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 SUPPLEMENTAL BRIEF
`
`IN OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case IPR2016-01258
`U.S. Patent No. 7,764,777
`
`PETITIONER’S SUPPLEMENTAL BRIEF
`
`IN OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`I.
`
`II.
`
`THE AQUA PRODUCTS DECISION.............................................................1
`
`OVERVIEW OF PROPOSED SUBSTITUTE CLAIMS 47 AND 48 ...........3
`
`III. O’NEAL IN VIEW OF BLAZE AND SCHERER.........................................5
`
`IV.
`
`LAMB............................................................................................................10
`
`i
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`TABLE OF AUTHORITIES
`
`CASES
`
`Aqua Prods., Inc. v. Matal,
`No. 2015-1177, slip op. (Fed. Cir. Oct. 4, 2017) (en banc) ........................1, 2
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.11 .......................................................................................................1
`
`ii
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`LIST OF EXHIBITS
`
`YMax Ex.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`
`1015
`1016
`1017
`
`1018
`1019
`
`1020
`
`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
`
`iii
`
`
`
`YMax Ex.
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`
`1041
`
`1042
`
`1043
`
`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 Communi-
`cations Magazine, Vol. 23, Issue No. 12, Dec. 1995 (“Andrews”)
`Transcript of Deposition of Regis Jerome “Bud” Bates taken on
`May 4, 2017 (“Bates Tr.”)
`Declaration of Dr. Leonard J. Forys in Support of Opposition to Mo-
`tion to Amend (“Forys Dec.”)
`Curriculum vitae of Dr. Leonard J. Forys
`
`iv
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`YMax Ex.
`1044
`1045
`
`1046
`
`Description
`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)
`
`v
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`Pursuant to the Board’s Order on October 19, 2017 (Paper 54), Petitioner
`
`submits this supplemental brief addressing the patentability of substitute claims 47
`
`and 48 in light of the Federal Circuit’s recent decision in Aqua Prods., Inc. v.
`
`Matal, No. 2015-1177, slip op. (Fed. Cir. Oct. 4, 2017) (en banc).
`
`I.
`
`THE AQUA PRODUCTS DECISION
`The court in Aqua Products held that the ultimate burden of persuasion with
`
`respect to the patentability of substitute claims in a motion to amend rests with the
`
`petitioner – not the patent owner. Aqua Products, slip op. at 19.1 Importantly,
`
`however, the court did not alter any of patent owners’ burdens of production under
`
`the various procedural rules promulgated by the Patent Office. Id. at 45-46 (ex-
`
`plaining that, under Rules 42.20 and 42.121, patent owners have the burden to
`
`show that amendments “do ‘not enlarge the scope of the claims of the patent or in-
`
`troduce new matter,’” and are “responsive to at least one ground of unpatentability
`
`at issue in the IPR.”); id. at 21 (“These requirements describe a threshold showing
`
`the Board must deem satisfied before the amended claims can be considered in—
`
`i.e., ‘entered into’—an IPR.”). Likewise, patent owners’ burden to disclose all
`
`known and material prior art pursuant to their duty of candor and good faith re-
`
`mains unchanged. Paper 23, 5-6; 37 C.F.R. § 42.11. Here, Patent Owner failed to
`
`1 Petitioner objects to the Aqua Products decision and hereby reserves its rights to
`
`challenge that decision, as well as any reliance thereon by the Board.
`
`1
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`satisfy many of these (and other) threshold requirements. Mot. Opp., 1-8. Based
`
`on these procedural defects alone, Patent Owner’s Motion should be denied.
