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 OBSERVATIONS ON CROSS-EXAMINATION OF
`PATENT OWNER’S REPLY WITNESS REGIS J. “BUD” BATES
`
`
`
`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 OBSERVATIONS ON CROSS-EXAMINATION OF
`PATENT OWNER’S REPLY WITNESS REGIS J. “BUD” BATES
`
`
`
`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
`
`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
`
`i
`
`
`
`YMax Ex.
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`
`1041
`
`1042
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`Description
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`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
`Communications Magazine, Vol. 23, Issue No. 12, Dec. 1995
`(“Andrews”)
`Transcript of Deposition of Regis Jerome "Bud" Bates taken on May
`4, 2017
`Declaration of Dr. Leonard J. Forys in Support of Opposition to
`Motion to Amend
`
`ii
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`YMax Ex.
`1043
`1044
`1045
`
`1046
`
`Description
`Curriculum vitae of Dr. Leonard J. Forys
`Affidavit of Alexander D. Walden
`Transcript of Deposition of Regis "Bud" Bates taken on August 9,
`2017
`Declaration of Regis J. “Bud” Bates in Support of Patent Owner’s
`Reply in Support of Motion to Amend (Ex. 2070, IPR2016-01260)
`
`iii
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`Pursuant to the stipulation of the parties dated July 6, 2017 (paper no. 34 at
`
`2), Petitioner respectfully makes the following observations regarding the August
`
`9, 2017 cross-examination testimony of Patent Owner’s Reply declarant, Regis J.
`
`Bates (Ex. 1045):
`
`1.
`
`In Exhibit 1045, on page 7, lines 7-18, the witness testified that in preparing
`
`his declarations in support of the Patent Owner’s replies he “tried not to read [the
`
`references] in full --if it only cited to a specific quote.” The testimony is relevant
`
`because it demonstrates that Mr. Bates’ testimony regarding the scope of the
`
`teachings of the prior art cited in Petitioner’s Opposition to the Motion to Amend
`
`should be given little to no weight.
`
`2.
`
`In Exhibit 1045, on page 8, line 21 – page 9, line 11, the witness testified
`
`that he didn’t believe that Lamb used the term “edge switch.” This testimony is
`
`relevant to the argument on pages 12-13 of Petitioner’s Opposition to the Motion
`
`to Amend (paper no. 32) and to the argument on page 1 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). The testimony is relevant because
`
`it supports Petitioner’s argument that Lamb’s public phone switch 202-2 may be a
`
`tandem switch. See also Exhibit 2071, p. 43, l. 25 – p. 46, l. 3 (Dr. Forys testifying
`
`regarding Lamb’s options for placement of the TNS). This testimony is also
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`relevant because it undermines Patent Owner’s argument that Lamb’s phone
`
`switch 202-2 is limited to being an edge switch. See also, Lamb, 27:17-18
`
`(describing public phone switch 202 as a “public phone switch”); Ex. 2071, p. 89,
`
`l. 18-23.
`
`3.
`
`In Exhibit 1045, on page 16, line 8 – page 17, line 9, the witness testified
`
`that Lamb describes that its TNS receives signaling, such as SS7 signaling, from
`
`the PSTN. This testimony is relevant to the argument on page 1 of Patent Owner’s
`
`Reply in Support of the Motion to Amend (paper no. 38). The testimony is
`
`relevant because it contradicts Patent Owner’s argument that Lamb’s phone switch
`
`202-2 is limited to being an edge switch. See also, Lamb, 20:46-58, 12:50-65, and
`
`24:28-38 (describing how Lamb’s THS receives call signaling messages from the
`
`connection-based network); IPR2016-01260 Ex. 2070, ¶ 40 (“O’Neal and Lamb
`
`disclose their respective call establishment methodologies in the context of a
`
`controller connected to an edge switch. In such an arrangement, the controller will
`
`not receive call signaling (i.e., a call request), since such signaling does not pass
`
`beyond edge switches”); See also Exhibit 2071, p. 57, l. 10 – p. 59, l. 24 (Dr. Forys
`
`testifying why one would have connected Lamb’s system to an access tandem).
`
`2
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`4.
