Filed on behalf of YMax Corporation
`
`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
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`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
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`I.
`
`PATENT OWNER’S MOTION DOES NOT COMPLY WITH THE
`BOARD’S RULES ..........................................................................................1
`
`A.
`
`PO Failed to Disclose Material Prior Art..............................................1
`
`1.
`
`2.
`
`Prior art raised and discussed in a related application................1
`
`Admitted prior art in the ‘777 patent ..........................................3
`
`B.
`
`The Substitute Claims Add New Subject Matter..................................4
`
`1.
`
`2.
`
`3.
`
`PO failed to explain any of the citations in its appendix ............4
`
`The “answering” step adds new subject matter ..........................6
`
`Initiating the sending of call requests at the TAC via a
`packet-based connection adds new subject matter .....................7
`
`II.
`
`THE SUBSTITUTE CLAIMS REMAIN UNPATENTABLE.......................8
`
`A.
`
`The TAC Feature Was Known in the Art .............................................8
`
`1.
`
`2.
`
`The PBX prior art teaches the TAC feature................................8
`
`Lamb teaches the TAC feature .................................................11
`
`B.
`
`C.
`
`D.
`
`It would have been obvious to connect O'Neal’s UMS directly to a
`tandem switch......................................................................................17
`
`The call sequencing feature was known in the art ..............................18
`
`It would have been obvious to include the call sequencing feature in
`O'Neal’s system...................................................................................22
`
`III. CONCLUSION..............................................................................................24
`
`i
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`TABLE OF AUTHORITIES
`
`CASES
`
`EcoWater Sys. LLC v. Culligan Int'l Co.,
`IPR2013-00155, Paper 18 (PTAB June 24, 2014) ..........................................5
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.121(a)(2)(ii).......................................................................................4
`
`ii
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`LIST OF EXHIBITS
`
`YMax Ex.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`
`1015
`1016
`1017
`
`1018
`1019
`
`1020
`
`1021
`
`Description
`U.S. Patent No. 7,764,777 to Wood et al. (the “’777 patent”)
`Declaration of Tal Lavian, Ph.D.
`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
`Prosecution history of U.S. Patent No. 7,764,777
`Federal Standard 1037C (Glossary of Telecommunications Terms)
`(Aug. 7, 1996)
`Newton’s Telecom Dictionary (February 1999)
`http://www.internetlivestats.com/total-number-of-websites
`U.S. Patent No. 8,457,113 to Wood et al.
`ITU-T Specification of Signaling System No. 7 Q.700 dated March
`1993
`http://www.thefreelibrary.com/eBay's+AuctionWeb+Tops+One+Mi
`llion+Bids%3B+Leading+Online+Auction...-a018940197
`B. Leiner, et al., The Past and Future History of the Internet,
`Communication of the ACM, Feb. 1997, Vol. 40, No. 2
`U.S. Patent No. 6,031,836 to Haserodt
`Curriculum vitae for Tal Lavian, Ph.D.
`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
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`Flows, dated January 20, 1999
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`
`iii
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`Description
`Flow Test Case 1, dated February 25, 1999
`The iNOW! [VoIP Interoperability Now!] Joint Press Release, dated
`December 19, 1998
`L. Ong, et al. Framework Architecture for Signaling Transport,
`dated October 1999
`U.S. Patent No. 5,333,185 (“Burke”)
`U.S. Patent No. 5,574,781 (“Blaze”)
`U.S. Patent No. 5,440,613 (“Fuentes”)
`U.S. Patent No. 6,327,258 ("Deschaine")
`Hanmer and Wu, Traffic Congestion Patterns (“Hanmer”)
`U.S. Patent No. 5,566,236 ("MeLampy")
`U.S. Patent No. 6,747,970 (“Lamb”)
`US Patent No. 6,169,735 (“Allen”)
`US Patent No. 6,614,781 (“Elliot”)
`U.S. Patent No. 6,215,790 (“Voit”)
`U.S. Patent No. 5,377,186 (“Wegner”)
`U.S. Patent No. 5,841,854 (“Schumacher”)
`U.S. Patent No. 5,867,562 (“Scherer”)
`Prosecution History of Application No. 13/358, 353 (“‘353 Pros.”)
