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`Patent 8,457,113
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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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`YMAX CORPORATION,
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`Petitioner,
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01260
`Patent Number: 8,457,113
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Patent 8,457,113
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`Paper No. 14
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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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`YMAX CORPORATION,
`
`Petitioner,
`
`v.
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`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01260
`Patent Number: 8,457,113
`________________
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
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`
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 14
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`TABLE OF CONTENTS
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`LEGAL STANDARD ............................................................................. 1
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`THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`CLAIM LANGUAGE OF THE CHALLENGED CLAIMS
`REGARDING “SWITCHING FACILITY” .......................................... 2
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`THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`SPECIFICATION’S TEACHINGS AND DISCLAIMERS .................. 5
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`THE BOARD MISAPPREHENDED OR OVERLOOKED PATENT
`OWNER’S ARGUMENTS REGARDING THE CONSTRUCTION
`AND APPLICATION OF “TANDEM ACCESS CONTROLLER” ...11
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`THE BOARD OVERLOOKED THE FAILURE OF PETITIONER TO
`SHOW THE REQUISITE THRESHOLD FOR OBVIOUSNESS .....13
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`CONCLUSION .....................................................................................15
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`1.
`Claims 2, 8, 11, and 15-19 .....................................................................13
`2. Claim 17 ............................................................................................... 14
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`Cases:
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`Paper No. 14
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`TABLE OF AUTHORITIES
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`Chi. Bd. Options Exch., Inc. v. Int’l Secs. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2014) ............................................................................. 6
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`
`Eizo Corp. v. Barco N.V.,
`Case No. IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014) .......................... 13
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`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .......................................................................................... 13, 15
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`In re Baker Hughes, Inc.,
`215 F.3d 1297 (Fed. Cir. 2000) ............................................................................. 5
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................. 14
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`In re Man Mach. Interface Techs. LLC,
`822 F.3d 1282 (Fed. Cir. 2016) ................................................................... 3, 7, 11
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 13
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................. 5
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`PPC Broadband, Inc. v. Corning Optical Commc’ns. RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) (emphasis in original) .......................................... 5
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`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) .......................................................................... 1-2
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`TD Ameritrade v. Trading Techs. Int’l, Inc.,
`Case No. CBM2014-00137, Paper No. 34 (P.T.A.B. Feb. 2, 2015)..................... 2
`iii
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`Paper No. 14
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`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................... 3
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`Regulations:
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`37 C.F.R. § 42.71 (c) ................................................................................................. 1
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`37 C.F.R. § 42.71(d) ................................................................................................. 1
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`Paper No. 14
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`Pursuant to 37 C.F.R. § 42.71 (c)-(d), Patent Owner FOCAL IP, LLC requests
`a rehearing of the Board’s Decision granting institution of inter partes review
`entered December 28, 2016 (Paper No. 12) (“Decision”) regarding Claims 1, 2, 8,
`11, 15, and 17-19 of the ’113 Patent (collectively, the “Challenged Claims”). The
`Decision was based upon erroneous claim constructions and application of
`“switching facility,” “coupled to,” and “tandem access controller.” Accordingly,
`Patent Owner requests that the Board reconsider its Decision of the Challenged
`Claims in light of the proper constructions of these terms, as proposed by Patent
`Owner, and deny institution of the Challenged Claims of the ’113 Patent. The
`Decision was also based on erroneous institution of obviousness of dependent claims
`in which Petitioner failed to meet the requisite threshold showing for obviousness.
`Thus, Patent Owner also requests that the Board reconsider its Decision regarding
`Claim 11 over all grounds and Claims 2, 8, 11, 15, and 17-19 of ground 4.
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` LEGAL STANDARD
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`I.
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`A request for rehearing is appropriate when the requesting party believes “the
`Board misapprehended or overlooked” a matter that was previously addressed in the
`record. See 37 C.F.R. § 42.71(d). The request “must specifically identify all matters
`the party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.” Id. In
`reviewing such a request, the “panel will review the decision for an abuse of
`discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion occurs where the decision
`is based on an erroneous interpretation of the law, or on erroneous facts. See Star
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`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005). Abuse also
`occurs “if a factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors.” TD Ameritrade
`v. Trading Techs. Int’l, Inc., CBM2014-00137, Paper No. 34 at 3 (Feb. 2, 2015).