`
`In Exhibit 1045, on page 19, line 18 – page 20, line 7, the witness testified
`
`that STPs are not directly connected to telephones. This testimony is relevant to
`
`the argument on pages 13-15 of Petitioner’s Opposition to the Motion to Amend
`
`(paper no. 32) and to the argument on pages 4-5 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it supports Petitioner’s argument that an STP is an example of the claimed
`
`tandem switch under Patent Owner’s own interpretation of the term. See Patent
`
`Owner’s Motion to Amend (paper no. 27), p. 7 (“‘PSTN tandem switch’ is not an
`
`edge switch and does not connect directly to the telephones of subscribers”). This
`
`testimony is also relevant because it undermines Patent Owner’s arguments to the
`
`contrary.
`
`5.
`
`In Exhibit 1045, on page 24, line 16 – page 25, line 4, the witness testified
`
`that Patent Owner’s construction for tandem switch does not explicitly require the
`
`transmission of voice. This testimony is relevant to the argument on pages 13-15
`
`of Petitioner’s Opposition to the Motion to Amend (paper no. 32) and to the
`
`argument on pages 5 of Patent Owner’s Reply in Support of the Motion to Amend
`
`(paper no. 38). This testimony is relevant because it supports Petitioner’s
`
`argument that an STP is an example of the claimed tandem switch under Patent
`
`Owner’s own construction of the term. See Patent Owner’s Motion to Amend
`
`3
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`(paper no. 27), p. 5 (“Patent Owner submits a ‘PSTN tandem switch’ be construed
`
`as ‘as a switch in the PSTN that interconnects other PSTN tandem switches and
`
`edge switches’”). This testimony is also relevant because it undermines Patent
`
`Owner’s arguments to the contrary. See Patent Owner’s Reply in Support of the
`
`Motion to Amend (paper no. 38), p. 5 (“an STP cannot carry voice traffic while
`
`tandem switches do.”); Ex. 2070, ¶ 38-39.
`
`6.
`
`In Exhibit 1045, on page 25, lines 9-24, the witness testified that STPs are
`
`connected to both edge switches and tandem switches. This testimony is relevant
`
`to the argument on page 13-15 of Petitioner’s Opposition to the Motion to Amend
`
`(paper no. 32) and to the argument on page 4-5 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it supports Petitioner’s argument that an STP is an example of the claimed
`
`tandem switch under Patent Owner’s own construction of the term. See Patent
`
`Owner’s Motion to Amend (paper no. 27), p. 5 (“Patent Owner submits a ‘PSTN
`
`tandem switch’ be construed as ‘as a switch in the PSTN that interconnects other
`
`PSTN tandem switches and edge switches’”), Allen, FIG. 1; Ex. 2071, p. 88, l. 17-
`
`21 (Dr. Forys testifying that an STP connects to both tandem and edge switches).
`
`This testimony is also relevant because it undermines Patent Owner’s arguments to
`
`the contrary.
`
`4
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`7.
`
`In Exhibit 1045, on page 27, line 13 – page 28, line 14, the witness testified
`
`that Lamb describes items 231 and 232 as call connections not telephone lines.
`
`This testimony is relevant to the argument on page 2 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it undermines Patent Owner’s arguments that items 231 and 232 of Lamb
`
`are telephone lines. See Lamb, 31:22-46 (describing how Lamb’s TNS controls
`
`public phone switch to “create a call connection 231”), 1:36-45 (discussing
`
`telephone lines), FIG. 4.
`
`8.
`
`In Exhibit 1045, on page 28, line 15 – page 32, line 13, the witness testified
`
`that Lamb describes creating a call connection 231 and not a physical construct.
`
`This testimony is relevant to the argument on page 2 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it undermines Patent Owner’s arguments that items 231 and 232 of Lamb
`
`are telephone lines. See Lamb, 31:22-46 (describing how Lamb’s TNS controls
`
`public phone switch to “create a call connection 231”), 1:36-45 (discussing
`
`telephone lines), FIG. 4; Ex. 2071, p. 50, l. 22 – p. 53, l. 19 (Dr. Forys testifying
`
`that items 231 and 232 of Lamb are not telephone lines).
