Reply to Patent Owner’s Response
`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.,
`Petitioners
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2016-01259
`U.S. Patent No. 8,155,298
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`IPR 2016-01259
`U.S. Patent No. 8,155,298
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.,
`Petitioners
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2016-01259
`U.S. Patent No. 8,155,298
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Reply to Patent Owner’s Response
`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`
`TABLE OF CONTENTS
`
`Page
`
`A.
`
`B.
`
`C.
`
`A.
`
`B.
`
`C.
`
`Archer Discloses a Gateway Interconnecting a Controller (e.g. “web-
`enabled processing system”) on an IP Network to a Tandem Switch in the
`PSTN ....................................................................................................... 3
`
`A POSA Understood that an IP Network Converging with the PSTN
`Could Be Connected to Either a PSTN Tandem Switch or PSTN Edge
`Switch and Without any Technical Differences .............................................. 7
`
`Conclusion: Archer in View of Chang (Ground 1), and Archer in View of
`Chang and Swartz (Ground 2), and the Knowledge and Skill of a POSA
`Disclose All of the Limitations of the Challenged Claim Even Under
`Patent Owner’s Constructions .................................................................... 12
`
`Applicant’s Introduction of “Switching Facilities” for the First Time
`During Prosecution of the ’777 Patent Distinguishes this Case from All
`but One of the Cases Relied Upon by Patent Owner ...................................... 14
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification is Inapposite as it Refers to “Preferred” Embodiments or
`Systems Rather Than “the Invention” or the “Present Invention” .................... 15
`
`Applicant’s Broad Definition During Prosecution, and Varied Location
`and Function Between Claims, Confirms that the Scope of “Switching
`Facilities” is Not Limited to the Preferred Embodiment of a PSTN
`Tandem Switch ....................................................................................... 17
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`D.
`
`“Switching Facility” (Resp. 30-35) Is Not Limited to a “PSTN Tandem
`Switch” .................................................................................................. 22
`
`E.
`
`F.
`
`G.
`
`“Coupled to” (Resp. 35-37) Is Not Limited to “Connected to Without an
`Intervening Edge Switch” ......................................................................... 22
`
`“Controller” (Resp. 38) is Not Limited to a Controller Connected to a
`PSTN Tandem Switch Without an Intervening Edge Switch ........................... 23
`
`Conclusion: Archer in View of Chang (Ground 1), and Archer in View of
`Chang and Swartz (Ground 2), and the Knowledge and Skill of a POSA
`Disclose All of the Limitations of the Challenged Claim Under the
`Broadest Reasonable Interpretation of the Claims or Patent Owner’s
`Constructions .......................................................................................... 23
`
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`Reply to Patent Owner’s Response
`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`
`PETITIONERS’ REPLY EXHIBIT LIST
`
` Exhibit Number
`1101
`1102
`1103
`1104
`1105
`1106
`1107
`1108
`1110
`1158
`1159
`1160
`1161
`
`1162
`1163
`1164
`1165
`
`1166
`2019
`
`2020
`
`2022
`
`Document
`U.S. Patent No. 8,155,298 (“the ’298 Patent”)
`Expert Declaration of Dr. Thomas F. La Porta
`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. 6,445,694 to Swartz (“Swartz”)
`U.S. Patent No. 7,764,777 (“the ’777 Patent”)
`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`File history of U.S. Patent No. 8,155,298
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`U.S. Patent No. 5,164,879 (Honeywell v. ITT)
`U.S. Patent No. 6,618,707 (Chi. Bd. Options)
`U.S. Patent No. 4,893,306 (Telcordia Techs.)
