UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01258
`Patent Number: 7,764,777 B2
`________________
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01258
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01258
`Patent Number: 7,764,777 B2
`________________
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 2
`
`LEGAL UNDERSTANDING ......................................................................... 4
`
`I.
`
`II.
`
`A. ANTICIPATION ................................................................................... 4
`
`B.
`
`OBVIOUSNESS ................................................................................... 5
`
`III. THE SUBSTITUTE CLAIMS ARE PATENTABLE .................................... 8
`
`IV. Lamb Discloses the THS/TNS is Connected to an Edge Switch .................... 9
`
`V.
`
`First Call/Second Call Limitations ................................................................ 13
`
`VI. The PBX Art – Blaze, Burke, and Fuentes .................................................... 16
`
`VII. Written Description and New Matter Objections .......................................... 17
`
`
`
`
`ii
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 2
`Bates Declaration
`IPR2016-01258
`
`
`
`
`
`I, Regis J. “Bud” Bates, declare as follows:
`1. My name is Regis J. “Bud” Bates, and I have been retained as an expert
`witness for Inter Partes Review of IPR2016-01258.
`2.
`This report contains statements of my opinions formed to date and the
`bases and reasons for those opinions. I may offer additional opinions based on
`further review of materials in this case, including opinions and/or testimony of other
`expert witnesses.
`3.
`I understand that this Declaration is being submitted along with Patent
`Owner’s Reply in Support of Its Motion to Amend.
`4.
`Capitalized terms found in this Declaration that are not defined herein have
`the meaning given them in Patent Owner’s Reply in Support of Patent Owner’s
`Contingent Motion to Amend Claims 18 and 37 of U.S. Patent No. 7,764,777.
`5.
`In preparing this Declaration, I have reviewed the Petitions, the
`declarations that accompany the Petitions, the Institution Decision, Patent Owner’s
`Response to the Petitions, Petitioners’ Replies in Support of the Petitions, the
`Motions to Amend, Petitioner’s Oppositions to the Motions to Amend, and the
`exhibits that have been submitted in this IPR proceeding as well as the Related IPR
`Proceedings.
`6.
`This Declaration is a statement of my opinions on issues related to the
`validity of the Proposed Substitute Claims and the other issues raised in the Reply
`in Support of the Contingent Motion to Amend.
`7.
`I am of the opinion that the Proposed Substitute Claims are patentable over
`the IPR Art, as well as all other art about which I am aware.
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 3
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`I.
`
`QUALIFICATIONS
`8.
`This section summarizes my career history, education, publications, and
`other relevant qualifications.
`9.
`I have been involved in and with the telecommunications industry for 50
`years and have seen the development and growth of the various technologies,
`infrastructure, legal, regulatory, and technical services.
`10. Notably, I am the author of 20 books which outline the use of Voice and
`Data technologies used throughout the industry. As author of these books, I am
`situated to opine upon the state of the Telephone Networks, as well as the
`conclusions that both parties in this proceeding draw therefrom.
`11.
`I am the founder and president of TC International Consulting, Inc.
`(TCIC), based in Heber, Arizona. I have held this position since the inception of the
`company in October 1989. TCIC is a full-service consulting and training firm
`specializing in communications and computer convergence.
`12. My role is to assist our client companies with the analysis of options,
`selection of vendors or products to meet their strategic goals, and training for
`technologies including voice, telephone systems, data networks, video, Internet,
`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
`systems and services, fiber optics, and infrastructure. We have been responsible for
`selecting and implementing over 100 private branch exchange (PBX) systems for
`our client companies. TCIC develops and conducts training for corporate users,
`equipment manufacturers, and Telephone and Internet carriers.
`
`
`
`2
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 4
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`13. From September 1986 to October 1989, I was the chief information officer
`at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities included
`the complete automation of the law firm’s multiple offices around the country.
`14. From September 1979 to September 1986, I was the telecommunications
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
`select, analyze and implement voice and data communications projects at U.S. and
`international sites.
`15. From April 1977 to September 1979, I was the senior telecommunications
`manager for manufacturing and international sites at Data General Corporation in
`Westboro, MA. I was responsible for selecting telecommunications equipment for
`sites across the world, selecting services (voice, data and fax traffic) from common
`carriers, and selecting appropriate means and protocols to use these goods and
`services.
