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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP, LLC
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun. 22, 2010
`Issue Date: Jun. 4, 2013
`
`Title: BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,457,113 B2
`
`Inter Partes Review No. 2016-01254
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 1
`Cisco Petition Excerpts
`IPR2016-01259
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`C.
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`The Telephone Network
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`The PSTN is an interconnected network of the world’s telephone networks.
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`Id. at ¶¶ 38-40. In the US, the PSTN consists of two levels of interconnected digital
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`circuit switches, class 3 switches and class 5 switches. Id. Class 5 switches are also
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`known as edge switches and serve to connect end-user devices, such as telephones
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`and fax machines, to the PSTN. Id. Class 3 switches are also known as tandem
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`switches and generally provide long distance calling links by interconnecting
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`between edge switches and other tandem switches. Id.; EX1001, 1:42–51.
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`1.
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`Telephone Calls
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`Telephone calls over the telephone network have two parts, signaling and
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`media. EX1002, ¶¶ 38-40. A telephone call is initiated with a call request signal
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`that is routed through the telephone network to an edge switch, which causes the
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`dialed telephone to ring. Id. When a user picks up the telephone, a call accept
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`signal is sent which causes the telephone network to establish the circuit for
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`carrying the call participants’ voices (i.e. media). Id. The telephone call signaling
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`and media generally take different paths through the telephone network. Id.
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`2.
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`Telephone Network Standards
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`In order to allow the PSTN to be interconnected, the International
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`Telecommunications Union (ITU) has published an extensive set of recommended
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`standards for governing the operation of the world’s telephone networks. Id. ¶¶ 44-
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`45. ITU standards govern telephone numbering, signaling, and data transmission
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`7
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 2
`Cisco Petition Excerpts
`IPR2016-01259
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`EX1027, Figs. 2-3, 5-7, 9-10; 3:39-7:10; EX1002 at ¶ 55-60.
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`F.
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`Telephone Calls Over the Internet – VOIP
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`In the 1990s, voice telephone calls began to be carried over the Internet
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`using the Internet Protocol (IP). EX1002, ¶ 61. This became known as VOIP or
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`voice over Internet Protocol. Id. By mid-1999 to 2000, the PSTN and VOIP
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`networks were interconnected and one telephone call could be routed across both
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`the Internet and the PSTN by using protocol converting gateways. EX1002, ¶¶ 61-
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`65, 84-86, 95 (citing EX1004; EX1017-1120; EX1023). VOIP signaling protocols,
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`such as H.323 and the SIP, were standardized between 1998 and 1999. Id. Cable
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`10
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 3
`Cisco Petition Excerpts
`IPR2016-01259
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`16, 1999, and issued September 28, 2004, to Alexander et al. (“Alexander,”
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`EX1006). Alexander is prior art to the ‘113 patent under at least 35 U.S.C. § 102(e)
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`because it is an issued patent that was filed prior to the earliest claimed priority
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`date of the ‘113 patent of May 4, 2000.
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`Alexander teaches a call controller coupled to a packet network and a circuit
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`switched network. EX1006, Figs. 1-2, Abstract. Alexander’s call controller can
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`establish voice communications across both networks and provides call control
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`features such as call forwarding. EX1006, Figs. 2, 5A-B; 1:35-2:27.
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`VII. SUMMARY OF THE ’113 PATENT
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`The ’113 patent depends through continuations and divisionals to application
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`no. 10/426,279, filed Apr. 30, 2003, which in turn is a continuation-in-part of
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`application no. 09/565,565, filed May 4, 2000. EX1001, 1:7–16. As a result, the
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`earliest possible filing date for the ‘113 patent is May 4, 2000.
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`The petitioned claims of the ‘113 patent recite controllers that interface
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`between a packet network and a circuit switched network for establishing a voice
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`communication between two parties and implementing call control features such as
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`call forwarding or blocking. EX1001, cls. 38 and 65.
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`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
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`A.
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`Legal Overview
`Claims in inter partes review proceedings are construed to have their
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`broadest reasonable interpretation. Claim terms that are not construed are given
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 4
`Cisco Petition Excerpts
`IPR2016-01259
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`their plain and ordinary meaning to a POSA at the time in light of the specification
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`and file history. Petitioner applies the plain and ordinary meaning of the petitioned
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`claims to the asserted prior art references in support of grounds 1-4, which involve
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`terms that are readily understood by a POSA upon review of the specification and
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`file histories. Petitioner provides additional explanation of the scope of the plain
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`and ordinary meaning for the claim terms “call data,” and “switching facility,”
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`below and further explanation of the plain and ordinary meaning of these and other
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`claim terms in sections X and XI below as relevant.
