throbber
Case IPR2016-01258
`Patent 7,764,777
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`Paper No. 38
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`________________
`
`Case IPR2016-01258
`Patent Number: 7,764,777
`_______________
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`CONTINGENT MOTION TO AMEND CLAIMS 18 AND 37 OF
`U.S. PATENT NO. 7,764,777 UNDER 37 C.F.R. § 42.121
`
`
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`

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`Case IPR2016-01258
`Patent 7,764,777
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`Paper No. 38
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`TABLE OF CONTENTS
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`I. 
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`Introduction ...................................................................................................... 1 
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`II. 
`
`Lamb Discloses the THS/TNS is Connected to an Edge Switch .................... 1 
`
`III. 
`
`Petitioner’s Claim that Patent Owner Failed to Disclose Material Art ........... 5 
`
`IV.  First Call/Second Call Limitations .................................................................. 6 
`
`V. 
`
`The PBX Art – Blaze, Burke, and Fuentes .................................................... 10 
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`VI.  Written Description and New Matter Objections .......................................... 11 
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`Case IPR2016-01258
`Patent 7,764,777
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`Cases:
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`Paper No. 38
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`TABLE OF AUTHORITIES
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`Ecowater Systems LLC v. Culligan International Company,
`IPR2013-00155, Paper 18 (P.T.A.B. June 24, 2014) .......................................... 11
`
`
`Google Inc, et al. v. ContentGuard Holdings, Inc.,
`CBM2015-00040, Paper No. 34 (P.T.A.B. June 21, 2016) (ruling on Mot. to
`Amend, Paper No. 16 (filed on Sep. 11, 2015)) ................................................. 11
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`Case IPR2016-01258
`Patent 7,764,777
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`Paper No. 38
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`UPDATED LIST OF EXHIBITS
`
`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed.
`2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History of U.S. Patent No. 7,764,777
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed
`Motion for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district
`court litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-
`2, filed 08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for
`IPR2016-01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for
`IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Deposition Transcript of Mr. Willis, Mar. 1, 2017, for IPR2016-
`01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Declaration of Dr. La Porta in support of the Petition, Ex. 1002
`of IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
`Declaration of Mr. Willis in support of the Petition, Ex. 1002 of
`IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`iv
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`2001
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`2002
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`2003
`2004
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`2011
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`2027
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`2028
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`Paper No. 38
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`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Deposition Transcript of Dr. Lavian, March 29, 2017, for
`IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated
`with line numbers)
`U.S. Pat. No. 4,646,296 (filed on July 9, 1984)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924 to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi,
`and Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
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`v
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`2029
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`2030
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`2040
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`Paper No. 38
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`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Declaration of Thomas La Porta in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,457,113, June 23, 2016,
`submitted in support of IPR2016-01261
`Declaration of Dr. Tal Lavian in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,764,777, June 23, 2016,
`submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
`Declaration of Regis J. “Bud” Bates in Support Reply in Support
`of Motion to Amend (“ReplyDec”)
`Deposition Transcript of Dr. Forys, July 13, 2017, for IPR2016-
`01258 and -01260 (“ForysDep.”)
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`2071
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`I.
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`Introduction
`Petitioner takes a shotgun approach in its Response, citing to no less than 12
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`new references. These references, however, have the same deficiencies found in the
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`art discussed in PO’s Motion to Amend. ReplyDec, ⁋ 32. Notably, Petitioner did not
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`even apply each of the claim limitations to the art. Patent Owner believes Petitioner
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`bears the burden of proving that the Substitute Claims are not patentable.
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`II. Lamb Discloses the THS/TNS is Connected to an Edge Switch
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`The Lamb reference is the single most discussed reference in the Response – it
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`is specifically mentioned by name on 13 of the 24 pages of the Response. To call it
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`the linchpin of Petitioner’s arguments against the Substitute Claims is not an
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`overstatement. According to Petitioner, Public Phone Switch 202-2 in Lamb is (or at
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`least can be) a tandem switch (which it is not). ReplyDec, ⁋ 33.
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`
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`As an initial matter, the Detailed Description of the invention of Lamb never
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`describes Switch 202-2 as a tandem switch. Furthermore, various portions of Lamb
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`make clear that Switch 202-2 is an edge switch (a class 5 switch), not a tandem switch.
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`This puts Lamb in the same category as the External (EXT) Art discussed in Patent
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`Owner’s Motion to Amend. See Mot. at 15-19. Lamb thus does not add any more to
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`the analysis than the art discussed in the Motion to Amend. ReplyDec, ⁋ 34.