`16. From September 1974 to April 1977, I was the manager of administrative
`services at a retail chain in Canton, MA called Hills Department Stores. There, I
`was responsible for communications matters including voice, data, fax, telex, and
`teletype.
`17. From April 1972 to September 1974, I worked as the telecommunications
`and facilities manager at Damon Corporation, a conglomerate that included medical-
`biological development, veterinary products, clinical labs, security manufacturing,
`and hobby craft. My responsibilities included voice and data communications for a
`variety of locations across the country.
`
`
`
`3
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 5
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`18. From September 1966 to April 1972, I was a captain in the U.S. Army
`Signal Corps. My assignments took me to many locations, including a deployment
`in Vietnam, where I worked in mobile and fixed-site communication environments
`using radio-based VHF and troposcatter systems.
`19.
`In addition to these formal roles, I have consulted for and provided training
`courses to over 20 major organizations, including Cisco, Motorola Solutions, Nortel
`Networks, the University of California at Berkeley, and Fidelity Investments, as well
`as the U.S. Army, Electronic proving Grounds, Central Intelligence Agency, Federal
`Bureau of Investigation, and National Security Agency.
`20.
`I received a Bachelor of Sciences degree in Business Management in 1979
`from Stonehill College in Easton, MA with additional work towards my Masters of
`Business Administration from Lehigh University in Bethlehem, PA and St. Joseph’s
`College in Philadelphia, PA.
`21.
`I completed all the coursework but not the thesis for an MBA.
`
`II. LEGAL UNDERSTANDING
`22. Although I am not an attorney and do not intend to testify about legal
`issues, my opinions are also informed by my understanding of the relevant law. I
`understand that a patent claim can be found invalid in an inter partes review if the
`Patent Office concludes that it is more likely than not that the claim is invalid.
`
`A. ANTICIPATION
`23.
`I have read 35 U.S.C. §§ 102 (a)-(g) and understand the requirements to
`prove “anticipation” of a patented invention under these statutory provisions. I have
`
`
`
`4
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 6
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`been advised that if each and every element or step of a claim is disclosed within the
`“four corners” of a single prior art reference, that claim is said to be anticipated by
`that prior art reference and is invalid under 35 U.S.C. § 102.
`24.
`I understand that anticipation requires that a single reference disclose all
`the elements, as arranged in the claim. I further understand that the prior art
`reference must clearly and unequivocally disclose the claimed invention or direct
`those skilled in the art to the claimed invention without any need for picking,
`choosing, and combining various disclosures not directly related to each other by the
`teachings of the cited reference.
`25.
`I also have been advised that a prior art reference can disclose a claim
`feature because the feature is expressly described, or because the feature is inherent
`in the disclosure. I understand that something is inherent in a prior art reference if
`the missing descriptive matter must be necessarily present, and it would be so
`recognized by one of ordinary skill in the art. I also understand that inherency cannot
`be established by probabilities or possibilities, and that the mere fact that something
`may result from a given set of circumstances is not sufficient to show inherency.
`
`B. OBVIOUSNESS
`26.
`I also understand the legal standards that apply to invalidity for
`obviousness under 35 U.S.C. § 103. I understand that a patent claim may be invalid
`under 35 U.S.C. § 103 if the differences between the claimed 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 made to a person having ordinary skill in the art to which the
`subject matter pertains. I understand that obviousness is a question of law and that
`5
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 7
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`the following factors must be evaluated to determine whether a party challenging a
`patent claim’s validity has met its burden of proof that the claimed invention is
`obvious: (1) the scope and content of the prior art; (2) the differences between the
`claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective
`indicia of non-obviousness.
`27.
`I understand that to reach a proper determination under 35 U.S.C. § 103,
`one must step backward in time and into the shoes worn by the hypothetical “person
`of ordinary skill in the art” (“POSA”) when the invention was unknown and just
`before it was made. In view of all factual information, one must then make a
`determination whether the claimed invention “as a whole” would have been obvious
`at that time to that person of ordinary skill in the art. Knowledge of the applicants’
`disclosure must be put aside in reaching this determination, yet kept in mind in order
`to determine the differences between the claimed subject matter as a whole and the
`content of the prior art.
`28. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I understand that to consider any
`distortion caused by hindsight bias, to guard against slipping into the use of
`
`hindsight, to be cautious of opinions that rely upon after‐the-fact reasoning, and to
`
`avoid the temptation to read into the prior art the teachings of the invention at issue.