`
`5
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`9.
`
`In Exhibit 1045, on page 34, line 22 – page 39, line 8, the witness testified
`
`that the tandem switch of the ‘777 patent performs functions (via the TAC) similar
`
`to those performed by Lamb’s public phone switch 202-2 (via Lamb’s TNS). This
`
`testimony is relevant to the argument on page 12-13 of Petitioner’s Opposition to
`
`the Motion to Amend (paper no. 32) and to the argument on page 3-4 of Patent
`
`Owner’s Reply in Support of the Motion to Amend (paper no. 38). The testimony
`
`is relevant because it supports Petitioner’s argument that Lamb’s public phone
`
`switch 202-2 may be a tandem switch. See Lamb, 31:58-62, 27:17-18 (describing
`
`public phone switch 202 as a “public phone switch”). This testimony is also
`
`relevant because it undermines Patent Owner’s argument that Lamb’s phone
`
`switch 202-2 is limited to being an edge switch.
`
`10.
`
`In Exhibit 1045, on page 40 lines 3-21, the witness testified that
`
`“terminates” as used in the ‘777 patent means “stops the ringing.” In Exhibit 1045,
`
`on page 43, line 20 – page 45, line 5 the witness then testified that in answering a
`
`call “an answer message is sent across the SS7 network.” In Exhibit 1045, on page
`
`45, lines 6-15, the witness also testified that for terminated calls in the ‘777 patent
`
`there is no answer supervision. This testimony is relevant to the argument on page
`
`6 of Petitioner’s Opposition to the Motion to Amend (paper no. 32) and to the
`
`argument on page 12 of Patent Owner’s Reply in Support of the Motion to Amend
`
`6
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`(paper no. 38). This testimony is relevant because it supports Patent Owner’s
`
`argument that “terminating” is different from “answering” in the ‘777 patent. See
`
`‘777 patent, Abstract, 3:3-7, and 11:7-10; Ex. 2071, p. 27, l. 17 – p. 34, l. 25 (Dr.
`
`Forys generally testifying how the ‘777 patent treats terminating different from
`
`answering), p. 26, l. 17 – p. 27, l. 3 (testifying that an SS7 answer message is
`
`transmitted when a call is answered), p. 27, l. 9-25 (testifying how in the abstract
`
`of the ‘777 patent “terminate” means to “end the call”). This testimony is also
`
`relevant because it undermines Patent Owner’s arguments to the contrary.
`
`11.
`
`In Exhibit 1045, on page 50, line 10 – page 51, line 15, the witness testified
`
`that the substitute claim in Exhibit 2062 (see Ex. 1045, p. 47, l. 19 – p. 49, l. 17)
`
`did not have any requirements regarding the user answering the first call. This
`
`testimony is relevant to the argument on page 9 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it undermines Patent Owner’s arguments that because a user answers the
`
`first call, Lamb cannot teach that the first call is answered at the TAC after the
`
`second call.
`
`12.
`
`In Exhibit 1045, on page 52, line 1 – page 53, line 5, the witness testified
`
`that if a user hears ringing the call has not been answered. This testimony is
`
`7
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`relevant to the argument on page 21 of Petitioner’s Opposition to the Motion to
`
`Amend (paper no. 32). The testimony is relevant because it supports Petitioner’s
`
`argument that Lamb teaches a first call that is answered after a second call is
`
`answered. See Lamb, 31:46-52 (“The first user (of user agent interface 250) that is
`
`listening on the telephony device 108 is able to hear the ringing of the user
`
`telephony device”).
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`8
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`OBSERVATIONS ON CROSS-EXAMINATION OF PATENT OWNER’S
`
`REPLY WITNESS REGIS J. “BUD” BATES and all associated exhibits were
`
`served electronically via e-mail on August 21, 2017, in its entirety on the
`
`following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`PAL-IPR@nelbum.com
`NELSON BUMGARDNER P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
`
`Victor Siber
`VSiber@SiberLaw.com
`Hanna Madbak
`HMadbak@SiberLaw.com
`SIBER LAW LLP
`28 West 44th Street, Suite 604
`New York, NY 10036
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax
`Corporation
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