`U.S. Patent No. 8,848,894 (“the ‘894 patent”)
`Signaling System #7 4th ed. (“Russell”)
`Divestiture: A Record of Technical Achievement, IEEE Communi-
`cations Magazine, Vol. 23, Issue No. 12, Dec. 1995 (“Andrews”)
`Transcript of Deposition of Regis Jerome "Bud" Bates taken on May
`4, 2017 (“Bates Tr.”)
`Declaration of Dr. Leonard J. Forys in Support of Opposition to Mo-
`tion to Amend (“Forys Dec.”)
`Curriculum vitae of Dr. Leonard J. Forys
`
`YMax Ex.
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`
`1041
`
`1042
`
`1043
`
`iv
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`Petitioner YMax Corporation hereby submits this Opposition to the Contin-
`
`gent Motion to Amend filed by Patent Owner Focal IP, LLC. Patent Owner’s Mo-
`
`tion to Amend seeks to substitute original claim 18 of the ‘777 patent with pro-
`
`posed substitute claim 47 and original claim 37 with proposed substitute claim 48.
`
`For the reasons set forth below, Patent Owner’s (“PO’s”) motion should be denied.
`
`I.
`
`PATENT OWNER’S MOTION DOES NOT COMPLY WITH THE
`BOARD’S RULES
`
`A.
`
`PO Failed to Disclose Material Prior Art
`
`PO states that its proposed amendments are directed to two features, namely
`
`that: (1) the “TAC communicates with the tandem switch without passing through
`
`an edge switch.” Motion, p. 12-13 (“the TAC feature”); and (2) “the first call not
`
`be answered (i.e., terminated) until the second call is answered.” Mot., p. 4 (“the
`
`call sequencing feature”). When setting forth its proposed amendments, it is well
`
`settled that PO is obligated to disclose to the Board any “prior art that is relevant to
`
`the substitute claims, including prior art of record and prior art known to PO.”
`
`Guidance, Paper 23, p. 3. PO failed to disclose prior art references it was aware of
`
`- Lamb and Hess, or even address the admitted prior art disclosed in the specifica-
`
`tion of the ‘777 patent. Here, this is particularly troubling given that PO knew (or
`
`should have known) that this art is highly relevant to these two features.
`
`1.
`
`Prior art raised and discussed in a related application
`
`PO asserts that it is unaware of any prior art that teaches the TAC feature.
`
`1
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`See e.g., Mot., p. 13, 15. Not so. The TAC feature was taught by the Lamb and
`
`Hess references. PO learned of these references during the prosecution of the ‘894
`
`patent – a patent that is closely related to, and shares a common ancestor with the
`
`‘777 patent. During that prosecution, the Examiner repeatedly rejected claims that
`
`included a very similar limitation to the claim language PO is adding in its pro-
`
`posed substitute claims. The table below reproduces the corresponding limitations
`
`for comparison (emphasis added).1
`
`Substitute Claims 47/48
`wherein communications….
`between the tandem access controller
`and the particular PSTN tandem switch,
`occur without passing through any of
`the edge switches
`
`‘353 app./ ‘894 patent (claim 1)
`route the communication from the con-
`troller to the called party via a PSTN tan-
`dem switch without traversing any in-
`tervening switches between the control-
`ler and the PSTN tandem switch.
`
`In particular, the Examiner determined that Lamb in view of Hess teaches
`
`communications between a controller and a PSTN tandem switch that occurs with-
`
`out passing through any switches:
`
`[I]t would have been obvious to… modify the teachings of Lamb with the
`
`1 Both the substitute claims and the claims of the ‘894 patent limit the presence of
`
`intervening switches in the communications between the controller and the PSTN
`
`tandem switch. The language of the ‘894 patent claim is even narrower in that it
`
`does not allow any intervening switches, whereas the substitute claims only pro-
`
`hibit intervening edge switches.
