Trials@uspto.gov
`571-272-7822
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` Paper 23
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` Entered: December 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01259
`Patent 8,155,298 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 23
`
`
`
` Entered: December 19, 2016
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01259
`Patent 8,155,298 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01259
`Patent 8,155,298 B2
`
`
`I.
`INTRODUCTION
`Bright House Networks, LLC, WideOpen West Finance, LLC,
`Knology of Florida, Inc., and Birch Communications, Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review of claim 20 of
`U.S. Patent No. 8,155,298 B2 (Ex. 1101, “the ’298 patent”) and a
`Declaration of Thomas F. La Porta, Ph.D. (Ex. 1102). Paper 1 (“Pet.”).
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response and a
`Declaration of Mr. Regis J. Bates Jr. (Ex. 2001). Paper 11 (“Prelim. Resp.”).
`Pursuant to our prior authorization, Petitioner filed a Reply to the
`Preliminary Response. Paper 17 (“Reply”).
`For the reasons that follow, we institute an inter partes review
`pursuant to 35 U.S.C. § 314, as to claim 20 of the ’298 patent.
`
`A. Related Matters
`
`The parties indicate that the ’298 patent is involved in Patent Asset
`Licensing LLC v. Bright House Networks, LLC, No. 3:15-cv-00742-J-
`32MCR (M.D. Fla.), and identify other related proceedings. Pet. 4–5;
`Paper 7, 2–3. There are other petitions challenging the ’298 patent
`(IPR2016-01256 and IPR2016-01263) and two related patents: (1) U.S.
`Patent No. 7,764,777 B2 (Ex. 1106, “the ’777 patent”), which issued from a
`divisional application of the ’298 patent’s parent application; and (2) U.S.
`Patent No. 8,457,113 B2 (Ex. 1107, “the ’113 patent”), which issued from a
`continuation application of the ’298 patent.
`
`2
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`IPR2016-01259
`Patent 8,155,298 B2
`
`
`B. The ’298 Patent
`
`The ’298 patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1101, 1:20–23. Figure 1 of the ’298
`patent is reproduced below (with annotations).
`
`
`
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional PSTN tandem switch 16. Id. at 4:60–64. According to the
`’298 patent, “[d]etails of the operation of the existing phone network,”
`including directing of phone calls by “existing” PSTN tandem switch 16 to
`central offices 17, 18 are further described in a publication incorporated by
`reference, as well as “numerous books describing the PSTN.” Id. at 4:60–
`5:4.
`
`3
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`IPR2016-01259
`Patent 8,155,298 B2
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`
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional 3rd-party features are applied to the call.” Id. More
`specifically, in the network illustrated in Figure 1, a call from calling party
`20 to subscriber’s phone 14 is directed to tandem access controller 10, which
`places a second call, subject to 3rd party control information to subscriber 12.
`Id. at 5:5–20. The second call is placed “to the subscriber’s ‘private’ phone
`number,” without terminating the first call. Id. When subscriber 12 answers
`the call, tandem access controller 10 connects the first call to the second call
`so as to connect calling party 20 to subscriber 12. Id.
`Figure 1 also shows web server 23 within World Wide Web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies 3rd-party call control features via web server 23 and these features
`are then relayed via World Wide Web 22 to tandem access controller 10. Id.
`at 5:33–41.
`
`C. Challenged Claim
`
`Petitioner challenges only claim 20 of the ’298 patent in this
`proceeding. Claim 20 is reproduced below.
`20. A method of providing a user interaction system to enable
`users to control routing of one or more communications between
`a calling party and a called party through user input, the user
`interaction system comprising a web server coupled to a
`controller with access to at least two communication networks,
`wherein at least one of the networks is a packet network
`configured to support voice over IP (“VOIP”), and the second
`network is coupled to a switching facility of a network
`comprising edge switches for routing calls from and to users
`4
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`IPR2016-01259
`Patent 8,155,298 B2
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`
`within a local geographic area and switching facilities for routing
`calls to other edge switches or other switching facilities local or
`in other geographic areas, comprising the steps of:
`providing a website for the users to view features
`associated with the routing of the one or more communications;
`facilitating certain of the users to sign up to become
`subscribers of the communication networks through the entry of
`user personal data through the website;
`granting access to authorized ones of the users;
`providing a menu of available features, via the website, for
`the users to make feature selections;
`processing of feature selections into control criteria;
`receiving and storing the control criteria in a database
`associated with the server, the controller, or both;
`receiving a communication request at the controller, from
`the calling party to an intended called party;
`upon receiving the communication request, utilizing the
`controller to retrieve at least a portion of the control criteria
`relating to the user to determine a possible route for the one or
`more communications from the calling party; and
`executing the control criteria to facilitate the routing of the
`one or more communications across at least one of the at least
`two networks.