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Reply
`U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Declaration of Regis J. “Bud” Bates in Support of Patent
`Owner’s Response in IPR2016-01259
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`
`
`iii
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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` Exhibit Number
`
`Document
`
`2042
`
`2043
`
`2044
`
`U.S. Pat. App. No. 11/948, 965, filed on November 20, 2007
`(annotations added by Patent Owner)
`U.S. Pat. App. No. 10/426,279, filed on April 30, 2003
`(annotations added by Patent Owner)
`U.S. Pat. App. No. 09/565,565, filed on May 4, 2000
`(annotations added by Patent Owner)
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`I.
`
`INTRODUCTION
`Nothing in Patent Owner’s Response refutes the strong grounds for
`
`obviousness that led this Board to institute this Inter Partes review (“IPR”) on
`
`Ground 1 (Archer (EX1103) in view of Chang (EX1104) and the knowledge and
`
`skill of a person of ordinary skill in the art (“POSA”)), and Ground 2 (Archer in view
`
`of Chang, Swartz (EX1005) and the knowledge and skill of a POSA), as to Claim
`
`20 of U.S. Patent No. 8,155,298 (“the ’298 Patent”). Patent Owner’s arguments in
`
`response to these Grounds include that a POSA understood that, in May 2000, the
`
`only way to connect to the PSTN was through a PSTN edge switch and therefore a
`
`POSA would understand that Archer fails to disclose connecting a controller to the
`
`PSTN through a PSTN tandem switch.
`
`Underlying this argument is Patent Owner’s second argument – essentially
`
`rehashing its disclaimer arguments in support of narrowing certain claim terms.
`
`However, as described below, Archer and Chang, and Archer and Chang and Swartz,
`
`disclose each of the limitations in the Challenged Claim even if the claim is narrowed
`
`as urged by Patent Owner.
`
`Patent Owner’s first argument—that the only way to interconnect a packet
`
`network to the PSTN was through an edge switch—lacks any factual support and is
`
`simply inaccurate. For example, during his deposition, Patent Owner’s expert (Mr.
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`Bates) acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Additionally, in May 2000, a POSA understood
`
`that PSTN and IP networks could be interconnected at the tandem level and doing
`
`so posed no technical challenges over interconnecting such networks at a different
`
`switch such as a PSTN end office switch. For example, as illustrated in LaPier
`
`(EX1158) and Lewis (EX1166), from two of the major industry players in
`
`converging networks (Cisco and Level 3, respectively), a POSA understood that
`
`interconnecting the PSTN to a packet switched network through a tandem switch, or
`
`an edge switch, provided maximum flexibility.
`
`Because Patent Owner’s first argument is unsupported and inaccurate, Archer
`
`in view of Chang, and Archer in view of Chang and Swartz, disclose all of the
`
`limitations of the Challenged Claim even under Patent Owner’s proposed claim
`
`constructions of “switching facility”, “coupled to”, and “controller.”
`
`However, the Challenged Claim is also obvious under both Grounds because
`
`Patent Owner’s second argument—that the specification of the ’298 Patent, and
`
`prosecution history of related U.S. Patent No. 7,764,777 (“the ’777 Patent”), clearly
`
`and unmistakably narrow the scope of these claim terms—is also unsupported and
`
`inaccurate. Indeed, this second argument is simply a rehash of its disclaimer
`
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`arguments that are without any legal or factual support and which the Board has
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`already twice rejected (see Papers 23, 27).
`
`Unlike the cases on which Patent Owner relies, the disputed term (“switching
`
`facility”1) never appears in the specification (the ’298 Patent specification, which it
`
`shares with the ’777 Patent and the ’113 Patent (the “Shared Specification”)), and
`
`was first introduced during prosecution (of the ’777 Patent). Additionally, Patent
`
`Owner relies on statements originally made in the Shared Specification, which are
`
`directed to a preferred or single embodiment, rather than “the invention” or “the
`
`present invention” upon which the disclaimer case law is based. Moreover, Patent
`
`Owner ignores arguments made, and definitions provided, during prosecution that
`
`represent the Patent Owner’s assertion of the broad scope of “switching facility” in
`
`the issued claims. Therefore, these disclaimer arguments should be given little
`
`weight. Accordingly, the Board should find that the instituted claim is obvious.