`
`While the Board’s Order prohibits the incorporation of arguments or evi-
`
`dence presented in other papers (Paper 54, 6), Petitioner notes that the Federal Cir-
`
`cuit made clear that the Board’s “final substantive decision [on the patentability of
`
`amended claims] must be based on the entirety of the record.” Aqua Products,
`
`slip op. at 60-62 (emphasis added). This includes all arguments and evidence be-
`
`fore the Board in the proceeding, including those bearing on the patentability of the
`
`original claims. See id. Accordingly, although Petitioner will not incorporate any
`
`arguments by reference, it does not waive and, in fact, believes that the Board must
`
`consider, the arguments raised in the Petition and Reply concerning the unpatenta-
`
`bility of the original claims (e.g., the arguments based on O’Neal).2
`
`2 Petitioner also objects to and reserves the right to challenge the Board’s Order
`
`based on the Aqua Products decision. (Paper 54). Given the substantial differ-
`
`ences between the burden of showing patentability pre-Aqua Products and show-
`
`ing unpatentability thereunder, Petitioner objects to the Board limiting this Sup-
`
`plemental Brief to only 15 pages, while also precluding Petitioner from including
`
`claim charts, incorporating by reference anything from prior briefing, submitting
`
`expert testimony, or addressing limitations not in the original claims. (Id. at 6-7).
`
`2
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`II. OVERVIEW OF PROPOSED SUBSTITUTE CLAIMS 47 AND 483
`The Preamble – The amended preambles include two substantive modifica-
`
`tions, namely i) replacing the “switching facility” with “a particular PSTN tandem
`
`switch”; and ii) replacing the “controlling device” with a “tandem access control-
`
`ler” (TAC). Ex. 2062, 1, 3; Mot., 3. These two components – discussed as part of
`
`the “TAC feature” in the Opposition – are then recited throughout the body of the
`
`amended claims. This TAC feature was addressed in detail in Petitioner’s Opposi-
`
`tion and, therefore, will not be revisited here. The remainder of the preamble is di-
`
`rected to certain standard components of the PSTN architecture (e.g., PSTN com-
`
`munication network, telephones, edge switches, etc.), which, as Patent Owner
`
`acknowledges, were commonplace long before the time of the ’777 patent. See
`
`Mot. Opp., 21; PO Resp., 4-8; Ex. 2022, ¶36-39; Ex. 2040, ¶33-38. Accordingly,
`
`in order to satisfy the preambles of claims 47 and 48, the prior art must teach: (1) a
`
`conventional PSTN Architecture; and (2) a TAC in communication with a PSTN
`
`tandem switch (i.e., newly added TAC feature).
`
`The “Receiving” Step – The first claim step requires “receiving a first re-
`
`quest to establish the first incoming call” at the TAC, “which is intended for a
`
`specified recipient.” Ex. 2062, 1, 3. According to Patent Owner, this step is satis-
`
`3 Claims 47 and 48 are virtually identical and, therefore, are discussed together,
`
`with any differences in claim language addressed below where applicable.
`
`3
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`fied when the TAC receives “call signaling” (e.g., SS7 signaling) for an incoming
`
`call. Mot., 7-8; Ex. 2040, ¶60-61 & ¶115 (describing use of SS7 signaling as con-
`
`ventional). This step was also amended to require that “communications . . . be-
`
`tween the [TAC] and the particular PSTN tandem switch occur without passing
`
`through any of the edge switches.” This TAC feature was one of two new features
`
`relied upon by Patent Owner to argue the patentability of claims 47 and 48, and, as
`
`discussed above, was addressed in detail in Petitioner’s Opposition.
`
`The “Identifying” Step – This claim step has two components, namely,
`
`that: 1) “control criteria associated with the specified recipient” are identified at the
`
`TAC; and 2) the control criteria were entered via “a web-based interface.”
`
`The “Initiating” Step – This claim step is centered around making a second
`
`call. Specifically, this step requires “initiating the sending of a request to establish
`
`a second call” at the TAC that is “in accordance with the control criteria.” 4 Like
`
`with the first call above, this request to establish a second call is met through the
`
`use of “call signaling” by the TAC based on the identified control criteria. The
`
`claims were also amended to require that this Initiating Step be done “without yet
`
`answering the first incoming call.” This call sequencing feature, however, is al-
`
`4 Claim 48 also specifies that this request be sent via a “packet-based” connection,
`
`which is not found in claim 47. C.f. Ex, 2062, 1 with Ex. 2062, 3; see also, Pet., 9.