`II. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`CLAIM LANGUAGE OF THE CHALLENGED CLAIMS REGARDING
`“SWITCHING FACILITY”
`The Board misapprehended or overlooked the requirements of the Challenged
`Claims regarding “switching facility” and Patent Owner’s arguments as to the same.
`Accordingly, the Board’s Decision was based on an erroneous conclusion of law or
`clearly erroneous factual findings, and inter partes review of the Challenged Claims
`should be denied in light of the proper construction for “switching facility.”
`The Board recognized that the preamble of the Challenged Claims is limiting,
`but the Board failed to analyze the claim language regarding “switching facility”,
`especially as this term relates to the term “edge switch.” Decision at 13-16.
`Specifically, the Board quoted a claim limitation from Claim 1 within the preamble:
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`The preamble of that claim recites “the telecommunications network
`comprising edge switches for routing calls from and to subscribers
`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.”
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`Decision at 13. The Board’s only analysis of the claims is directed to the subset of
`the claim describing the functionality of “switching facilities” without any analysis
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`or recognition of how Claim 1 distinguishes the term “edge switch” from the term
`“switching facility.” Id. at 13-14.
`Under the broadest reasonable interpretation, the Board’s analysis must give
`“primacy to the language of the claims, followed by the specification.” Tempo
`Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973. 977 (Fed. Cir. 2014). Instead, the
`Board’s claim construction analysis primarily relied on extrinsic evidence and the
`prosecution history of a related patent without considering the most important
`factors -- the language of the claims and the specification. Decision at 13-16. “The
`broadest reasonable interpretation of a claim term cannot be so broad as to include a
`configuration expressly disclaimed in the specification.” Paper No. 7 at 14 citing In
`re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016).
`Patent Owner proposed a construction for “switching facility” which excluded
`edge switches and edge devices. POPR, Paper No. 7 at 35-41, 51-52, 57. Patent
`Owner’s argument regarding the proper construction of “switching facility” first
`analyzed the claim language of Claim 1. Id. at 36. Patent Owner noted that the
`claim language expressly distinguishes that a “switching facility” is not an “edge
`switch.” Id. A quick reading of the relevant limitation shows that the claim language
`expressly distinguishes a “switching facility” from an “edge switch” in at least two
`instances. Id. In the first instance, the representative claim recites “a network
`comprising edge switches … and switching facilities …” Id. at 36. (emphasis
`added). In the second instance, the claim recites “switching facilities for routing
`calls to other edge switches or other switching facilities …” Id. (emphasis added).
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`Patent Owner further highlighted that the representative claim recites
`functionality for a “switching facility” that is different than the claimed functionality
`for an “edge switch.” Id. The preamble of Claim 1 defines the architecture of a
`PSTN by reciting that the claimed “telecommunications network” includes “edge
`switches” that are “for routing calls from and to users within a local geographic
`area,” and “switching facilities” that are “for routing calls to other edge switches or
`other switching facilities local or in other geographic areas.” Id. at 36. (emphasis
`in POPR). Edge switches can only communicate within a local geographic area, as
`recited by the claim, because edge switches “connect calling parties to called parties
`only within a local geographic area.” Id. at 37-38 and related argument at 35-41.
`Other switches in the network make up the interior of the network and are not
`directly connected to subscribers or edge devices, but are instead connected to edge
`switches or other interior switches. Id. at 35-41.
`To conclude that “switching facility” could include an edge switch is both
`unreasonable and renders language of the claims superfluous. Id. at 52, 57.
`Respectfully, based on the claim language alone, the Board’s construction regarding
`“switching facility” was based on an erroneous conclusion of law or clearly
`erroneous factual findings, and inter partes review of the Challenged Claims should
`be denied in light of the proper construction for “switching facility.”
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`III. THE BOARD MISAPPREHENDED OR OVERLOOKED THE
`SPECIFICATION’S TEACHINGS AND DISCLAIMERS
`In addition to misapprehending or overlooking the claim language of the
`Challenged Claims, the Board also misapprehended or overlooked Patent Owner’s
`arguments regarding the teachings of the invention and disclaimers expressly
`disclosed in the specification. POPR, Paper No. 7 at 1-10, 22-43, including internal
`citations to the Bates Declaration. It is important to note that there are practical
`limits to how “broad” an interpretation may be. POPR, Paper No. 7 at 13. “Above
`all, [it] must be reasonable in light of the claims and specification.” Id. citing PPC
`Broadband, Inc. v. Corning Optical Commc’ns. RF, LLC, 815 F.3d 747, 755 (Fed.