`
`II. ARCHER IN VIEW OF CHANG (GROUND 1), AND ARCHER IN
`VIEW OF CHANG AND SWARTZ (GROUND 2), AND THE
`KNOWLEDGE AND SKILL OF A POSA DISCLOSE EACH
`LIMITATION OF THE CHALLENGED CLAIM
`A. Archer Discloses a Gateway Interconnecting a Controller (e.g.
`
`1 Patent Owner’s proposed claim constructions of “coupled to” and “controller” are
`
`based on these identical disclaimer arguments and, therefore, rise and fall with its
`
`unsupported and inaccurate construction of “switching facility.” See §§III.C infra.
`
`
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`3
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`“web-enabled processing system”) on an IP Network to a Tandem
`Switch in the PSTN
`As set forth in the Petition, Archer discloses that gateway 1262, that is coupled
`
`to server processor 1283, passes information (e.g. voice and signaling) between the
`
`
`2 Patent Owner’s position that Archer doesn’t use the term “gateway” with respect
`
`to component 126 (or 132) is simply false. See EX1103, 5:34-35 (“Converter 126
`
`can also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
`
`gateway (i.e. converter 126) . . .”). Moreover, Patent Owner’s reliance on Archer’s
`
`other nomenclature for the same component (“converter”) as indicating that
`
`gateway 126 only converts signals between analog and digital formats is also false
`
`as Archer explicitly discloses that gateway 126 may “convert” or “translate”
`
`circuit-switched digital voice (PCM) into multiple encoding schemes and digital
`
`packets suitable for packet networks (e.g. IP packets). See id., 5:27-28; 5:59-62;
`
`6:7-9; 8:18-21; 9:14-15; 11:23-25; EX1165, n.2.
`
`3 Mr. Bates acknowledged that there is no such thing as an “edge switch” in IP
`
`networks. EX1159, 110:9-13; 114:17-20; 178:21-24. Thus, Patent Owner’s
`
`argument (Resp. 45-46, EX2022, ¶¶77-78) that Archer’s server processor 128
`
`(which is clearly on an IP network) is an edge switch is nonsensical. EX1165, n.3;
`
`EX1103, FIGS. 2, 6; 6:6-9; 6:51-53.
`
`
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`4
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`PSTN 118 (136) and a packet network 130 (e.g. IP network)4. Pet., 23-24, 31-33,
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`60-62; EX1102, ¶¶262-265, 283-286, 352-356. Specifically, Archer discloses that
`
`PSTN-to-IP network gateway 126 would be connected to a tandem switch in the
`
`PSTN 118 (136) because it receives voice from the PSTN as pulse coded modulation
`
`(PCM) which is used by a tandem switch but not an edge switch. Id.; EX1103, 5:59-
`
`62 (“PSTN-to-IP network gateway (i.e. converter 126) should be able to support the
`
`translation of PCM to multiple encoding schemes to interwork with software from
`
`various vendors.”)5; see 5:10-11 (“Circuit-switched network 118 can be . . . a digital
`
`network”); 5:23-27 (“[T]he heart of most telephone networks today is digital.”);
`
`
`4 Mr. Bates defined a “tandem switch” as a “switch that passes some form of
`
`information through it” and stated that he used this definition in his analysis for
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`this proceeding. EX1160, 356:9-357:8. Thus, Archer’s gateway (126) cannot be
`
`an “edge switch” because it meets this definition and has an IP address such that it
`
`is on an IP network. See n.3 supra.
`
`5 Patent Owner ignores the explicit disclosure in Archer when it incorrectly asserts
`
`that Archer discloses that PSTN-to-IP network gateway 126 only receives analog
`
`signals over analog lines. Resp., 43-44, 54-58; EX2022, ¶¶74-76, 78, 80-81;
`
`EX1165, ¶26, n.4.