`
`2
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`teachings of Jones and Hess…. to initiate and route a call to the PSTN
`tandem switch without traversing any other intermediate switches be-
`tween the controller and the PSTN tandem switch…
`‘353 Pros., p. 54, 85 (emphasis added).
`To overcome the Examiner’s rejection, PO amended the claims of the ‘894
`
`patent to further require that the PSTN tandem switch “is separate from a central
`
`office switch.” This limitation, however, is not present in the substitute claims.
`
`Thus, PO was not only aware of the Lamb and Hess references, but it was
`
`also aware of their relevance to the very TAC feature it is trying to add into its
`
`proposed substitute claims. By failing to mention these references, as well as the
`
`Examiner’s statements in the prosecution of the ‘894 patent, PO has failed to ad-
`
`dress known, material prior art, thereby failing to comply with its “duty of candor
`
`and good faith” in this proceeding. Guidance, p. 5-6. Thus, for this reason alone,
`
`PO’s Motion should be denied.
`
`2.
`
`Admitted prior art in the ‘777 patent
`
`PO asserts that it is unaware of any prior art that discloses the call sequenc-
`
`ing feature. Mot., p. 4, 13 (stating that “this implementation is not disclosed or
`
`suggested in any known prior art”). This too is incorrect. The Admitted Prior Art
`
`(“APA”) in the background section of the ‘777 patent itself demonstrates that this
`
`feature was known in the context of the PSTN. According to the ‘777 patent, an-
`
`swering the first incoming call after the second call was answered was already
`
`3
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`known in the field of “800” credit/collect calls. ‘777 patent, 2:31-34 (“Contacting
`
`the ultimate end-user before terminating the first incoming call is similar to the
`
`manner in which “800” credit calls and collect calls are processed, but these are not
`
`done at the local subscriber level.”).2 Thus, the ‘777 patent admits that, at most, it
`
`merely extended that feature into the related field of local subscriber calls.
`
`PO never specifically mentions, much less addresses, this APA related to
`
`“800”/collect call processing. Mot., p. 15, 17-18. PO has therefore failed to address
`
`“material art of record” and has not “revealed whether the [call sequencing] feature
`
`was previously known anywhere, in whatever setting.” Guidance, p. 6. PO’s Mo-
`
`tion should therefore be denied.
`
`B.
`
`The Substitute Claims Add New Subject Matter
`
`PO was required to, in its motion, to demonstrate that the proposed substi-
`
`tute claims do not “introduce new subject matter.” 37 C.F.R. § 42.121(a)(2)(ii).
`
`PO’s Motion falls far short of meeting this burden.
`
`1.
`
`PO failed to explain any of the citations in its appendix
`
`The Board’s order made clear that PO must: (1) “show written description
`
`2 Although the discussion of the APA uses the word “terminating” rather than “an-
`
`swering,” PO’s Motion attempts to equate the two terms. Mot., p. 4 (“The last new-
`
`ly-added limitations… requires that the first call not be answered (i.e., terminated)
`
`until the second call is answered.”)
`
`4
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`support in the specification for each proposed substitute claim,” and (2) “show
`
`written description support for the entire proposed substitute claim.” Guidance, p.
`
`5. While the Board’s order authorized PO to submit a claim listing appendix, it did
`
`not abrogate the requirement that PO explain in the body of its Motion why its cita-
`
`tions provide support for the substitute claims. Indeed, the Board has made clear
`
`that “mere citation to the original disclosure, without any explanation as to why a
`
`person of ordinary skill in the art would have recognized that the inventor pos-
`
`sessed the claimed subject matter as a whole… is inadequate to satisfy the written
`
`description requirement.” EcoWater Sys. LLC v. Culligan Int'l Co., IPR2013-
`
`00155, Paper 18 at 25-26 (PTAB June 24, 2014). Instead of providing the required
`
`analysis, PO’s Motion merely includes two sentences: (1) one conclusory sentence
`
`citing the claim chart and (2) a second sentence citing to one paragraph of PO’s
`
`expert’s declaration. This second sentence only discusses tandem switches and
`
`does not provide any explanation for how the citations demonstrate possession of
`
`the claimed invention. PO's analysis is clearly deficient. Guidance, p. 4-5.