`Cir. 2016) (emphasis in original). Under a broadest reasonable interpretation,
`“claims should always be read in light of the specification and teachings in the
`underlying patent claim.” Paper No. 7 at 12 citing Microsoft Corp. v. Proxyconn,
`Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “[T]he Board’s construction ‘cannot be
`divorced from the specification and the record evidence,’ and ‘must be consistent
`with the one that those skilled in the art would reach.’” Id. The construction must
`be “reasonable in light of the totality of the written description.” Id. citing In re
`Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000).
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`In its Decision, the Board focused on “switching facility” not being expressly
`discussed in the specification, but the Board failed to analyze the specification’s
`express disclosure of the invention’s novel architecture of not applying call features
`by or through an edge switch or edge device, including the specification’s express
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`disclaimers and disparagement of prior art systems applying call features by or
`through an edge switch or edge device. Decision at 13-16. “Where the specification
`makes clear that the invention does not include a particular feature, that feature is
`deemed to be outside the reach of the claims of the patent, even though the language
`of the claims, read without reference to the specification, might be considered broad
`enough to encompass the feature in question.” Paper No. 7 at 16 citing Chi. Bd.
`Options Exch., Inc. v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2014).
`The specification of the ’113 Patent recognizes that prior art systems and
`methods applied call control features through an edge switch or an edge device.
`Paper No. 7 at 22. The ’113 Patent disparages these prior art attempts as suffering
`from various shortcomings that the present inventions specifically seek to remedy.
`Id. Applicants repeatedly criticized applying call control features through an edge
`switch or an edge device, and in fact distinguished their inventions over such prior
`art. Id. at 22-23. By making such statements, Applicants unequivocally disclaimed
`controllers that applied call control features through an edge switch, or controllers
`that were themselves an edge device, from the scope of their inventions. Id. at 23.
`Applicants’ disparaging statements begin in the Background of the Invention
`section of the ’113 Patent. Id. In discussing various prior art systems and their
`perceived disadvantages, Applicants specifically disparage the application of call
`control features at an edge switch. ’113 Patent, 1:37-40; Paper No. 7 at 23; see also
`’113 Patent, 1:59-67; BatesDec, ¶52; Paper No. 7 at 23.
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`In addition to these disparaging statements, Applicants further distinguish
`their invention from controllers that are edge devices, and note the numerous
`disadvantages of applying call control features using an edge device. ’113 Patent,
`2:40-54; BatesDec, ¶53; Paper No. 7 at 24.
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`In sum, the ’113 Patent’s specification expressly recognizes that prior art
`systems and methods provided call control features through an edge switch or an
`edge device, but notes that there are numerous disadvantages with carrying out call
`control features in this manner; namely, the addition of costs, voice quality
`problems, and the requirement of a user to pay for the use of multiple telephone lines
`(in order to handle incoming and outgoing calls simultaneously). Paper No. 7 at 24.
`A POSA could not possibly read the passages preceding the “Detailed Description
`of The Invention” and comprehend that controllers or call processing systems
`coupled to edge switches, or that were an edge device, are within the scope of
`Applicants’ claims. Id. at 24-25; BatesDec, ¶54.
`It is unreasonable and clear error to construe the claims so broadly to include
`configurations expressly disclaimed in the specification. The Federal Circuit has
`held that “[t]he broadest reasonable interpretation of a claim term cannot be so broad
`as to include a configuration expressly disclaimed in the specification.” Paper No.
`7 at 14 citing In re Man Mach. Interface Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir.
`2016); see also analysis of other Federal Circuit cases applying reasonable claim
`scope based on disclaimers in the specification at Paper No. 7 at 14-22.