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`Specifically, Fig. 4 of Lamb shows Switch 202-2 as connecting directly to
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`telephones 106 and 108. Telephones 106 and 108 are “consumer telephones.” Lamb
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`at 31:64. The Substitute Claims require that tandem switches not be directly
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`Paper No. 38
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`connected to telephones. Every expert in this and the related IPRs that has
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`characterized edge switches and tandem switches has noted that edge switches are
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`directly connected to user telephones (while tandem switches are not). See, e.g.,
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`Lavian Dec. (Ex. 1002), ¶43 (“Landline phones in people’s houses are generally
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`connected to a geographically local class 5 switch (also called an edge switch, end
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`switch, or central office switch.”); BatesDec (Ex. 2001), ¶42; ForysDep (Ex. 2071) at
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`8:21-25, 12:10-18; ReplyDec, ⁋ 35. Fig. 4, standing alone, conclusively demonstrates
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`that Switch 202-2 is an edge switch. ReplyDec, ⁋ 35. Lamb provides additional
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`evidence that Switch 202-2 is an edge switch. Lamb describes that the functionality
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`of Switch 202-2 that is utilized by the TNS is the same functionality that can be
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`utilized by consumer telephones 106 and 108. Lamb states that the “call service logic
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`provided by the telecommunications network server 202-1 is rather limited to
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`creating, maintain, bridging, and disconnecting call connections within the PSTN 101,
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`via the public phone switch 202-2,” and that “such functions are typically allowed to
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`be controlled via regular telephone devices.” Lamb at 31:58-65. Petitioner brings
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`forward no evidence that describes a customer phone being able to control services
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`provided by a tandem switch. On the other hand, starting in the 1980s, the Regional
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`Bell Operating Companies provided features such as call waiting and call forwarding
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`to their customers through edge switches. See Mot. at 10-12. These features were
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`controlled by the customer’s phones. ReplyDec, ⁋ 35. Lamb similarly discusses the
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`Paper No. 38
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`fact that these features were found in central offices (another name for edge switches).
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`See Lamb at 2:8-49 (discussing the capabilities of central offices); ReplyDec, ⁋ 35.
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`
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`Lamb teaches that TNS 202-1 can be located “within the confines of a central
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`office.” Lamb at 30:56. TNS 202-1 manipulates Switch 202-2 to provide the
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`functionality described in Lamb. Lamb at 30:46-47. It would be more natural for a
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`TNS located in a central office to manipulate an edge switch also located in the central
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`office as opposed to a tandem switch located somewhere else. ReplyDec, ⁋ 36.
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`Further, TNS 202-1, located in an edge switch, falls outside the scope of the Substitute
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`Claims requiring that communications do not pass through any edge switches. Id.
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`Petitioner’s assertions that a POSA “would have understood Lamb to be
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`teaching that its TNS could be connected at any type of public PSTN switch suitable
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`for managing call connections to the PSTN” are wholly without merit. Resp. at 13.
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`Petitioner first argues that a POSA would have understood that a tandem switch would
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`have provided the functionality of “creating, maintain, bridging, and disconnecting
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`call connections within the PSTN 101,” where Lamb’s public phone switch provides
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`access to the PSTN by “creating, maintain, bridging, and disconnecting call
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`connections within the PSTN 101.” Resp. at 12-13; Lamb at 31:58-62. But, this
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`argument is directly contradicted by Petitioner’s previous expert’s statement that
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`“tandem switches are not capable of originating or terminating PSTN calls, but rather
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`direct[] calls to/from an edge switch or another tandem switch.” Ex. 2030 (Lavian
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`Paper No. 38
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`
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`Dec. in -01256), ¶106; see also Ex. 2029 (Lavian Dep.) at 32:4-16 (confirming that
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`Dr. Lavian stands by his statements in ¶106 of his declaration);1 ReplyDec, ⁋ 37.
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`Petitioner also argues that Switch 202-2 can operate as a signal transfer point
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`(STP), and an STP is equivalent to a tandem switch. Resp. at 15 (“POSITA would
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`have recognized that in order to operate as an STP on the PSTN, a tandem switch
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`would be used as Lamb’s public phone switch 202-2.”); Lamb at 28:12-13.
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`Petitioner’s own evidence shows this to not be true. The much discussed Chang
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`reference shows an STP connected to both tandem and edge switches. Chang at Fig.