`
`Indeed, even if PO’s chart was sufficient with regard to each identified limi-
`
`tation (it is not), it clearly does not demonstrate possession of the substitute claims
`
`as a whole. For example, the citations in the appendix span the first nine pages of
`
`the ’965 application and five of its eleven figures covering multiple embodiments.
`
`Indeed, the ‘777 patent specification uses the phrase “in one embodiment” multiple
`
`5
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`times to discuss certain features but only connects “all embodiments” in relation to
`
`the “end unit,” PO has failed to explain how any of these embodiments and limita-
`
`tions fit together. See ‘777 patent, 1:63-65, 3:35-51, 6:30-36, 9:21-27.
`
`In sum, PO fails to describe the interrelationship between the limitations of
`
`the substitute claims and the alleged relationship between each limitation and the
`
`corresponding citations as would have been understood by a POSITA. According-
`
`ly, PO has failed to make a prima facie case for entry of the substitute claims.
`
`The “answering” step adds new subject matter
`2.
`In both substitute claims PO introduces an additional answering step. See
`
`Ex. 2062. In support of this new limitation, PO cites substantially the same para-
`
`graph which appears in each of the ‘965, ‘279 and ‘565 applications. Ex. 2041, p.
`
`13-14, 20-21, 34-35.
`
`This paragraph, however, describes “terminating”- not “answering” – the
`
`first call prior to connecting the first and second calls. See ’965 App, 7:16-26
`
`(“TAC 10 terminates the first call and connects it to the second call...”). Accord-
`
`ingly, the cited support fails to disclose the newly added answering step of the sub-
`
`stitute claims. Forys Dec. ¶48-49. Because PO has not cited any evidence estab-
`
`lishing any relationship between “answering” and “terminating” calls, PO has
`
`failed to make out a prima facie case that the proposed amendments do not add
`
`new subject matter.
`
`6
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`Initiating the sending of call requests at the TAC via a packet-
`based connection adds new subject matter
`
`3.
`
`In substitute claim 48, PO amends original claim 37 to require “initiating the
`
`sending of a request to establish a second call… at the tandem access controller via
`
`a packet-based connection.” In support of this amendment, PO cites substantially
`
`the same two passages in each of the three relied upon specifications and the same
`
`portions of two figures. Ex. 2041, p. 13, 27, 41.
`
`PO’s cited paragraphs lack any mention of the TAC initiating a second call
`
`request via “packet-based connection,” as recited by the substitute claim. In fact,
`
`these paragraphs are silent regarding how the second call request is initiated. At
`
`best, the second paragraph cited by PO describes information needed to place the
`
`outgoing call arrives over a “data link” but says nothing about the mechanism for
`
`initiating the outgoing call itself.
`
`PO’s citations to figures 2 and 5 are equally deficient. At most, figure 2 il-
`
`lustrates certain undefined VoIP transmissions occurring between TAC 10 and dig-
`
`ital telephone 21 over web 22. Figure 2 does not indicate anything about the send-
`
`ing of call initiation requests by the TAC or otherwise. Similarly, figure 5 (box 11)
`
`merely states “Send Call Request (SS7) to PSTN Tandem.” Tellingly, once again
`
`PO failed to offer any explanation or evidence as to how these cited portions of the
`
`specification and figures support this new claim step, namely that sending of the
`
`second call request is initiated by the TAC via a “packet-based connection.” Thus,
`
`7
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`PO has failed to make out a prima facie case that the proposed amendment to claim
`
`37 does not add new subject matter. Forys Dec. ¶52
`
`In sum, based on PO’s cited support and the lack of any accompanying evi-
`
`dence explaining the relationship, if any, between these cited portions and the
`
`claim limitations from the point of view of a POSITA, PO has failed to meets its
`
`burden of demonstrating that the proposed substitute claims do not introduce new
`
`subject matter. Thus, the Motion should be denied for this additional reason.