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`5:33-35; 5:42-46; EX1165, ¶26. Mr. Bates confirmed that digital PCM protocol is
`
`used by a tandem switch and would overcome the transmission loss and impairment
`
`problems identified in the Shared Specification associated with analog signals (’298
`
`Patent, 1:56-64). EX1159, 22:23-23:8; 26:7-15; EX2022, ¶45. Thus, Patent
`
`Owner’s arguments that Archer’s gateway 126 interconnecting the PSTN 118 (136)
`
`to a packet network 130 must be connected to an edge switch, ignores the express
`
`teaching of Archer and its own expert’s testimony. Id., Resp., 43-49; EX2022, ¶¶74-
`
`83; EX2019, 267:19-268:4; 271:2-273:12.
`
`Rather, a POSA would understand that, as set forth in the Petition, Archer
`
`discloses that server processor 128 is coupled to a PSTN tandem switch in PSTN
`
`118 (136) via PSTN-to-IP network gateway 126. Pet., 23-24, 31-33; EX1102,
`
`¶¶262-265, 283-286; EX2019, 267:19-268:4; 271:2-273:12; EX1159, 22:23-23:8;
`
`26:7-15; EX2022, ¶45; EX1165, ¶¶26-29.
`
`Moreover, even if the claim is narrowed as urged by Patent Owner such that
`
`“switching facility” can only be a PSTN tandem switch, and not a gateway, and that
`
`“controller” must be directly connected to such a PSTN tandem switch, Archer
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`discloses this architecture. EX1165, ¶¶30-31. Archer discloses a tandem access
`
`controller (gateway 126 and server processor 128 and database 138 purple)
`
`interconnecting an IP network (blue) to the PSTN (green) through a PSTN tandem
`
`
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`6
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`switch (annotated in green below and as set forth supra)) as shown in annotated
`
`Figure 2:
`
`PSTN
`PSTN tandem
`switch
`PCM
`
`TAC
`
`SS7
`
`IP network
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`EX1103, FIGS. 2 (annotated above), 6; Pet. 31-33; EX1102, ¶¶283-286; EX2019,
`
`267:19-268:4; 271:2-273:12; EX1159, 22:23-23:8; 26:7-15; EX2022, ¶45; EX1165,
`
`¶31.
`
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch and Without any Technical Differences
`Patent Owner’s assertion that Archer discloses gateway must be connected to
`
`the PSTN through a PSTN edge switch and therefore the gateway is an “edge device”
`
`(Resp., 45-49) stems from its expert’s misrepresentation of the state of the art. In
`
`May 2000, it was well-understood to a POSA to interconnect an IP network to the
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`7
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`IPR 2016-01259
`U.S. Patent No. 8,155,298
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`PSTN through an edge switch or a tandem switch to provide flexibility. EX1165,
`
`¶¶34-35. For example, Level 3’s patent to Lewis (EX1166) discloses a tandem
`
`access controller (open architecture switch 502 annotated in purple) interconnecting
`
`an IP network (blue) to the PSTN (green) through a PSTN tandem switch (AT 106)
`
`(and separately also through an edge switch (EO 104)) as shown in annotated Figures
`
`4 and 5. EX1159, FIGS. 4-5 (annotated below), 9A, 10A, 10C, 18A-18B, 12:50-56,
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`15:7-23, 19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21, 26:9-14, 29:44-51,
`
`30:4-35; EX1165, ¶¶35-36.