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`1 (elements 11E, 11T, and 15). In addition, Figs. 1-3 of Allen (discussed and
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`reproduced on p. 14 of the Response) show much the same thing, i.e., STP 18 apart
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`and separate from tandem switch 16 and central offices 10. ReplyDec, ⁋ 38. Further,
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`Petitioner’s expert further distinguished tandem switches from STPs, including that
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`1 Petitioner also claims that PO’s expert confirms Forys’s erroneous view of the
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`functionalities of a tandem switch, citing Bates deposition transcript at 35:6-18. See
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`Resp. at 13. But Mr. Bates only read the portions of the Lavian transcript previously
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`cited that directly rebut Forys’s claims. Thus, the referenced portion of the Bates
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`transcript actually contradicts Petitioner.
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`that an STP cannot carry voice traffic while tandem switches do. Id.; ForysDec, ¶56;
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`Paper No. 38
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`ForysDep at 59:25-6:5.
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`The lone reference cited to by Petitioner that equates STPs and tandem switches
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`is Elliot. Resp. at 15. But its description of STPs is at odds with Chang and Allen.
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`Further, the cited portion of Elliot refers to Figs. 17A and C of Elliot, which show an
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`arrangement of equipment that is not representative of the PSTN. ReplyDec, ⁋ 39.
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`Thus, at best, Elliot may stand for the proposition that tandem switches can function
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`as STPs in Elliot’s proprietary network. Id. This, however, does not implicate STPs
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`and tandem switches in the PSTN, which is the relevant network for the purposes of
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`this IPR and the Substitute Claims. Id.
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`III. Petitioner’s Claim that Patent Owner Failed to Disclose Material Art
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`Petitioner’s argument that Patent Owner failed to disclose material prior art is
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`without merit. The Board has provided guidance on what material Patent Owner
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`needs to address in a motion to amend. This material does not include art cited against
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`a later filed patent application. Paper 23 at 5-6. As such, Petitioner’s allegations that
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`Patent Owner breached its duty to disclose the Lamb and Hess references do not stand.
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`See Resp. at 1-3. There are hundreds of references at issue in the patent family of
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`which the ’777 Patent is a part, including references in file histories, references from
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`Petitioner’s invalidity contentions in district court, 100+ references that are art of
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`record in the patent, and references from this and the related IPRs. Petitioner cited
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`Patent 7,764,777
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`nothing to support the proposition that Patent Owner is deemed to have knowledge of
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`Paper No. 38
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`the details contained in these thousands of pages of references.
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`Furthermore, the USPTO has already determined that the ’894 Patent is
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`patentable over Lamb (in view of Hess and other references). During prosecution, the
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`USPTO noted that Lamb fails to explicitly teach that the PSTN switch disclosed in
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`Lamb is a tandem switch. See ’894 Patent File History (Ex. 1037) at 124. The ’894
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`Patent subsequently issued with the following claim limitation: “communication from
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`the controller to the called party via a PSTN tandem switch that is separate from a
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`central office switch without traversing any intervening switches between the
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`controller and the PSTN tandem switch.” See id. at 32. Thus, the USPTO agrees with
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`the arguments presented above that Lamb’s Switch 202-2 is not a tandem switch. In
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`response to the arguments related to this claim amendment, the USPTO issued the
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`Notice of Allowance. Id. at 21-23. The Substitute Claims contain similar limitations
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`that are patentable over Lamb and the other references for analogous reasons.
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`Petitioner has not provided any rationale as to why the USPTO was incorrect.
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`IV. First Call/Second Call Limitations
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`None of the art cited by Petitioner teaches, suggests, or discloses the call
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`processing limitations of “receiving a first call request [at the TAC],” “initiating the
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`sending of a request to establish a second call without yet answering the first incoming
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`call [at the TAC],” and “answering the first incoming call at the [TAC] when the
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`second call is answered . . .” as recited in the Substitute Claims. ReplyDec, ⁋ 40.
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`Paper No. 38
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`Petitioner first argues that the ’777 Patent discloses “first call/second call”
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`functionality. But the language cited by Petitioner (’777 Patent at 2:31-34) says
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`nothing about a second call or “without yet answering” the first incoming call when
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`a second call is initiated by a TAC. Furthermore, “local subscriber level” refers to
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`the geographic level at which tandem switches reside (see, e.g., id. at 3:22-33
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`(discussing connecting the TAC in the PSTN at the “local service level”)), and the
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`’777 Patent makes clear that such functionality was not provided at the level of a
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`tandem switch in the prior art, but at the level of the edge switch. ReplyDec, ⁋ 41.