`Ex. 1101, 14:60–15:28.
`
`D. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`(Ex. 1103)
`Archer
`
`US 6,683,870 B1 Jan. 27, 2004
`(filed on Jun. 25, 1998)
`
`Sept. 28, 1999
`(Ex. 1104)
`
`
`
`US 5,958,016
`
`
`
`Chang
`
`Swartz
`
`
`
`US 6,445,694 B1 Sep. 3, 2002
`
`(Ex. 1105)
`
`5
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`IPR2016-01259
`Patent 8,155,298 B2
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`
`
`Admitted Prior Art (see, e.g., Ex. 1101, 1:42–55).
`
`E. Asserted Ground of Unpatentability
`
`Petitioner asserts that claim 20 of the ’298 patent is unpatentable
`based on the following grounds of unpatentability. Pet. 18.
`
`References
`
`Basis
`
`Challenged Claim
`
`Archer, Chang, and the Admitted
`Prior Art1
`
`Archer, Chang, Swartz, and the
`Admitted Prior Art
`
`§ 103(a)
`
`§ 103(a)
`
`20
`
`20
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under this standard, claim terms are presumed to have their ordinary and
`customary meaning as understood by a person of ordinary skill in the art in
`
`
`1 Although discussed in the Petitioner’s analysis (Pet. 32), the Admitted
`Prior Art is omitted inadvertently from the statements of the asserted
`grounds. Therefore, we treat the statements as harmless error and presume
`that Petitioner intended to assert that claim 20 is unpatentable based, in part,
`on the Admitted Prior Art.
`
`6
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`Patent 8,155,298 B2
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`the context of the entire patent disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “switching facility”
`
`Petitioner contends that the broadest reasonable interpretation of
`“switching facility” is “any switch in the communication network.” Pet. 9–
`10; Reply 1–2. Patent Owner counters that “switching facility” (1) is a
`switch for routing calls to edge switches or other “switching facilities” local
`or in other geographic areas; and (2) is not an edge switch or edge device.
`Prelim. Resp. 34, 39 (citing Ex. 2001 ¶¶ 68, 80).
`The preamble of claim 20 recites “a network comprising edge
`switches for routing calls from and to users within a local geographic area
`and switching facilities for routing calls to other edge switches or other
`switching facilities local or in other geographic areas.” Ex. 1101, 14:67–
`15:4. On this record, the parties do not present, nor can we discern, a reason
`why the preamble should not be given patentable weight. In fact, the parties
`agree that the preamble is limiting. See, e.g., Pet. 22–36; Prelim. Resp. 34.
`For purposes of this decision, we proceed on the assumption that it is.
`We turn to the Specification of the ’298 patent itself to discern the
`meaning of “switching facility.” As pointed out by both parties, the term
`“switching facility” is not found anywhere in the Specification of the ’298
`patent. The term was added during prosecution. Accordingly, there is not
`much, if anything, intrinsically in the Specification of the ’298 patent that
`explicitly defines or informs a person of ordinary skill in the art at the time
`of the invention the meaning of “switching facility.”
`
`7
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`Patent 8,155,298 B2
`
`
`Patent Owner argues that the prosecution history makes clear that
`switching facility cannot include an edge switch. Prelim. Resp. 34–39. The
`remarks made during prosecution, however, are equivocal, and do not
`persuade us of a disavowal or disclaimer of the scope of the term “switching
`facility” to exclude an edge switch. For example, the portion of the
`prosecution history that Patent Owner cites includes a footnote for defining a
`“switching facility” as:
`Any point in the switching fabric of converging networks, also
`referred to in industry as a 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.
`Ex. 2005, 82.
`The above description does not explain that a switching facility does
`not include an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad. We have considered all of the
`arguments and evidence regarding the term “switching facility.”2 At this
`juncture of the proceeding, we determine that the broadest reasonable
`interpretation of the term is any switch in the communication network.