`
`
`
`
`
`SS7
`
`PSTN
`
`PSTN tandem
`switch 106
`
`PSTN edge
`switch 104
`PCM
`
`SS7
`
`PCM
`
`TAC 502
`
`IP network
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`
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`8
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`
`PSTN
`
`PCM
`
`SS7
`
`TAC 502
`
`IP network
`
`SS7
`
`SS7
`
` Likewise, Cisco’s patent to LaPier (EX1158) discloses a tandem access
`
`controller (Network Access Server (NAS) 118a and Signaling Access Server 112
`
`annotated in purple) interconnecting an IP network (blue) to the PSTN (green)
`
`through a PSTN tandem switch 114 (and separately also through an edge switch 116)
`
`as shown in annotated FIG. 1B. EX1158, FIGS. 1B (annotated below), 1C, 7A, 7B,
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`4:58-5:4, 6:55-62, 9:18-22, 8:61-9:7, 9:26-29, 14:3-11, 35:13-16, 35:54-62, 38:13-
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`40, 38:51-62; EX1165, ¶¶35, 37.
`
`
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`
`PSTN
`
`PSTN tandem
`switch 114
`PSTN edge
`switch 116
`
`SS7
`
`PCM
`
`TAC
`
`SS7
`
`IP network
`
` Mr. Bates’s contrary opinion—a POSA in May 2000 would understand that
`
`the state of the art taught that devices external to the PSTN must receive or send call
`
`requests via the PSTN through an edge switch first, not a tandem switch—is simply
`
`inaccurate. Id., Resp., 39; EX2022, ¶68; EX1165, ¶38. Notably, Mr. Bates
`
`acknowledged that, in preparing his declarations, he did not actively research the
`
`state of the art with respect to converging IP and PSTN networks. EX1159, 192:11-
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`14. It is also noteworthy that Mr. Bates cited no factual support for his own opinion
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`(EX2022, ¶68), and his citations to the testimony of Petitioners’ expert, and the
`
`experts of other Petitioners in different IPRs, were taken out of context. Indeed, both
`
`Dr. La Porta (Petitioners’ expert) and Mr. Willis (expert in other IPRs) testified that
`
`Mr. Bates’s opinion that devices external to the PSTN must connect to the PSTN
`
`through an edge switch first is inaccurate with respect to converging PSTN and IP
`
`networks. See, e.g., EX2019, 350:4-24; EX1161, 80:9-20. When presented with
`
`this conflicting testimony, Mr. Bates acknowledged that it was well known to
`
`interconnect an IP carrier network and the PSTN at a tandem switch. Id.; EX1159,
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`201:22-202:11, 205:15-206:16, 211:21-213:14.
`
`Therefore, Mr. Bates’s factually inaccurate and unsupported opinion should
`
`be entitled to little weight. Indeed, the state of the art prior to May 2000 included
`
`systems in which devices external to the PSTN (e.g. on an IP network) sent and
`
`received call requests via the PSTN through (1) controllers on IP networks connected
`
`to PSTN tandem switches (and not PSTN edge switches) via gateways (e.g. Archer)
`
`or (2) controllers connected to PSTN tandem switches (and not PSTN edge switches)
`
`(e.g. Lewis, LaPier). EX1165, ¶42. Moreover, as demonstrated by LaPier (EX1158)
`
`and Lewis (EX1166), interconnecting PSTN and IP networks at the tandem level
`
`was well known and posed no technical challenges over interconnecting such
`
`networks at a different switch such as a PSTN end office switch. EX1166, FIGS. 4,
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`5, 15:7-23, 19:24-28, 19:54-61; EX1158, 1B, 1C, 6:55-62; EX1165, ¶¶43-44, 47.
`
`Moreover, a POSA understood the advantages of connecting a controller to a tandem
`
`switch as taught in LaPier and Lewis including that doing so allows efficient control
`
`of the routing of calls using standard switching protocols and equipment and
`
`achieves Archer’s stated goal of reducing switching traffic of the PSTN. EX1065,
`
`¶¶44-47.