`
`4
`
`
`
`IPR2016-01258
`U.S. Patent No. 7,764,777
`ready encompassed within the newly added “Answering” step, which, as discussed
`
`directly below, was addressed in Petitioner’s Opposition.5
`
`The “Answering” Step – This step is entirely new and requires that the first
`
`call be answered “when the second call is answered by a communication device
`
`associated with the specified recipient.” This new “answering” step – the only
`
`other feature relied upon by Patent Owner to argue the patentability of claims 47
`
`and 48 – was referred to as the “call sequencing” feature and addressed in detail in
`
`Petitioner’s Opposition.
`
`The “Connecting” Step – The final claim step requires that the first and
`
`second calls be connected at the TAC “after the second call is received [and an-
`
`swered] by the communication device.”6
`
`III. O’NEAL IN VIEW OF BLAZE AND SCHERER
`
`As set forth in the Petition, O’Neal discloses all of the original elements and
`
`features recited in issued claims 18 and 37, upon which substitute claims 47 and 48
`
`are based. Indeed, in the event the Board is considering Patent Owner’s Motion to
`
`5 Indeed, it stands to reason that, in order to answer the first call “when” the sec-
`
`ond call is answered, the second call must have been initiated “without yet answer-
`
`ing the first call.”
`
`6 Claim 48 includes a wherein clause that further equates “answering” and “receiv-
`
`ing” of the second call.
`
`5
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`Amend, it has necessarily already determined that O’Neal anticipates and/or ren-
`
`ders obvious claims 18 and 37. For ease of reference, the following demonstrates
`
`where each such claim element and feature is found in O’Neal:
`
`The Preamble – O’Neal teaches a “unified messaging system” (UMS) that
`
`processes incoming calls to subscribers of the UMS’s service, and “rerout[es]” the
`
`calls “in accordance with a subscriber's communication option setting,” (i.e., con-
`
`trol criteria) such as by “forwarding” the call to the subscriber via an “alternate
`
`number.” See, e.g., Ex. 1003, 9:55-58, 11:40-51, 15:14-43, FIG. 1. These calls are
`
`received, processed, and initiated, using the PSTN. Id. at 9:10-19. Accordingly,
`
`O’Neal teaches the standard PSTN Architecture as recited in the Preamble.
`
`O’Neal also teaches a “controlling device” in communication with the PSTN. Id.
`
`at 8:41-66 (“telephony server 126 … handles the exchange of information with the
`
`user via the telephony-centric network [and] facilitate[s] interaction between uni-
`
`fied messaging system 101 and telephony-centric network 129”), 9:10-30 (“Tele-
`
`phone link 128 represents the telephone communications channels for transmitting
`
`and receiving telephone signals between unified messaging system 101 and teleph-
`
`ony-centric network 129,” which may be a “Public Service Telephone Network
`
`6
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
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`(PSTN)”), FIG. 1 (Public Telephone Network 129).7
`
`The “Receiving” Step – O’Neal’s UMS is able to receive call signaling
`
`from a switch on the PSTN associated with an incoming call to a subscriber of the
`
`UMS service. For example, O’Neal teaches the UMS may use a Dialogic board
`
`model “D 240 SC-T1,” which receives ISDN signaling using T-1 ISDN PRI span
`
`with 24 channels of voice processing. Ex. 1003, 8:41-62, 9:10-30 (“telephony-
`
`centric network 129 may represent a wired telephone network popularly known as
`
`Public Service Telephone Network (PSTN)”).8 As discussed below, O’Neal allows
`
`for this incoming call to be forwarded according to various options chosen by the
`
`subscriber.
`
`The “Identifying” Step – O’Neal teaches that a subscriber has “communi-
`
`7 Commensurate with the newly-added TAC feature, which will not be addressed
`
`herein, a POSITA would have found it obvious to directly connect O’Neal’s UMS
`
`to a PSTN tandem switch, thereby making it a “tandem access controller in com-
`
`munication with a PSTN tandem switch.”