`
`II.
`
`THE SUBSTITUTE CLAIMS REMAIN UNPATENTABLE
`
`Substitute claims 47 and 48 are generally directed to the same subject mat-
`
`ter. As discussed above, the amendments are directed to newly added features: the
`
`TAC feature and the call sequencing feature. Mot., p. 13. Both features, however,
`
`were well known long before the ‘777 Patent. Accordingly, PO’s reliance on these
`
`two added features does nothing to salvage the patentability of the claims.
`
`A.
`
`The TAC Feature Was Known in the Art
`
`The TAC feature requires that the tandem access controller be in communi-
`
`cation with a particular PSTN tandem switch, and further requires that “communi-
`
`cations, 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.”
`
`1.
`
`The PBX prior art teaches the TAC feature
`
`PO asserts that nothing in the prior art shows a PBX directly connected to a
`8
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`tandem switch. Mot., p. 4, 18, 25. Not so. For example, Blaze discloses a commu-
`
`nications system that is arranged to route calls to a subscriber. Blaze, Abstract. To
`
`route such calls, Blaze teaches a “Private Branch Exchange (PBX) 111” that is “di-
`
`rectly connected to [a] terminating toll switch 110.” Blaze, 4:7-11 (emphasis add-
`
`ed). Forys Dec. ¶87, 90. Figure 1 of Blaze illustrates this direct connection:
`
`The direct connection of Blaze’s PBX to the toll switch teaches the TAC
`
`feature. In particular, the PBX of Blaze is (or includes) a tandem access controller,
`
`as it is (or includes) a processor that can receive calls from Interexchange Carrier
`
`(IXC) network 103 and then complete those calls to a “telephone set 130 or 131.”
`
`Blaze, 4:64-5:46. Furthermore, the toll switch 110 of Blaze is a PSTN tandem
`
`switch. This is confirmed by PO's own expert, who explained that toll switches are
`
`tandem switches. See Ex. 2022, ¶ 36 (“tandem switches are also referred to as
`
`Class 4 switches or toll switches”); ‘777 Mot., p. 5 (“class 4 level refers to both a
`
`9
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`“toll center” and a “tandem switch”). PO’s expert has further explained that IXC
`
`switches are part of the PSTN (Bates Tr. 16:21-25). Finally, because the connec-
`
`tion is direct, all communications between the PBX 111 and toll switch 111 pass
`
`directly from the PBX to the toll switch (or vice versa). Thus, these communica-
`
`tions “occur without passing through any” edge switches.
`
`As another example, Burke teaches that it was “common” for a PBX (i.e., a
`
`tandem access controller) to be connected via a dedicated line (i.e., a direct connec-
`
`tion) to a toll switch (i.e., a PSTN tandem switch). Burke, 7:38-56, FIG. 1 (illus-
`
`trating a PBX 130 directly connected to toll switch 124 via dedicated line 127).
`
`Similarly, Fuentes explains that is was well known to connect a PBX (i.e., a
`
`tandem access controller) to a PSTN tandem switch, instead of an edge switch:
`
`“Usually, the PBX is connected to a class 5 central office (end office) or to a tan-
`
`dem or toll switching system in order to allow the wireless customers to access the
`
`public switched telephone network.” Fuentes, 4:62-65 (emphasis added). Forys
`
`Dec. ¶88-89, 91-93.
`
`In its Motion, PO argues that “[i]f the solution to providing call control fea-
`
`tures in the PSTN was as simple as taking an existing PBX or other external sys-
`
`tem and connecting it to a PSTN tandem switch, as proposed by Petitioners, one
`
`would reasonably publish [] something describing such a solution.” Mot., p. 24.
`
`The references above are published patents that describe precisely such a solution
`
`10
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`and clearly demonstrate that such a modification was well within the skill of a
`
`POSITA.
`
`2.