`
`C. Conclusion: Archer in View of Chang (Ground 1), and Archer in
`View of Chang and Swartz (Ground 2), and the Knowledge and
`Skill of a POSA Disclose All of the Limitations of the Challenged
`Claim Even Under Patent Owner’s Constructions
`As set forth in the Petition and supra, a POSA would understand that Archer
`
`in view of Chang (Ground 1), and Archer in view of Chang and Swartz (Ground 2),
`
`and the knowledge and skill of a POSA disclose a gateway (126) interconnecting
`
`server processor 128 and database 138 on a packet network (IP network 130) to a
`
`tandem switch in the PSTN (tandem switch (e.g. 11T) in PSTN 118 (136)). §§II.A-
`
`B; EX1165, ¶48.
`
`Thus, even if the Board adopts Patent Owner’s constructions of a “switching
`
`facility” as a PSTN tandem switch (Resp., 30-35), of “coupled to” as being
`
`connected to without an intervening edge switch (Resp., 35-38), and of “controller”
`
`as a controller connected to a PSTN tandem switch without an intervening edge
`
`switch (Resp., 38), the Challenged Claim is invalid as obvious over Archer in view
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`12
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`of Chang, and Archer in view of Chang and Swartz, and the knowledge and skill of
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`a POSA because a POSA would understand both grounds disclose a controller
`
`connected to a PSTN tandem switch without an intervening edge switch. Id.; see
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`EX1160, 303:15-304:4; 325:10-15; 326:11-327:12; 356:16-357:8; 365:25-366:6;
`
`367:25-368:11; 369:5-370:17; 380:4-381:17; EX1165, ¶49. Furthermore, the
`
`Challenged Claim is invalid as obvious over both grounds because all of the
`
`limitations of the Challenged Claim are disclosed. §§II.A-B; EX1165, ¶50.
`
`III. THE CHALLENGED CLAIM IS ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY” AS
`ASSERTED BY PATENT OWNER
`The Challenged Claim is also obvious over the instituted ground because
`
`Patent Owner’s disclaimer arguments regarding “switching facility” are factually
`
`and legally unsupported.
`
`The term “switching facility” does not appear in the specification of any of
`
`the claimed priority documents6, but was instead introduced for the first time during
`
`prosecution of the application leading to the ’777 Patent in February 2010. EX1110,
`
`66, 68-80, 84-88. Specifically, Applicant amended several existing claims to include
`
`
`6 The ‘777 Patent application (EX2042), App. No. 09/565,565 (EX2044; EX1155),
`
`and App. No. 10/426,279 (EX2043; EX1156). EX1101, 1.
`
`
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`13
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`“switching facility” and added new claims reciting the term. EX1110, 68-80.
`
`Thirteen months later, on March 7, 2011, Applicant amended the existing claims in
`
`the application leading to the ’298 Patent, a continuation of the ’777 Patent, to recite
`
`“switching facility” instead of “PSTN tandem switch.”. EX1108, 97-102.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this Case
`from All but One of the Cases Relied Upon by Patent Owner
`As a threshold matter, the undisputed fact that “switching facilities” was not
`
`used in the Shared Specification distinguishes this case from all but one7 of the cases
`
`relied upon by Patent Owner for its disclaimer arguments. EX1106; Resp., 10-13,
`
`30. In each of these cases, the claim terms at issue were used throughout the
`
`specification to provide evidence as to their meaning. In re Man Mach. Interface
`
`Techs. LLC, 822 F.3d 1282, 1286-1287 (Fed. Cir. 2016); OpenWave Systems, Inc.
`
`v. Apple Inc., 808 F.3d 509, 511-516 (Fed. Cir. 2015); Chi. Bd. Options Exch., Inc.
`
`v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1363-1365, 1371-1373 (Fed. Cir. 2014);
`
`Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1367-1370, 1374-1375 (Fed.
`
`Cir. 2010); Akamai Techs. Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1323-
`
`1328 (Fed. Cir. 2010); Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1132-1137
`
`
`7 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006); §III.B
`
`infra.
`
`
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`14
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`(Fed. Cir. 2003); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`
`F.3d 1337, 1339-1340, 1342-1343 (Fed. Cir. 2001).