`
`8 Commensurate with the newly-added “call-sequencing” feature, which will not
`
`be addressed herein, it would also have been obvious to a POSITA to modify
`
`O’Neal’s UMS to receive/initiate SS7 signaling (e.g., instead of, or in addition to,
`
`ISDN signaling).
`
`7
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`cation options” (i.e., control criteria), including “call forwarding,” “‘follow me’
`
`service,” or “alternate number service,” which are stored by the UMS in a data-
`
`base. Ex. 1003, 7:45-65, 2:44-64, 11:13-12:65, FIGS. 3-4. In O’Neal, the teleph-
`
`ony server uses the “telephone signals” of the call “to decide how to handle the
`
`[incoming call] using the communication option settings obtained from the sub-
`
`scriber communication profile database.” Id. at 8:41-9:9, 13:10-15. O’Neal also
`
`teaches that the subscriber “access[es] the unified messaging system web site, us-
`
`ing a unified messaging system web address” to “review and/or modify [their]
`
`communication options.” Ex. 1003, 16:36-64 (emphasis added), 7:45-8:22, FIG. 1
`
`(item 122).
`
`The “Initiating” Step9 – O’Neal discloses that the control criteria for a sub-
`
`scriber may include a “call forwarding” option, which, when enabled, causes calls
`
`to the subscriber to be forwarded to a particular number, such as “1234567890.”
`
`Ex. 1003, 17:11-49 (“the telephony server receives the forwarding number from
`
`the database server and initiates an outgoing call (step 706) to the forwarding num-
`
`9 O'Neal also discloses that its “call forwarding option” can be used with “any
`
`computer…equipped with…appropriate software to enable digital/Internet teleph-
`
`ony,” e.g., to initiate the second/forwarded call via a “packet-based” connection, as
`
`required by claim 48. Ex. 1003, 19:1-8; Ex. 1002, ¶127-31.
`
`8
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`ber on another port (e.g., one of the outgoing lines as seen in FIG. 2).”); see also
`
`id. at 11:40-51, FIGS. 1, 2-4, and 7. This initiates the sending of a request to estab-
`
`lish the second call to the forwarding number (e.g., ISDN or SS7 signaling).
`
`The “Answering” Step – This is an entirely new step that was added to
`
`substitute claims 47 and 48 pursuant to Patent Owner’s Motion to Amend. This
`
`newly added “call sequencing” feature is addressed in detail in Petitioner’s Opposi-
`
`tion.
`
`The “Connecting” Step – O’Neal discloses that “[i]f the outgoing call [i.e.,
`
`the second call] is successfully connected to the telephony server (step 708) [i.e.,
`
`has been answered], the telephony server then connects the port of the incoming
`
`call [i.e., the first call] with the port of the outgoing call (step 710) to complete the
`
`end-to-end connection (step 712).” Ex. 1003, 17:29-42. Thus, O’Neal discloses
`
`connecting the two calls after the second call is received and answered.
`
`To the extent that the newly added TAC and “call sequencing” features are
`
`not taught by O’Neal, it would have been obvious to a POSITA to: (i) connect
`
`O’Neal’s PBX-based UMS system to a PSTN tandem switch as expressly taught
`
`by the PBX Art, including Blaze; and (ii) modify O’Neal’s system to use and re-
`
`ceive SS7 signaling, as expressly taught by the SS7 art, including Scherer. These
`
`aspects, which are discussed in detail in the Opposition, will not be further revisit-
`
`ed herein. Accordingly, O’Neal in view of Blaze further in view of Scherer ren-
`
`9
`
`
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`U.S. Patent No. 7,764,777
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`ders claims 47 and 48 unpatentable.