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`B.
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`Plain and ordinary meaning of “call data”
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`Petitioned claims 38 and 65 of the ’113 patent includes the term “call data.”
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`EX1001, cls. 38 and 65. Claims that depend from claims 38 and 65 and other
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`claims provide examples of what is included in “call data.” For example claims
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`131-32 and 136-37, which depend from claims 38 and 65, and claims 144-46 and
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`177-78, which depend from claims 143 and 163, provide that call data can include
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`a call request, a telephone number, or an IP address. EX1001, cls. 131-32, 136-37,
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`144-46, 177-78; EX1002, ¶¶ 72-74. Therefore, based on the doctrine of claim
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`differentiation, the plain and ordinary meaning of “call data” at least includes
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`telephone numbers, IP addresses and/or call requests. Petitioner addresses these
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`claim limitations in the context of the detailed claim analysis provided in Sections
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`X and XI below.
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 5
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`IPR2016-01259
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`consists of a plurality of edge switches connected to telephones on one side and to
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`a network of tandem switches on the other. The tandem switch network allows
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`connectivity between all of the edge switches, and a signaling system is used by
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`the PSTN to allow calling and to transmit both calling and called party identity.”).
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`To the extent the Board finds that the PSTN does not expressly disclose the
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`claimed switching facilities and edge switches, they are inherent because the
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`PSTN’s structure (an embodiment of Burger’s network 22) necessarily requires
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`tandem switches (i.e., switching facilities) interconnecting edge switches. EX1002,
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`¶ 121; EX1003, 1:42-43.
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`3.
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`[pre3] – enabling voice
`[pre3] and 38
`Claim 65
`communication across and circuit and packet network
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`65 [pre3] the communication network designed to enable voice communication
`from a calling party to a called party across both the circuit-switched
`network and a packet network, the communication network comprising:
`38 [pre3] the method for enabling voice communication from a calling party to a
`called party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
`Grounds 1–2: Burger discloses that the communication network in the form
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`of ESP 60 connected to circuit-switched network 22 and packet network 24,
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`enables voice communications from a calling party to a called party across both the
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`circuit-switch network (e.g., the PSTN) 22 and the packet network 24 (e.g., the
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`Internet) at least in the form of ESP procedure 298 for 2-way communication.
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`EX1003, 8:21-26, 9:19-23, 11:30-32, Figs. 4 (218, 220), 5 (298), 11 (518, 520);
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`EX1002, ¶¶ 123-128. ESP 60’s processing unit 62 performs the method claimed in
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`24
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 6
`Cisco Petition Excerpts
`IPR2016-01259
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`readily understood that the PSTN includes both edge switches for routing calls
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`from and to subscribers within a local geographic area and switching facilities for
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`routing calls to other edge switches or other switching facilities local or in other
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`geographic areas. EX1004, 5:4–32; EX1002, ¶¶ 254-55; EX1001, 1:45–51. To the
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`extent the Board finds that the PSTN does not expressly disclose the claimed
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`switching facilities and edge switches, they are inherent because the PSTN’s
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`structure (an embodiment of Archer’s networks 118/136) necessarily requires
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`tandem switches (i.e., switching facilities) interconnecting edge switches. EX1002,
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`¶ 256; EX1004, 5:23-24.
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`3.
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`[pre3] – enabling voice
`[pre3] and 38
`Claim 65
`communication across a circuit and packet network
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`65 [pre3] the communication network designed to enable voice communication
`from a calling party to a called party across both the circuit-switched
`network and a packet network, the communication network comprising:
`38 [pre3] the method for enabling voice communication from a calling party to a
`called party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
`Grounds 3-4: Archer discloses that the communication network of claim
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`65[pre3] in the form of server processors 128, converters 126 and 132, and
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`database 138, enable voice communications from a calling party to a called party
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`across both the packet-based/IP network 130 and the PSTN 118/136. EX1004,
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`8:43–11:43, Figs. 2, 4-6; EX1002, ¶¶ 257-60. Server processor 128 performs the
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`method of claim 38[pre3] at least by executing software steps 62-68 shown in
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`Figure 4 to “Establish communication,” and steps 108-109 in Figure 5 to
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`53
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 7
`Cisco Petition Excerpts
`IPR2016-01259
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