`
`Lamb teaches the TAC feature
`
`As discussed above, Lamb was used as a rejecting reference against PO’s
`
`claims containing the TAC feature during the prosecution of the related ‘894 pa-
`
`tent. Despite this, the PO never mentioned Lamb in its motion to amend.
`
`Lamb discloses a telecommunication system that bridges communications
`
`between connectionless (e.g., Internet) and connection-based networks (e.g.,
`
`PSTN), enabling seamless communications across both networks for voice calls.
`
`Lamb, 10:20-46; Forys Dec. ¶60, 63, 64. Lamb explains that its telecommunica-
`
`tions system can be used to provide advanced calling features (e.g., call-redirect,
`
`conference calling, call-branching, etc.) as well as VoIP communications. Lamb,
`
`13:56-65, 13:11-34, 12:5-16, 6:31:53, 8:9-45, FIGS. 7-8; Forys Dec. ¶61-62. An
`
`example of Lamb’s telecommunication system architecture is shown in figure 3 of
`
`Lamb (reproduced below).
`
`11
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`Lamb’s system includes a Telecom Hosting Server (THS) 203, a Telecom
`
`Network Server (TNS) 202-1, and a Public Phone Switch 202-2 that collectively
`
`form a bridge between a packet-based network (e.g., the Internet) and the PSTN,
`
`allowing communications across both networks. Lamb, 10:20-58, 26:24-61, FIG.
`
`3; Forys Dec. ¶64-66. The THS is connected to a packet-based network (e.g., the
`
`Internet). Lamb, 12:17-38, FIGS. 3-4; Forys Dec. ¶66-67. The THS also communi-
`
`cates with a Telecom Network Server (TNS), which, in turn, provides signaling to
`
`the Public Phone Switch. Lamb, 30:45-54, 31:58-32:7.
`
`The public phone switch provides access to the PSTN by “creating, main-
`
`tain, bridging, and disconnecting call connections within the PSTN 101.” Lamb,
`
`31:58-62. A POSITA would have readily understood that a tandem switch would
`
`12
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`have provided such functionality. Forys Dec. ¶68, 63, 55.3 Indeed, PO’s expert
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`confirms this. Bates Tr., 35:6-18. Accordingly, a POSITA would have found it ob-
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`vious for Lamb’s public switch 202-2 to be a tandem switch.
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`In addition, Lamb teaches that “telecommunications network server 202-1
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`operates as a service control point (SCP) or Service Node to the telephone network
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`101 and the public phone switch 202-2 operates as a signal transfer point (STP)
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`on the public telephone network.” Lamb, 28:10-14. A POSITA would have recog-
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`nized that in order to operate as an STP on the PSTN, a tandem switch would be
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`used as Lamb’s public phone switch 202-2. Forys Dec. ¶71. This is consistent with
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`how STPs were described in numerous other prior art references.
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`For example, US Patent 6,169,735 to Allen Jr. depicts and describes a con-
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`3 Although Lamb also discusses the possibility of locating the TNS (202-1) at a
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`central office, a POSITA would have understood Lamb to be teaching that its TNS
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`could be connected at any type of public PSTN switch suitable for managing call
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`connections to the PSTN. Lamb, 31:58-62; Forys Dec. ¶69. Indeed, this is also
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`consistent with Lamb’s discussion of modifications to the PSTN. Lamb, 1:44-48 (“
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`central or tandem offices 110 through 113 may be replaced, for example, private
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`branch exchanges, PSTN control hardware or other telephone switching equip-
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`ment”); Forys Dec. ¶70.
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`13
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`ventional PSTN where an STP is connected to a tandem switch/office. 4
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`Allen FIGS. 1-3; see alsoAllen, 2:3-5 (“A conventional connection setup between
`
`two end offices 20, 22 in a tandem network is now described with reference to
`
`FIGS. 2 and 3.”). This tandem office includes a tandem access switch. Allen, 1:39-
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`59 (“When an end/central office 10 utilizes a tandem trunk group 12, the connec-
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`4 According to Patent Owner, the substitute claims cover indirect connection be-
`
`tween the tandem access controller and tandem switch. See Mot., p. 1 (“The Pro-
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`posed Substitute Claims amend the Original Claims by incorporating limitations
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`that describe (i) the tandem access controller ….. coupled to a tandem switch”);
`
`see also Proposed Claims 47 and 48 (reciting the narrower phrase “directly con-
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`nected” in relation to the telephones); Forys Dec. ¶47, 45-46, 50; Bates Tr., 60:8-
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`16.