`
`IV. LAMB
`
`Petitioner’s Opposition demonstrates in detail why the newly added TAC
`
`and “call sequencing” features in claims 47 and 48 would have been obvious based
`
`on Lamb. As shown below, Lamb also teaches each of the claim elements and fea-
`
`tures that were originally found in claims 18 and 37:
`
`The Preamble – Lamb teaches a telecommunication system that bridges
`
`communications between connectionless (e.g., Internet) and connection-based
`
`networks (e.g., PSTN), enabling seamless communications across both networks
`
`for voice calls. Ex. 1030, 10:20-46, 27:40-46 (“The system… includes one or
`
`more public telephone network interfaces 210 which allow the public phone switch
`
`202-2, under direction and control of the telecommunications network server 202-1
`
`and the telecommunications hosting server 203…. to form call connections… on
`
`the PSTN 101”), 31:58-62, 1:36-3:65, FIGS. 1, 3. Accordingly, Lamb teaches the
`
`standard PSTN Architecture as recited in the Preamble. Lamb also teaches that its
`
`TNS/THS (“controlling device”) are in communication with the PSTN switch. Ex.
`
`1030, 27:40-46, 21:58-67, 26:47-55, FIGS. 1, 3.10
`
`10 Commensurate with the newly-added TAC feature, which will not be addressed
`
`herein, a POSITA would have understood that Lamb’s public phone switch 202-2
`
`is (or could be) a PSTN tandem switch, thereby making Lamb’s THS/TNS a “tan-
`
`10
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`The “Receiving” Step – Lamb’s system uses call signaling, such as SS7
`
`signaling, to receive and initiate calls via the PSTN. Ex. 1030, 12:50-55 (“A call
`
`signaling message is generally a specific signaling protocol message such as a
`
`message provided by the PINT or SS7 protocols that is transferred between the tel-
`
`ecommunications hosting server and the telecommunications network server”).
`
`Lamb also teaches that the THS receives signaling from the PSTN through the
`
`public phone switch 202-2. Id. at 16:53-64 (“a method comprising the steps of re-
`
`ceiving, in a telecommunications hosting server coupled to a connectionless net-
`
`work, at least one first call signaling message from the connection-based net-
`
`work”); Ex. 1045, 16:8-17:9 (PO’s expert testifying that the PSTN is a connection-
`
`based network), Mot. Obsv., 2; Ex. 1042, ¶60-62, and 83 (discussing call signaling
`
`in Lamb).
`
`The “Identifying” Step – Lamb teaches processing calls using a wide range
`
`of control criteria, e.g., time-based, status-based, and originating phone number
`
`based criteria. Ex. 1042, ¶98-100 and 111 (discussing call control criteria in
`
`Lamb); Ex. 1030, 47:20-40, 51:42-60 (“the user agent 301-1 determines what the
`
`preferred call connection destination identifier is for the user of user agent 301-1…
`
`dem access controller in communication with a PSTN tandem switch,” as newly
`
`required by claims 47 and 48.
`
`11
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`user[s] are able to program their user agents 301 to be aware of certain telephony
`
`devices (one or more) having call destination identifiers on either the PSTN 101 or
`
`the computer network 200 to which a user is associated.”), 61:19-32. Lamb also
`
`teaches that the subscriber sets these call control criteria using a web-based inter-
`
`face 250. Id. at 29:8-25(“user interface 250 may be, for example, a web browser
`
`interface”) (emphasis added), 34:24-51 (“the invention allows a user to program,
`
`instruct or otherwise ‘tell’ his or her associated user agent 301 (via the user agent
`
`interface 250) that he or she will be near another phone (e.g., reachable at another
`
`phone number) on the PSTN 101 for a specific time period”), 29:46-52 (“user
`
`agent interface 250 and user agents 301 can operate in a client/server model using,
`
`for example, web-based data exchange and messaging protocols such as the hyper-
`
`text transfer protocol (HTTP), Java Beans, CORBA, SMTP, Multicasting, SSL or
`
`other Internet secure or non-secure messaging and data exchange protocols”),
`
`41:41-67; Ex. 1042, ¶82 (citing to Lamb’s “Internet-based user agent”).