`
`
`2 We also considered the evidence submitted in IPR2016-01256, including
`the definitions set forth in the Federal Standard 1037C (Ex. 3001) and the
`Newton’s Telecom Dictionary (Ex. 3002). Ex. 3001, S35 (defining
`“switching center” and “switching facility” as synonyms that mean “a
`facility in which switches are used to interconnect communications circuits
`on a circuit-, message-, or packet-switching basis”); Ex. 3002 (defining
`“switching centers” to refer to all five classes of switches in the PSTN).
`8
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`IPR2016-01259
`Patent 8,155,298 B2
`
`
`2. “controller”
`
`Claim 20 recites a “controller.” Ex. 1101, 14:64. Patent Owner does not
`dispute that the plain and ordinary meaning of this term does not exclude an edge
`device or a system that communicates with an edge device. Nevertheless, relying
`on its prosecution disclaimer arguments presented in connection with the term
`“switching facility,” Patent Owner alleges that a “controller” cannot be an edge
`device or a system that applies call control features through an edge switch.
`Prelim. Resp. 40. We have considered and addressed Patent Owner’s prosecution
`disclaimer arguments and the evidence before us. As discussed above, we are not
`persuaded by those disclaimer arguments. Based on the present record, we
`determine that the broadest reasonable interpretation of “controller” does not
`exclude an edge device or a system that applies call control features through
`an edge switch.
`
`B. Principles of Law
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`9
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`IPR2016-01259
`Patent 8,155,298 B2
`
`
`C. Obviousness
`
`Petitioner asserts that claim 20 is unpatentable under § 103(a) as
`obvious over Archer in view of Chang and the Admitted Prior Art, and as
`obvious over Archer in view of Chang, Swartz, and the Admitted Prior Art.
`Pet. 22–62. Patent Owner opposes, arguing that the prior art combinations
`do not disclose a “controller,” as required by claim 20. Prelim. Resp. 42–48.
`We begin our discussion below with an overview of Archer, Chang,
`and Swartz, and then we address the parties’ contentions in turn, focusing on
`the deficiencies alleged by Patent Owner.
`
`1. Overview of Archer
`Archer is directed to transmitting simultaneously call notifications to
`communication devices, such as a telephone, pager, and computer.
`Ex. 1103, Abstract. Figure 2 of Archer is reproduced below.
`
`As shown in Figure 2 above, telephone 114 is connected to
`circuit-switched network 118 (e.g., the PSTN). Id. at 4:66–67, 5:5–8.
`Circuit-switched network 118 is coupled to converter 126, which converts
`10
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`IPR2016-01259
`Patent 8,155,298 B2
`
`telephone signals into packets. Id. at 5:32–34. The packets are formatted in
`accordance with IP and routed through packet-switched network 130. Id. at
`5:41–46. Packet-switched network 130 is the Internet. Id. at 6:3–11.
`Converters 132a and 132b are coupled to packet-switched network 130 to
`convert digital packets into signals which can be transmitted across
`circuit-switched network 136. Id. at 8:18–21. In the preferred embodiment,
`converters 126 and 132 are interchangeable depending on which device 114,
`120, or 134 initiates the call and where the call is routed. Id. at 8:23–26.
`Server processor 128 queries database 138 using the number
`generated at telephone 114 to look up the forwarding phone numbers
`assigned to the user. Id. at 6:33–37. Server processor 128 will then transmit
`the packets simultaneously to each of destinations 132, 134. Id. at 7:3–4.
`
`2. Overview of Chang
`Chang discloses a system that has a web browser interface for
`allowing subscribers to control call features. Ex. 1104, Abstract, 4:45–58,
`7:9–16. Figure 1 of Chang is reproduced below.
`
`11
`
`
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`IPR2016-01259
`Patent 8,155,298 B2
`
`
`
`
`Figure 1 of Chang illustrates a telephone network that includes one or
`more tandem switching offices (11T) that provide connections between end
`offices and/or between other tandem offices. Id. at 8:2–5. Secure access
`platform 25 allows the subscribers to control their call features using a Web
`browser through the Internet, and provides user control selections to the
`tandem switches (11T) through Service Control Point (SCP) 19 and
`Signaling Transfer Point (STP) 15 using Signaling System 7 (SS7)
`signaling. Id. at Abstract, 8:48–9:7, 11:9–12:17, 12:64–13:27.