`
`Notwithstanding the boundaries of its own cited cases, Patent Owner argues
`
`that the Shared Specification, despite the Applicant not using “switching facility”
`
`therein, retroactively limits the meaning of this term because it identified (1) various
`
`problems in prior art systems and (2) directly connecting the controller to a PSTN
`
`tandem switch as the preferred embodiment. Resp., 9, 14-18, 20, 32; EX2022, ¶¶42-
`
`51, 62, 65. However, such retroactive narrowing is only permitted if the Shared
`
`Specification clearly and unmistakably identified “the invention” or “the present
`
`invention” as: (1) directly connecting the controller to a PSTN tandem switch (which
`
`it does not), or (2) solving all of identified prior art problems (which it does not).
`
`See Honeywell Int’l, 452 F.3d at 1315-1316, 1318; Honeywell Inc. v. Victor Co. of
`
`Japan, LTD., 298 F.3d 1317, 1323-1326 (Fed. Cir. 2002).
`
`B.
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification
`is
`Inapposite as
`it Refers
`to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention”
`In the only case relied upon by Patent Owner in which a claim term was
`
`introduced for the first time during prosecution (Honeywell Int’l), the specification
`
`characterized, on several occasions, the “invention” or “the present invention” as the
`
`narrower meaning adopted by the Federal Circuit for the newly introduced term. 452
`
`
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`15
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`F.3d at 1315-1316, 1318; EX1162 at 1:8-9; 1:40-43; 1:43-49; 3:41-43. In contrast,
`
`here, the identified solutions to prior art problems in the Shared Specification
`
`explicitly refer to a “preferred” or “one” embodiment or system:
`
`A preferred embodiment of the inventive system described herein
`connects at the tandem, thereby eliminating these problems. EX1101,
`1:65-67;
`In one embodiment, the system includes a processor (referred to
`herein as a tandem access controller), connected to the PSTN, where
`the TAC allows a subscriber to set-up and make immediate changes
`to, the configuration of his or her phone line or other communications
`device. In one embodiment, the TAC subsystem is connected
`internally to the PSTN in a local service area and is outside the central
`office of the subscriber . . . The TAC provides features, selected by
`the subscriber, to all edge switches connected to the PSTN tandem
`switch. Connecting directly to the PSTN tandem switch (or
`embedding the system into the tandem switch) eliminates the signal
`degradation problems previously described. Id., 3:7-28; see also id.,
`4:15-19, FIG. 1 (“in one embodiment”).
`
`This undisputed absence of statements regarding “the invention” or “the
`
`present invention” also further distinguishes the facts in this case from those in six
`
`of the other aforementioned cases (§ III.A supra) on which Patent Owner relies.
`
`OpenWave, 808 F.3d at 512, 515-517; Chi. Bd. Options, 677 F.3d at 1372; EX1163
`
`at 6:49-58; Telcordia, 612 F.3d at 1374-75; EX1164 at 1:26-31, 4:39-43, 4:48-49;
`
`
`
`16
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`Akamai, 629 F.3d at 1326-27; Biogen, 318 F.3d at 1136; SciMed, 242 F.3d at 1340,
`
`1343-44.
`
`The fact that a patent indicates that a preferred embodiment improves upon
`
`various identified problems in prior art systems, or can achieve several objectives,
`
`does not (without significantly more) require that each of the claims be limited to
`
`systems that improve upon each of these problems or achieve all of these objectives.
`
`Ventana Medical Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1180-1182 (Fed.
`
`Cir. 2006); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908-909 (Fed. Cir.
`
`2004); Honeywell, Inc., 298 F.3d at 1325-1326. Rather, because there is no
`
`unequivocal disclosure in the Shared Specification that the invention is required to
`
`solve all of these identified problems, and that using the identified “preferred”
`
`embodiment is the only way to do so, Patent Owner’s retroactive disclaimer
`
`arguments fail. Id., Cf. Honeywell Int’l, Inc., 452 F.3d at 1315-1316, 1318; EX1165,
`
`¶¶57-60.