`The determination of obviousness is not whether a person could, with full knowledge
`of the patented device, reproduce it from prior art or known principles. The question
`is whether it would have been obvious, without knowledge of the patentee’s
`achievement, to produce the same thing that the patentee produced. This judgment
`6
`
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 8
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`other devices and change them in light of the now‐known template of the patented
`
`must be made without the benefit of hindsight. It is improper to take concepts from
`
`device, without some direction that would render it obvious to do so.
`29.
`I understand that a claim is not proven obvious merely by demonstrating
`that each of the claim elements was independently known in the prior art. I
`understand that most, if not all, inventions rely on building blocks long since
`uncovered and claimed discoveries, and, almost of necessity, will likely be
`combinations of elements that were already known. A party challenging validity
`must show that a person of ordinary skill in the art would have had a reason to
`combine the teachings of the prior art to achieve the claimed invention and would
`have had a reasonable expectation of success in doing so.
`30.
`I also understand that an inference that a claimed combination would not
`have been obvious is especially strong where the prior art’s teachings undermine the
`very reason being proffered as to why a person of ordinary skill would have
`combined the known elements. A reference may be said to “teach away” when a
`person of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction divergent
`from the path that was taken by the applicant. Where a proposed modification or
`combination for the prior art would change the principle of operation of the prior art
`being modified or render the prior art unsatisfactory for its intended purpose then
`the teachings of the references are not sufficient to render the claims at issue obvious.
`31.
`I understand that a party challenging the claims of a patent must present
`evidence sufficient to establish some articulated, rational reason to select and
`7
`
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 9
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`combine the teachings of the prior art to produce the claimed invention with a
`reasonable expectation of success, which is sometimes referred to as a prima facie
`conclusion, or case, of obviousness.
`
`III. THE SUBSTITUTE CLAIMS ARE PATENTABLE
`32. Petitioner takes a shotgun approach in its Response, citing to no less than
`12 new references. In my opinion, these references, however, have the same
`deficiencies found in the art discussed in Patent Owner’s Motion to Amend.
`Specifically, the much relied upon Lamb patent only shows a call controller
`connected to an edge switch. This is the same configuration disclosed and
`distinguished in Patent Owner’s Motion to Amend. Further, the art relied upon by
`Petitioner to show first call/second call functionality as recited in the Substitute
`Claims does not actually disclose these limitations. Notably, Petitioner did not even
`apply each of the claim limitations to the art. To Petitioner’s credit, it finally
`discovered some references that show PBXs attached to a tandem switch. But, these
`PBXs fail to disclose any of the functionality the claimed tandem access controller
`is required to have, as recited in the Substitute Claims. Petitioner relies upon other
`references that have their own deficiencies. The references discovered by Petitioner
`that disclose a PBX attached to a tandem switch show large PBX systems that
`function as an edge switch. Namely, these specialized PBX systems can have
`hundreds or thousands of telephones connected directly to them. These PBXs can
`only receive calls from the PSTN for a 1-800 number over a direct line, in a
`customized way. The PBXs cannot communicate outgoing calls directly to a tandem
`switch either. These systems were not associated with a tandem switch. Further, a
`8
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`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 10
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`POSA would understand that these PBXs would still have connections to the local
`Telco edge switch to get access to local dial tone and for numbering purposes. The
`PBX will then route calls between these phones and the PBX, in the same manner
`as an edge switch or a class five switch. As will be discussed below, this is a very
`different type of device than the claimed tandem access controller.
`
`IV. Lamb Discloses the THS/TNS is Connected to an Edge Switch
`33. The Lamb reference is the single most discussed reference in the Response
`– it is specifically mentioned by name on 13 of the 24 pages of the Response. To
`call it the linchpin of Petitioner’s arguments against the Substitute Claims is not an
`overstatement. According to Petitioner, Public Phone Switch 202-2 in Lamb is (or
`at least can be) a tandem switch (which it is not).
`34. As an initial matter, the Detailed Description of the invention of Lamb
`never describes Switch 202-2 as a tandem switch. Furthermore, various portions of
`Lamb make clear that Switch 202-2 is an edge switch (a class 5 switch), not a tandem
`switch. This puts Lamb in the same category as the External (EXT) Art discussed
`in Petitioner’s Motion to Amend. See Mot. at 15-19. It is therefore my opinion that
`Lamb thus does not add any more to the analysis than Alexander, Archer, Burger,
`McMullin, O’Neal, and Schwab.