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`14
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`tion between end offices 10 is via a tandem switch 16.. which passes the call
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`along”). Forys Dec. ¶72-76. As another example, US Patent 6,614,781 to Elliot
`
`teaches that STPs are themselves “tandem switches” on the SS7 network, which
`
`route SS7 signaling. Elliot, 85:20-26 (“Signal transfer points (STPs) are tandem
`
`switches which route SS7 signaling messages long [sic] the packet switched SS7
`
`signaling network 114”). Forys Dec. ¶84-86. Accordingly, Lamb in view of this
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`prior art (e.g., Allen, Elliot, and/or Hess) teaches using a PSTN tandem switch
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`(e.g., public phone switch 202-2) to access the PSTN.
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`Lamb also teaches that THS and/or TNS are a tandem access controller. For
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`example, Lamb teaches that the THS and/or TNS communicate with and control
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`the Public Phone Switch 202-2 to make phone calls. Lamb, 27:40-46 (“public
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`phone switch 202-2, under direction and control of the telecommunications
`
`network server 202-1 and the telecommunications hosting server 203….
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`form[s] call connections… on the PSTN 101”), 21:58-67, 26:47-55. Thus, the
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`TNS and/or THS5 of Lamb is a tandem access controller that is connected to the
`
`Public Phone Switch 202-2 (i.e., a PSTN tandem switch). Forys Dec. ¶77, 79
`
`5 Lamb teaches that both the TNS and THS include a processor. Lamb, 27:14-17
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`(explaining that each can be a “computer workstation”), FIG. 4; Forys Dec. ¶78.
`
`15
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`Importantly, Lamb also teaches that communications amongst Public Phone
`
`Switch, TNS, and THS occur without passing through any edge switches (or any
`
`other switches) of the PSTN. For example, as is seen in FIG. 3 (reproduced above),
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`Public Phone Switch (e.g., 202-2) is connected to TNS (e.g., 202-1) via interface
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`205-2. In turn, the TNS is connected to THS (e.g., 203) via interface 205-1. Forys
`
`Dec. ¶80-81. Lamb explains that the physical connections for interfaces 205-1 and
`
`205-2 can include Ethernet, serial port, or other wired interfaces. Lamb, 27:17-26.
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`Accordingly, because the communication interface between public phone switch
`
`and both the TNS and THS is implemented through Ethernet and/or serial ports
`
`(i.e., a direct connection), the communications between these devices does not in-
`
`volve the PSTN at all, much less pass through any PSTN edge switches. Similarly,
`
`as shown in Allen above, there are no PSTN edge switches between the tandem
`
`switch T and the STP.
`
`As another example, Lamb further teaches that call requests can be initiated
`
`via its THS using a packet-based/connectionless network through an interface pro-
`
`vided by a web browser. Lamb, 27:61- 28:5, 29:8-25, 16:4-42. In other words, such
`
`call requests are made and communicated over the packet-based network and do
`
`not pass through the PSTN or any of its edge switches. Forys Dec. ¶82. Similarly,
`
`Lamb teaches that the THS provides call signaling (e.g., SS7 signaling) to direct
`
`the PSTN via the TNS and the public switch. Lamb, 26:40-47, 12:50- 55. Because
`
`16
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`the THS generates these PSTN signaling messages and forwards them via Ethernet
`
`or wired interfaces to the TNS and public phone switch itself, it is clear that the
`
`signaling messages do not pass through any PSTN edge switch. Forys Dec. ¶83.