`
`The “Initiating” Step11 - Lamb discloses a disposable phone number which
`
`11 Lamb also discloses that call signaling messages may be forwarded to create
`
`VOIP (i.e., packet-based) connections, as required by claim 48. Ex., 1030, 17:9-17
`
`(“forwarding the at least one second call signaling message to the computer te-
`
`12
`
`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`is used to accept first incoming calls on a public phone number and then make sec-
`
`ond calls to the subscriber’s private number. Ex. 1030, 61:10-32 (“a user… can
`
`provide a… temporary phone number to the user agent 301 along with an associa-
`
`tion of this temporary phone number to an actual user telephony device (e.g., 106)
`
`that exists, for example, on the PSTN 101 and that is coupled to the phone
`
`switch”). Calls to the temporary number are processed according to the control
`
`criteria. Id. at 61:19-31 (the “user can instruct (i.e., can program) the user agent
`
`301 that this temporary phone number can only be called, for example, a certain
`
`number of times or for a certain total duration of time before it expires and/or that
`
`the temporary PSTN telephone number can only be called by certain other users”);
`
`61:33-62:9.
`
`As discussed above, calls in Lamb are initiated via call signaling to the pub-
`
`lic phone switch. Id. at 12:66- 13:11(this arrangement “generates the at least one
`
`call signaling message and forwards the call signaling message indicating the at
`
`least two call connections to a telecommunications network server coupled to the
`
`connection-based network… such that the telecommunications network server can
`
`create and maintain the at least two call connections to allow the at least two dif-
`
`lephony device coupled to the connection-less network to establish a voice-over-
`
`computer-network session[,which] may be… a VOIP connection”).
`
`13
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`ferent telephony devices on the connection-based network to perform telecommu-
`
`nications with one another.”) (emphasis added).
`
`The “Answering” Step – This is an entirely new step that was added to
`
`substitute claims 47 and 48 pursuant to Patent Owner’s Motion to Amend. This
`
`newly added “call sequencing” feature is addressed in detail in Petitioner’s Opposi-
`
`tion.
`
`The “Connecting” Step – Lamb teaches connecting the two calls after the
`
`second call is received and answered for both PSTN and/or VOIP calls. Ex. 1042,
`
`¶102-03 (discussing connecting two calls in Lamb); Ex. 1030, 31:52-58 (“If and
`
`when a user of the user telephony device 108 answers the ringing handset of the
`
`user telephony device 108, the user telephony devices 106 and 108, the call con-
`
`nections 131 and 132, and the phone switch 202-2 under control of the telecom-
`
`munications network server 202-1 place the two users in voice communications
`
`with each other”) (emphasis added), 31:38-47, 48:20-26 (“When each connection
`
`is in use by a respective user, the telecommunications network server 202-1 can
`
`provide a link to the VOIP call connection and can instruct the public phone switch
`
`202-2 to bridge the two call connections [so that] the original calling user can per-
`
`form telecommunications using a PSTN-based call connection (e.g., 231) while the
`
`called user uses a VOIP connection.”) (emphasis added), 48:65-49:8, 52:5-14.
`
`Thus, Lamb teaches connecting the two calls after the second call is received and
`
`14
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`
`answered.
`
`As discussed in detail in Petitioner’s Opposition, the TAC and “call se-
`
`quencing” features – i.e., the only two newly added features relied upon by Patent
`
`Owner to argue the patentability of substitute claims 47 and 48 – are also expressly
`
`taught by Lamb or, at a minimum, would have been obvious to a POSITA based on
`
`the teachings of Lamb and the knowledge of a POSITA at the time of the ‘777 pa-
`
`tent. Accordingly, Lamb renders claims 47 and 48 unpatentable.
`
`Date: October 31, 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
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`15
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`
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`IPR2016-01258
`U.S. Patent No. 7,764,777
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S SUP-
`
`PLEMENTAL BRIEFING IN OPPOSITION TO PATENT OWNER’S MOTION
`
`TO AMEND was served electronically via e-mail on October 31, 2017, in its en-
`
`tirety on the following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`Thomas C. Cecil
`tom@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: October 31, 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
`
`
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