`35. Specifically, Fig. 4 of Lamb shows Switch 202-2 as connecting directly to
`telephones 106 and 108. Telephones 106 and 108 are “consumer telephones.” Lamb
`at 31:64. The Substitute Claims require that tandem switches not be directly
`connected to telephones. Every expert in this and the related IPRs that has
`characterized edge switches and tandem switches has noted that edge switches are
`9
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`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 11
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`directly connected to user telephones (while tandem switches are not). See, e.g.,
`Lavian Dec. (Ex. 1002), ¶43 (“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.”); BatesDec (Ex. 2001), ¶43; ForysDep (Ex. 2071)
`at 8:21-25, 12:10-18. Fig. 4, standing alone, conclusively demonstrates that Switch
`202-2 is an edge switch. Lamb provides additional evidence that Switch 202-2 is an
`edge switch. Lamb describes that the functionality of Switch 202-2 that is utilized
`by the TNS is the same functionality that can be utilized by consumer telephones
`106 and 108. Lamb states that the “call service logic provided by the
`telecommunications network server 202-1 is rather limited to creating, maintain,
`bridging, and disconnecting call connections within the PSTN 101, via the public
`phone switch 202-2,” and that “such functions are typically allowed to be controlled
`via regular telephone devices.” Lamb at 31:58-65. Petitioner brings forward no
`evidence that describes a customer phone being able to control services provided by
`a tandem switch. On the other hand, starting in the 1980s, the Regional Bell
`Operating Companies provided features such as call waiting and call forwarding to
`their customers through edge switches. See Mot. at 10-12. These features were
`controlled by the customer’s phones. Lamb similarly discusses the fact that these
`features were found in central offices (another name for edge switches). See Lamb
`at 2:8-49 (discussing the capabilities of central offices).
`36. Lamb teaches that TNS 202-1 can be located “within the confines of a
`central office.” Lamb at 30:56. TNS 202-1 is the device that manipulates Switch
`202-2 to provide the functionality described in Lamb. Lamb at 30:46-47. In my
`10
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 12
`Bates Declaration
`IPR2016-01258
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`
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`Declaration of Regis J. “Bud” Bates
`
`opinion, it would be more natural for a TNS located in a central office to manipulate
`an edge switch also located in the central office as opposed to a tandem switch
`located somewhere else. Further, the TNS-201 located in an edge switch falls
`outside the required scope of the Substitute Claims that communications not pass
`through any edge switches.
`37. Petitioner’s assertions that a POSA “would have understood Lamb to be
`teaching that its TNS could be connected at any type of public PSTN switch suitable
`for managing call connections to the PSTN” are wholly without merit. Resp. at 13.
`Petitioner first argues that a POSA would have understood that a tandem switch
`would have provided the functionality of “creating, maintain, bridging, and
`disconnecting call connections within the PSTN 101,” where Lamb’s public phone
`switch provides access to the PSTN by “creating, maintain, bridging, and
`disconnecting call connections within the PSTN 101.” Resp. at 12-13; Lamb at
`31:58-62. But, this argument is directly contradicted by Petitioner’s previous
`expert’s statement that “tandem switches are not capable of originating or
`terminating PSTN calls, but rather direct[] calls to/from an edge switch or another
`tandem switch.” Ex. 2030 (Lavian Dec. in -01256), ¶106; see also Ex. 2029 (Lavian
`Dep.) at 32:4-16 (confirming that Dr. Lavian stands by his statements in ¶106 of his
`declaration).1
`
`
`1 Petitioner also claims that I confirmed Forys’s erroneous view of the
`functionalities of a tandem switch, citing Bates deposition transcript at 35:6-18. See
`Resp. at 13. But I only read the portions of the Lavian transcript previously cited
`that directly rebut Forys’s claims. Thus, the referenced portion of my transcript
`actually contradicts Petitioner.
`
`
`
`11
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 13
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`38. Petitioner also argues that Switch 202-2 can operate as a signal transfer
`point (STP), and an STP is equivalent to a tandem switch. Resp. at 15 (“POSITA
`would have recognized that in order to operate as an STP on the PSTN, a tandem
`switch would be used as Lamb’s public phone switch 202-2.”); Lamb at 28:12-13.
`But, Petitioner’s own evidence shows this to not be true. The much discussed Chang
`reference shows an STP connected to both tandem and edge switches. Chang at Fig.