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`
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`Petitioner incorrectly attempts to conflate traditional SS7 signaling to the
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`specific signaling required in the Substitute Claims. ReplyDec, ⁋ 42. In a nutshell, a
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`traditional PSTN call is associated with a single call request that is passed from the
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`originating edge switch to the destination edge switch. Id. This call request (e.g., an
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`IAM msg) can pass through various tandem switches as it progresses from one edge
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`switch to another. Id. The end point of “a call” is defined by where the call request
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`can be answered. Id. Importantly, this is a single call request for a single call, and
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`the tandem switches simply route the request from one point to another. Id. On the
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`other hand, as described in the Substitute Claims, the TAC receives a first call request,
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`without yet answering it, then the TAC initiates a second call request. Id. These are
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`separate and distinct requests, not one request that is passed from one switch to
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`another. Id. After the second call is answered, the TAC itself answers the first call
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`Paper No. 38
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`and connects the two calls. Id. Petitioner’s expert agrees with this common
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`understanding of a first call/second call. ForysDep at 77:15-25; 79:1-25; 82:4-86:23.
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`In a traditional SS7 system, there is no TAC. ReplyDec, ⁋ 42.
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`
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`Petitioner argues that Wegner discloses these limitations, but the alleged two
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`call requests are really a single request where there is no teaching of two separate
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`answers for two separate calls. Resp. at 19-20; ReplyDec, ⁋ 43. Fig. 11 of Wegner
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`shows a single call between phone 16a and 16b. If Fig. 11 were representative of the
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`invention described in the Substitute Claims (assuming ViSSP 50 corresponds to the
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`TAC), one would see two separate call flows – one between phone 16a and ViSSP 50
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`(the claimed fist call) and one between ViSSP 50 and phone 16b. Instead, a single
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`call request passes through ViSSP 50. ReplyDec, ⁋ 43.
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`
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`Petitioner also relies on Schumacher, Scherer and MeLampy, which suffer from
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`similar defects. ReplyDec, ⁋ 44. Schumacher and MeLampy both tout the ability to
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`“redirect” a call without “tying up” two trunks, which confirms there is but a single
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`call. Id. This functionality is very different than what is recited in the Substitute
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`Claims – a first call and a second call to the TAC (i.e., two calls) Id. Scherer, at most,
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`discusses receiving calls and placing calls, but never discloses placing a second call
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`in response to receiving the first call, then connecting the calls together. Id.
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`Finally, contrary to Petitioner’s arguments, Lamb does not disclose the first
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`call/second call limitations. ReplyDec, ⁋ 45. Unlike the Substitute Claims, Lamb has
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`Paper No. 38
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`
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`the first call being answered before the second call is placed. See Lamb at 31:30-35
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`(“When the [the TNS] detects . . . that a person (the user) has picked up the handset
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`of user telephony device 106, the phone switch 202-2 under control of the [TNS] can
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`place a second call connection 232 to the user telephony device 108 . . . .”). In other
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`words, a second call is placed only after a person “picks up” the handset to which the
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`first call is placed. ReplyDec, ⁋ 45. The Substitute Claims, however, require a second
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`call to be placed before the first one is answered. ReplyDec, ⁋ 45.
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`Furthermore, Lamb actually describes two outbound calls (from the perspective
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`of the TNS). ReplyDec, ⁋ 46. Specifically, Lamb describes the TNS causing phone
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`106 to ring first (Lamb at 31:27-28), then causing phone 108 to ring second (id. at
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`31:33-38). In contrast, the Substitute Claims require the TAC to receive a first call
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`request, then initiate a second call.
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`
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`Lastly, Lamb joins the first and second calls together as soon as the second call
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`is placed. Id. at 31:38-44 (“Once the [TNS] has caused the phone switch 202-2 to
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`place the call connections 231 and 232, the telecommunications network server 202-
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`1 can instruct the phone switch 202-2 to bridge the two connections 231 and 232
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`together thus creating a single telecommunications session”); ReplyDec, ⁋ 47. But,
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`the Substitute Claims require that the calls be joined when the second call is answered.
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`In sum, Petitioner fails to disclose any art that describes a device similar to a
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`TAC that receives a first call request, then sends out a second, independent call
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`Paper No. 38
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`request without yet answering the first call. ReplyDec, ⁋ 48. Wegner, Schumacher
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`and MeLampy only disclose a single call that traverses an alleged TAC, Scherer
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`discloses independent inbound and outbound calls but fails to link them together, and
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`Lamb discloses two outbound calls when the Substitute Claims call for both an
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`inbound and outbound call. Id. Further, the Substitute Claims would not have been
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`obvious in view of O’Neal nor does Petitioner make any effort to provide any
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`meaningful analysis on obviousness. Id.
