communication device associated with the specified
`recipient; and
`
`connecting the first incoming call and the second call at the tandem access
`controller after the second call is received and answered by the communication
`device associated with the specified recipient.
`
`Claim 48
`
`A method for processing an incoming call from a particular PSTN tandem switch
`on a PSTN communication network using a tandem access controller, wherein the
`PSTN communication network comprises edge switches connected to telephones
`on one side and PSTN tandem switches on the other side, wherein the PSTN
`tandem switches include the particular PSTN tandem switch, wherein the edge
`switches route calls within a local geographic area, wherein the PSTN tandem
`switches route calls to the edge switches or to the PSTN tandem switches in other
`geographic areas, wherein the PSTN tandem switches are not the edge switches,
`and wherein the PSTN tandem switches are not directly connected to any of the
`telephones, the method comprising the steps of:
`
`receiving a first request to establish the first incoming call, at a tandem
`access controller in communication with the particular PSTN tandem switch, which
`is intended for a specified recipient, 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;
`
`identifying one or more control criteria previously associated with the
`specified recipient at the tandem access controller, wherein the one or more control
`criteria was entered via a webbased interface;
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`initiating the sending of a request to establish a second call, without yet
`answering the first incoming call, at the tandem access controller via a packet-based
`connection in accordance with the control criteria associated with the specified
`recipient;
`answering the first incoming call at the tandem access controller when the
`second call is answered by a communication device associated with the specified
`recipient; and
`
`connecting the first and second calls at the tandem access controller after the
`second call is received by a communication device associated with the specified
`recipient, wherein the second call is received by the communication device
`associated with the specified recipient when it is answered.
`
`38.
`
`It is also my understanding that Patent Owner alleges that these
`
`amendments are intended to add two additional concepts to the original claims.
`
`One concept is related to the presence of edge switches in the communications
`
`between a tandem switch in the PSTN and a controller (TAC) connected to the
`
`tandem switch. The other concept is related to the answering sequence of calls
`
`made to/from the TAC.
`
`39. Specifically, Patent Owner states that “most of the added language is
`
`to make clear that the TAC cannot be connected to an edge switch. Instead, the
`
`TAC communicates with the tandem switch without passing through an edge
`
`switch” and that “the TAC performs the steps of initiating the sending of a request
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`to establish a second call, without yet answering the first incoming call, answering
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`the first call only when the second call is answered, and connecting the two calls
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`after the second call is received and answered.” ‘777 Mot. p. 13.
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`40. As will be discussed in more detail below, it is my opinion that one of
`
`ordinary skill in the art would have appreciated that each of these features were
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`known in the art prior to the ‘777 patent.
`
`41. As discussed above, I understand that for the ‘113 patent, Patent
`
`Owner has proposed substitute claim 183. Claim 183 is intended to replace claim 1
`
`of the ‘113 patent. The substitute claims is reproduced below:
`
`Claim 183
`
`A method performed by a web enabled processing system including one or more
`web servers coupled to a tandem access controller serving as an intelligent
`interconnection between at least one packet network and a second network coupled
`to a particular PSTN tandem switch of a PSTN telecommunications network,
`wherein the second network is a network of PSTN tandem switches, the PSTN
`telecommunications network comprising a plurality of edge switches connected to
`telephones on one side and PSTN tandem switches on the other side, wherein the
`PSTN tandem switches includes the particular PSTN tandem switch, wherein the
`edge switches route calls from and to subscribers within a local geographic area and
`the PSTN tandem switches route calls to the edge switches or the PSTN tandem
`switches local or in other geographic areas, wherein the PSTN tandem switches are
`not the edge switches, wherein the PSTN tandem switches are not directly
`connected to any of the telephones, the method for enabling voice communication
`of a call from a calling party to a called party across both the packet network and
`the second network, wherein the called party is a subscriber, the method comprising
`the steps of:
`
`receiving, at the tandem access controller, a first call request and call data
`which is associated with a first call originated by the calling party via either the
`packet network or the second network, the calling party using a communications
`device to originate the first call request for the purpose of initiating voice
`communication to the subscriber, the tandem access controller coupled to the
`particular PSTN tandem switch of the PSTN telecommunications network via the
`second network, wherein communications between the tandem access controller
`and the particular PSTN tandem switch occur without passing through any edge
`switches, the tandem access controller processing a second call request associated
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`with a second call across the packet network to complete the call to the subscriber;
`and
`
`establishing the voice communication between the calling party and the
`subscriber, by the tandem access controller, after the second call is completed and
`answered, across both the packet network and the second network.
`
`42.
`
`It is also my understanding that Patent Owner alleges that these
`
`amendments are intended to add two additional concepts to the original claims.
`
`One concept is related to the presence of edge switches in the communications
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`between a tandem switch in the PSTN and a controller (TAC) connected to the
`
`tandem switch. The other concept is related to receiving a first call request and
`
`processing a second call and then establishing voice communications between the
`
`two calls across both a packet network and a network.
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`43. Specifically, Patent Owner states that “language was added to make
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`clear that the TAC cannot be connected to an edge switch. Instead, the TAC
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`communicates, including communication related to call requests, with the tandem
`
`switch without passing through an edge switch” and that “TAC performs the steps
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`of receiving a first call request associated with a first call and processing a second
`
`call associated with a second call request and establishing voice communications
`
`across both a packet network and a network of tandems [PSTN/second network]
`
`after the se