`1 (elements 11E, 11T, and 15). In addition, Figs. 1-3 of Allen (discussed and
`reproduced on p. 14 of the Response) show much the same thing, i.e., STP 18 apart
`and separate from tandem switch 16 and central offices 10. Further, Petitioner’s
`expert further distinguished tandem switches from STPs, including that that an STP
`cannot carry voice traffic while tandem switches do. ForysDec, ¶56; ForysDep at
`59:25-6:5.
`39.
` The lone reference cited to by Petitioner that equates STPs and tandem
`switches is Elliot. Resp. at 15. But its description of STPs is at odds with Chang
`and Allen. Further, the cited portion of Elliot refers to Figs. 17A and C of Elliot,
`which show an arrangement of equipment that is not representative of the PSTN.
`Thus, at best, Elliot may stand for the proposition that tandem switches can function
`as STPs in Elliot’s proprietary network. This, however, does not implicate STPs and
`tandem switches in the PSTN, which is the relevant network for the purposes of this
`IPR and the Substitute Claims. An STP is a packet switch that carries signaling
`system 7 messages, not voice or data traffic. A POSA would recognize that an STP
`could not function as a tandem switch.
`
`
`
`12
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 14
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`V.
`
`First Call/Second Call Limitations
`40.
`In my opinion, none of the art cited by Petitioner teaches, suggests, or
`discloses the call processing limitations of “receiving a first call request [at the
`TAC],” “initiating the sending of a request to establish a second call without yet
`answering the first incoming call [at the TAC],” and “answering the first incoming
`call at the [TAC] when the second call is answered . . .” as recited in the Substitute
`Claims.
`41. Petitioner first argues that the ’777 Patent discloses “first call/second call”
`functionality. But the language cited by Petitioner (’777 Patent at 2:31-34) says
`nothing about a second call or “without yet answering” the first incoming call when
`a second call is initiated by a TAC. Furthermore, “local subscriber level” refers to
`the geographic level at which tandem switches reside (see, e.g., id. at 3:22-33
`(discussing connecting the TAC in the PSTN at the “local service level”)), and the
`’777 Patent makes clear that such functionality was not provided at the level of a
`tandem switch in the prior art, but at the level of the edge switch.
`42.
` Petitioner incorrectly attempts to conflate traditional SS7 signaling to
`the specific signaling required in the Substitute Claims. In a nutshell, a traditional
`PSTN call is associated with a single call request that is passed from the originating
`edge switch to the destination edge switch. This call request (e.g., an IAM message)
`can pass through various tandem switches as it progresses from one edge switch to
`another. The end point of “a call” is defined by where the call request can be
`answered. Importantly, this is a single call request for a single call, and the tandem
`switches simply route the request from one point to another. On the other hand, as
`
`
`
`13
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 15
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`described in the Substitute Claims, the TAC receives a first call request, without yet
`answering it, then the TAC initiates a second call request. These are separate and
`distinct requests, not one request that is passed from one switch to another. After
`the second call is answered, the TAC itself answers the first call and connects the
`two calls. Petitioner’s expert agrees with this common understanding of a first
`call/second call. ForysDep at 77:15-25; 79:1-25; 82:4-86:23. In a traditional SS7
`system, there is no TAC. Further, as discussed below, the other references briefly
`mentioned by Petitioner as disclosing “first call/second call” functionality likewise
`suffer from the same deficiencies: there is only one call request and, even if there
`are found to be multiple call requests, those requests are not received, initiated,
`answered, and otherwise handled by something that is alleged to correspond to a
`TAC.
`43.
` Petitioner argues that Wegner discloses these limitations, but the
`alleged two call requests are really a single request where there is no teaching of two
`separate answers for two separate calls. Resp. at 19-20. Fig. 11 of Wegner shows a
`single call between phone 16a and 16b. If Fig. 11 were representative of the
`invention described in the Substitute Claims (assuming ViSSP 50 corresponds to the
`TAC), one would see two separate call flows – one between phone 16a and ViSSP
`50 (the claimed fist call) and one between ViSSP 50 and phone 16b. Instead, a single
`call request passes through ViSSP 50.
`44.