`
`Accordingly, Lamb teaches a PSTN tandem access controller (e.g., THS and/or
`
`TNS) connected to a PSTN tandem switch (e.g., public phone switch 202-2) for
`
`processing call requests and call connections via communications that do not pass
`
`through any PSTN edge switches. Forys Dec. ¶86.
`
`B.
`
`It would have been obvious to connect O'Neal’s UMS directly to a
`tandem switch
`
`As is seen above, the TAC feature was well known in the art. In particular,
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`each of Blaze, Burke, and Fuentes disclose a direct connection between a tandem
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`access controller (such as a PBX) and a PSTN tandem switch, resulting in commu-
`
`nications occurring without passing through any edge switches.
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`It would have been obvious to a POSITA to modify O'Neal to directly con-
`
`nect UMS 101 to a PSTN tandem switch (as taught by Blaze, Burke, and Fuentes).
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`Indeed, a POSITA would have found connecting the UMS of O'Neal directly to
`
`PSTN tandem switches rather edge switches to be a simple substitution. Forys Dec.
`
`¶120-21, 87, 93. PO confirms this by characterizing O'Neal's UMS as a PBX. Mot.,
`
`p. 19. By connecting O’Neal’s UMS (i.e., tandem access controller) directly at the
`
`tandem switch, communications between them would occur without passing
`
`through any edge switches, as shown in Blaze, Burke, and Fuentes.
`
`17
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`A POSITA would have been motivated to make such a modification for a
`
`number of reasons. For example, it was well-known that edge switches of a PSTN
`
`are susceptible to congestion, preventing calls from going through. See e.g., Han-
`
`mer, p. 3 and 10 (explaining that due to incoming and outgoing call volumes natu-
`
`ral disasters can cause unforeseen congestion at edge switches localized to the dis-
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`aster area); Deschaine, 1:32-48, 4:26-30 (explaining that the “Internet calls place a
`
`strain on the public switched telephone network” and that it is desirable “to allevi-
`
`ate congestion at [a] terminating end office switch”). Indeed, in order to increase
`
`efficiency, larger organizations were granted direct access to tandem switches for
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`their PBX systems via a dedicated private line. Burke, 7:52-56; Forys Dec. ¶122.
`
`Due the similarities between tandem and edge switches, a POSITA would
`
`have had a reasonable expectation of success in undertaking to connect O’Neal’s
`
`UMS 101 directly to a tandem switch (rather than an edge switch). Indeed, the de-
`
`velopment of hybrid switches which perform both tandem and edge functions in
`
`the PSTN demonstrates this closeness of functionality. For at least the reasons
`
`above, it would have been obvious to a POSITA to modify O'Neal so that UMS
`
`101 directly connected to the tandem switch of the PSTN. Forys Dec. ¶123.
`
`C.
`
`The call sequencing feature was known in the art
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`Substitute claims 47 and 48 also require “answering the first incoming call at
`
`the tandem access controller when the second call is answered” and “connecting
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`18
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`the first incoming call and the second call at the tandem access controller after the
`
`second call is received and answered.” This call sequencing feature was well-
`
`known in the art.
`
`As discussed above, the ‘777 patent itself admits that the feature of “initiat-
`
`ing a second call without yet answering the first incoming call and answering the
`
`first incoming call when the second call is answered” and before connecting the
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`two calls was already being used for processing “800”/collect calls. ‘777 patent,
`
`2:30-34; Forys Dec. ¶94-96(explaining in greater detail how this feature operated
`
`in these types of calls). Unlike these typical systems, in the APA MCI system, the
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`forwarding number is set up in advance. ‘777 patent, 2:28-31. Thus, at most, the
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`‘777 patent merely purports to be extending this well-known feature from the
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`realm of “800”/collect calls to the local subscriber level. ‘777 patent, 2:30-34. Tell-
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`ingly, PO fails to explain why it would not have been obvious to apply this well-
`
`known feature to other types of calls, such as local subscriber calls in SS7 systems.
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`Moreover, Wegner teaches a call forwarding architecture and technique
`
`where the original (first) call is not answered until the destination (second) call is
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`answered. Wegner, 1
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