`
`3. Overview of Swartz
`Swartz describes a system that allows users to sign up for telephone
`services using the Internet and to control call features of their telephone
`services using a web page. Ex. 1105, Abstract, Fig. 1–3. Swartz’s system
`includes a host services processor that is connected to both the PSTN and the
`12
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`IPR2016-01259
`Patent 8,155,298 B2
`
`Internet. Id. A subscriber uses a web-based interface to set call features and
`preferences in a database that is used by the host services processor to direct
`calls to and from the subscriber. Id.
`
`4. Discussion
`Claim 20 recites “a web server coupled to a controller with access to
`at least two communication networks,” and “the second network is coupled
`to a switching facility.” Ex. 1101, 14:63–67. Petitioner takes the position
`that each asserted prior art combination teaches or suggests these limitations.
`Pet. 24–50.
`In particular, Petitioner alleges that Archer’s database coupled to
`server processor is “a web server coupled to a controller.” Id. at 24 (citing
`Ex. 1103, 7:23–24, 7:44–50, 8:61, 9:9–16, Fig. 2); see also id. at 25–31.
`Petitioner argues that Archer’s database provides web server functionality by
`stating that subscribers can log onto the Internet to “change or add telephone
`numbers where he can be reached” in the database. Id. at 24 (citing
`Ex. 1103, 7:44–50, 7:30–43). Petitioner also explains that Archer’s server
`processor is a controller that queries database and encodes call packets for
`multicasting with communications device addresses returned from database
`and connects calls from a calling party to a called party to enable voice
`communication. Id. at 24–25 (citing Ex. 1103, 6:57–67, 7:3–21, 8:50–65,
`9:9–16, 9:51–61).
`Petitioner further contends that Archer’s server processor and
`database have access to at least a first packet-switched network and a second
`circuit-switched network—e.g., the PSTN which was known to include edge
`
`13
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`IPR2016-01259
`Patent 8,155,298 B2
`
`switches and tandem switches (switching facilities). Id. at 31–33 (citing,
`e.g., Ex. 1103, 5:10–30, 8:27–34, Fig. 2; Ex. 1101, 1:42–55). According to
`Petitioner, Archer’s server processor is coupled to the PSTN through
`switching facilities in the form of converters/gateways. Id. at 32 (citing
`Ex. 1103, 5:32–35, 5:59–67, 8:18–34).
`Patent Owner counters that Archer’s server processor “cannot satisfy
`the claimed controller because it is simply an edge device coupled to a
`circuit-switched network through an edge switch.” Prelim. Resp. 42–48. As
`support, Patent Owner argues that “Applicants expressly disclaimed a call
`processing system, or controller, that applies call features at an edge switch
`or that was itself an edge device.” Id. at 44.
`Patent Owner’s arguments are premised on its proposed narrow
`interpretation of “switching facility” and “controller.” Id. at 42–48. At this
`juncture of the proceeding, and for reasons provided above, we decline to
`adopt Patent Owner’s proposed interpretations. Accordingly, we are not
`persuaded by Patent Owner’s arguments.
`Based on the current record before us, we determine that Petitioner
`has demonstrated a reasonable likelihood of prevailing on its assertions that
`claim 20 is unpatentable over Archer in combination with Chang and the
`Admitted Prior Art, and over Archer in combination with Chang, Swartz,
`and the Admitted Prior Art.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that there is a reasonable
`likelihood that Petitioner would prevail in challenging claim 20 of the ’298
`
`14
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`IPR2016-01259
`Patent 8,155,298 B2
`
`patent. At this preliminary stage, we have not made a final determination as
`to the patentability of the challenged claims, or with respect to claim
`construction.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claim 20 of the ’298 patent on the following
`grounds of unpatentability:
`
`References
`
`Basis
`
`Challenged Claim
`
`Archer, Chang, and the Admitted
`Prior Art
`
`§ 103(a)
`
`20
`
`20
`
`§ 103(a)
`
`Archer, Chang, Swartz, and the
`Admitted Prior Art
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this decision.
`
`
`
`15
`
`
`
`
`
`
`
`IPR2016-01259
`Patent 8,155,298 B2
`
`For PETITIONER:
`Wayne Stacy
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`
`PATENT OWNER:
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
`
`
`16
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