`
`C. Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the Scope
`of “Switching Facilities”
`is Not Limited to the Preferred
`Embodiment of a PSTN Tandem Switch
`Contrary to Patent Owner’s arguments (Resp., 20-28, 32, EX2022, ¶¶55-59,
`
`62), a POSA would understand that the Applicant broadly defined “switching
`
`facilities”, and specified different locations and functions for “switching facilities”
`
`
`
`17
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`
`in different claims, when it introduced the term during prosecution of the ’777
`
`Patent. EX1110, 65-66, 68-80; EX1165, ¶62. For example, the first time
`
`Applicant uses the term, it explicitly states that the “switching facilities” located
`
`on the PSTN are of two different types, namely end office switches and tandem
`
`switches:
`
`The PSTN is a configuration of switching facilities for routing
`calls from calling parties to called parties, comprising a plurality
`of end office switches (also referred to as central office switches or
`edge switches (e.g., a class 5 switch)) and a plurality of
`interconnected switching facilities (also referred to as tandem
`switches). EX1110, 87; EX1165, ¶63.
`
`Then, Applicant broadly and explicitly ascribed a meaning to the second
`
`type of “switching facilities” (“tandem switching facilities”) as “any point in the
`
`switching fabric of converging networks” and enumerated several examples
`
`including “signal transfer point (STP), signal control point (SCP), session border
`
`controller (SBC), gateway, access tandem, class 4 switch, wire center, toll office,
`
`toll center, PSTN switching center, intercarrier connection point, trunk gateway,
`
`hybrid switch, etc.” EX1110, 87, 87n.1; EX1165, ¶64. Notably, these
`
`enumerated examples of “tandem switching facilities” included a combination
`
`Class IV/Class V switch (hybrid switch), devices that only receive signaling (STP,
`
`
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`18
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`SCP), and devices that would be located on packet networks and never on the
`
`PSTN (SBC). EX1110, 87n.1; EX2002, 4; EX1165, ¶65.
`
`The language of the amended claims further confirms the broad scope that the
`
`Applicant intended for the term “switching facilities” by itself. Indeed, the
`
`Applicant varied the scope of the particular “switching facilities” within each
`
`amended claim by reciting different, specific locations and functions in different
`
`claims:
`
`
`
`Location: in “a communication network”; Function: “for routing calls
`
`to other edge switches or other switching facilities local or in other
`
`geographic areas” (Claim 1, 19) (emphasis added)
`
`
`
`Location: in “the public switched telephone network (PSTN)”;
`
`Function: “allowing access to local and other geographic areas within
`
`the PSTN” (Claim 21) (emphasis added)
`
`
`
`Location: in “a communication network”; Function: “for routing calls
`
`to edge switches or other switching facilities local or in other
`
`geographic areas” (Claim 22) (emphasis added)
`
`
`
`Location: in “a communication network”; Function: “for routing calls
`
`to other geographic areas” (Claim 41, 46, 49, 50) EX1110, 68, 71, 73,
`
`77-80; EX1165, ¶¶66-70.
`
`
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`19
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`If the scope of “switching facility” was unambiguously disavowed, then the
`
`varying language identifying the particular location and function(s) of “switching
`
`facilities” in each claim would be superfluous. Id.; Resp., 30-35, EX2022, ¶¶61-65;
`
`EX1165, ¶71. Rather, for each particular claim, a switch in a network (whether it
`
`be an edge switch, tandem switch, hybrid switch, gateway, STP, etc.) is a “switching
`
`facility” if it is in the recited location, and is capable of performing the recited
`
`function, in such claim. EX1165, ¶¶72-76.
`
`Rather than the cases cited by Patent Owner (§§III.A, III.B), the facts here
`
`more closely align with, for example, Honeywell Inc., in which the patent
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