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`V. The PBX Art – Blaze, Burke, and Fuentes
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`While Petitioner did discover some art that shows a PBX connected to a tandem
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`switch, these arrangements are a far cry from the TAC in Substitute Claims and the
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`’777 Patent. As described in the ’777 Patent, the TAC attaches to existing tandem
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`switches in the PSTN to provide enhanced functionality. See, e.g., ’777 Patent at
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`4:40-44. The TAC is not shown directly connected to telephones, but either routes
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`calls to phones via the PSTN or a packet switched network. The PBXs in the PBX
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`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 connected to
`
`
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`10
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`

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`Case IPR2016-01258
`Patent 7,764,777
`
`telephones 130 and 131 and toll switch 110); Fuentes, Fig. 1 (illustrating PBX 30
`
`Paper No. 38
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`
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`connected to telephone 48 and describing a connection to a toll switch (4:62-65));
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`ReplyDec, ⁋ 49. Petitioner’s expert acknowledges that this art is the claimed edge
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`switch in the Substitute Claims. ForysDep at 6:10-21. Accordingly, it would not have
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`been obvious to modify O’Neal with Blaze, Burke, or Fuentes, nor has Petitioner
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`made any meaningful attempt as to how or why O’Neal could be modified or
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`combined to read on the limitations of the Substitute Claims. ReplyDec, ⁋ 49.
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`VI. Written Description and New Matter Objections
`Petitioner complains that Patent Owner’s Ex. 2041 is insufficient to establish
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`where in the ’777 Patent (and its parent applications) written description support
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`exists for the Substitute Claims. Resp. at 4-6. Petitioner cites to IPR2013-00155
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`(Paper 18) for the proposition that “mere citation to the original disclosure, without
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`any explanation” is inadequate. Id. at p. 5. Petitioner, however, neglected to quote
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`the phrase immediately before “mere”—“under the circumstances.” This decision
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`was therefore limited to the facts of the case and is not a general statement of the law.
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`Here, Patent Owner’s amendments to the claims largely use the exact words and
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`phrases cited to by Patent Owner in Ex. 2041, and, based on the excerpts included in
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`Ex. 2041, it is clear that the inventions described by the Substitute Claims are
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`supported. See CBM2015-00040, Paper 16 at 3-5 (listing support for an amended
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`claim that was allowed in Paper 34 at 56-60 of the same proceeding and which is less
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`11
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`Case IPR2016-01258
`Patent 7,764,777
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`detailed than that provided by Patent Owner in Ex. 2041).
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`
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`Paper No. 38
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`
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`Petitioner also claims that the Substitute Claims add subject matter not
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`disclosed in the specification of the ’777 Patent. Specifically, Petitioner complains
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`about the “answering” step. Resp. at 6. The terms “answering” and “terminating”
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`are equated in the ’777 Patent’s specification. ’777 Patent at 4:60. The specification
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`contemplates a subscriber 12 “terminat[ing] (or answer[ing])” a call placed to
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`subscriber 12 on phone 14. These terms are known to a POSA to have the same
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`meaning, when used in the context found in the relevant section of the ’777 Patent.
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`Id.; ReplyDec, ⁋ 50. Notably, Petitioner did not take a position as to how these terms
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`differ (i.e., it said they were different without explaining what else it could mean) –
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`an admission that it means answer in this context. ForysDep at 25:17-31:15.
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`
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`Finally, Petitioner argues that the ’777 Patent does not support the TAC
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`initiating the sending of a request to establish a second call over a packet-based
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`connection. Resp. at 7-8. The underlying applications clearly disclose this limitation
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`where the TAC receives a first call, which in turn initiates a second call where the
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`calls initiated by the TAC can be VoIP calls (bidirectional arrows) via a packet-based
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`connection. See Ex. 2041 (Written Desc Support) at 13, 27, 41. ReplyDec, ⁋ 51.
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`Dated: July 31, 2017
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`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`12
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`Case IPR2016-01258
`Patent 7,764,777
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`Paper No. 38
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 31st day of July, 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Reply In Support of Patent Owner’s Contingent Motion to
`
`Amend has been served in its entirety via email on the following:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Mark D. Passler
`David Brafman
`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`Mark.passler@akerman.com
`David.brafman@akerman.com
`
`
`Dated: July 31, 2017
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`
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`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
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`13
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`

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