` Petitioner also relies on Schumacher, Scherer and MeLampy, which
`suffer from similar defects. Schumacher and MeLampy both tout the ability to
`“redirect” a call without “tying up” two trunks, which confirms there is but a single
`14
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 16
`Bates Declaration
`IPR2016-01258
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`Declaration of Regis J. “Bud” Bates
`
`call. This functionality is very different than what is recited in the Substitute Claims
`– a first call and a second call to the TAC (i.e., two calls). Scherer, at most, discusses
`receiving calls and placing calls, but never discloses placing a second call in
`response to receiving the first call, then connecting the calls together.
`45.
` Finally, contrary to Petitioner’s arguments, Lamb does not disclose the
`first call/second call limitations. Unlike the Substitute Claims, Lamb has the first
`call being answered before the second call is placed. See Lamb at 31:30-35 (“When
`the [the TNS] detects . . . that a person (the user) has picked up the handset of user
`telephony device 106, the phone switch 202-2 under control of the [TNS] can place
`a second call connection 232 to the user telephony device 108 . . . .”). In other words,
`a second call is placed only after a person “picks up” the handset to which the first
`call is placed. The Substitute Claims, however, require a second call to be placed
`before the first one is answered.
`46. Furthermore, Lamb actually describes two outbound calls (from the
`perspective of the TNS). Specifically, Lamb describes the TNS causing phone 106
`to ring first (Lamb at 31:27-28), then causing phone 108 to ring second (id. at 31:33-
`38). In contrast, the Substitute Claims require the TAC to receive a first call request,
`then initiate a second call.
`47.
` Lastly, Lamb joins the first and second calls together as soon as the
`second call is placed. Id. at 31:38-44 (“Once the [TNS] has caused the phone switch
`202-2 to place the call connections 231 and 232, the telecommunications network
`server 202-1 can instruct the phone switch 202-2 to bridge the two connections 231
`
`
`
`15
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 17
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`and 232 together thus creating a single telecommunications session”). But, the
`Substitute Claims require that the calls be joined when the second call is answered.
`48.
`
`In sum, in my opinion, Petitioner fails to disclose any art that describes
`a device similar to a TAC that receives a first call request, then sends out a second,
`independent call request without yet answering the first call. Wegner, Schumacher
`and MeLampy only disclose a single call that traverses an alleged TAC, Scherer
`discloses independent inbound and outbound calls but fails to link them together,
`and Lamb discloses two outbound calls when the Substitute Claims call for both an
`inbound and outbound call. Further, it is my opinion that the Substitute Claims
`would not have been obvious in view of O’Neal nor does Petitioner make any effort
`to provide any meaningful analysis on obviousness.
`
`VI. The PBX Art – Blaze, Burke, and Fuentes
`49. While Petitioner did discover some art that shows a PBX connected to a
`tandem switch, these arrangements are a far cry from the TAC in Substitute Claims
`and the ’777 Patent. As described in the ’777 Patent, the TAC attaches to existing
`tandem switches in the PSTN to provide enhanced functionality. See, e.g., ’777
`Patent at 4:40-44. The TAC is not shown directly connected to telephones, but either
`routes calls to phones via the PSTN or a packet switched network. The PBXs in the
`PBX Art, on the other hand, function as edge switches. Consider the language of
`the Substitute Claims. It describes edge switches as “connected to telephones on
`one side and to PSTN tandem switches on the other side.” And, this is exactly what
`is shown in the PBX Art. See, e.g., Burke, Fig. 1 (illustrating PBX 130 attached to
`toll switch 124 and telephones 141 and 142); Blaze, Fig. 1 (illustrating PBX 111
`16
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 18
`Bates Declaration
`IPR2016-01258
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`connected to telephones 130 and 131 and toll switch 110); Fuentes, Fig. 1
`(illustrating PBX 30 connected to telephone 48 and describing a connection to a toll
`switch (4:62-65)). Petitioner’s expert acknowledges that this art is the claimed edge
`switch in the Substitute Claims. ForysDep at 6:10-21. Accordingly, in my opinion,
`it would not have been obvious to modify O’Neal with Blaze, Burke, or Fuentes, nor
`has Petitioner made any meaningful attempt as to how or why O’Neal could be
`modified or combined to read on the limitations of the Substitute Claims.
`
`VII. Written Description and New Matter Objections
`50. Petitioner also claims that the Substitute Claims add subject matter not
`disclosed in the specification of the ’777 Patent. Specifically, Petitioner complains
`about the “answering” step. Resp. at 6. The terms “answering” and “terminating”
`are equated in the ’777 Patent’s specific
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