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`In contrast to the criticized prior art solution of providing call features through
`an edge switch or edge device, the specification is replete with commentary
`describing the benefits of connecting to switches other than edge switches. ’113
`Patent, 2:1-3; Paper No. 7 at 25; see also ’113 Patent, 3:37-40; Paper No. 7 at 25;
`see also ’113 Patent, 3:65-4:3; Paper No. 7 at 25; see also ’113 Patent, 3:19-27;
`BatesDec, ¶55; Paper No. 7 at 26. It is unreasonable and clear error to construe the
`claims so broadly to eliminate the objectives of the invention, such as signal
`degradation and toll charges associated with applying call features through an edge
`switch or edge device, as described above. See, e.g., Paper No. 7 at 7-10. Yet,
`construing “switching facility” to include edge switches does just that.
`The Board overlooked or misconstrued Patent Owner’s arguments regarding
`the novel architecture disclosed and taught by the ’113 Patent. The ’113 Patent is
`consistent in showing the claimed controller always being directly connected to a
`tandem switch, not an edge switch, to access the PSTN. Paper No. 7 at 26. For
`example, Fig. 1 of the ’113 Patent shows Tandem Access Controller 10 connected
`to PSTN Tandem Switch 16, not CO 17 or 18. Id. This is also true for Figs. 2, 7,
`and 8 of the ’113 Patent - TACs 10 are directly connected to PSTN tandem switches
`16, not COs 17 and 18 (i.e., edge switches). Id. at 27. As discussed above, the
`specification criticizes and disclaims a direct connection to a CO or edge switch.
`Yet, construing “switching facility” as including edge switches would bring within
`the scope of the ‘113 Patent allowing the controller to be connected to an edge switch
`– something disparaged by the ’113 Patent.
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`In the Decision, doubt is cast on the accuracy of Patent Owner’s statement
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`that the TACs are “always connected to a tandem switch, not an edge switch.”
`Decision at 11-12. Patent Owner stands by this statement. Figures 1 and 2 do, in
`fact, show the TAC being connected to a tandem switch, in addition to the Web. The
`Decision also notes that the ’113 Patent discusses making VoIP calls over the Web
`as if this somehow lessens the impact of the criticism of the providing call control
`using an edge switch. Id. This simply doesn’t make sense. The Web and edge
`switches are completely different entities involving different technologies. Criticism
`of providing call control features involving edge switches in conjunction with the
`PSTN has nothing to do with also allowing VoIP calls to connect to the Web. The
`portions of the specification cited in the Decision do not in any way contradict the
`clear teachings found elsewhere in the ’113 Patent of the disadvantages associated
`with providing call control features involving an edge switch.
`The Board misapprehended or overlooked the express teachings of the
`specification and disclaimers expressly disclosed in the specification. See generally
`Decision. Indeed, the Board failed to even analyze the disclosure of the specification
`in this regard. Id. Specifically, the Board misapprehended or overlooked that the
`’113 Patent makes clear that applying call features through an edge switch or edge
`device is (1) known in the prior art, and (2) suffers from problems which the present
`invention seeks to remedy. Paper No. 7 at 27. In addition, every embodiment of the
`’113 Patent (1) illustrates a controller connected to a tandem switch (i.e., “switching
`facility”), and (2) describes the benefits of this configuration over the prior art. Id.
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`A POSA could not possibly read the ’113 Patent specification and believe that
`controllers connected to edge switches, or that are edge devices, are within the scope
`of Applicants’ inventions. Id.; BatesDec, ¶57. Respectfully, the Board’s claim
`construction of the term “switching facility” as including edge switches and edge
`devices is therefore based on an erroneous conclusion of law or clearly erroneous
`factual findings.
`Additionally, the Board misapprehended or overlooked the Applicants’
`arguments presented in the prosecution history of the ’777 Patent. The Board’s
`analysis regarding “switching facility” in the prosecution history of the ’777 Patent
`is limited to a footnote provided by the Applicants. Decision at 15-16. However,
`the Board wholly failed to consider the clarifying remarks presented by the
`Applicants in the main body of its arguments explaining the novelty of the invention.
`For example, the Board failed to consider the clarifying remarks of Applicants’
`novel architecture where the footnote is found. ’777ProsHist, Ex2005 at 82; Paper
`No. 7 at 38-39. Applicants’ remark that “switching facilities … interconnect end
`office switches to other geographic areas that are not local to an end office switch”
`is consistent with Patent Owner’s proposed construction and the claim language
`itself that “switching facilities” cannot include edge switches (end office switch).
`Likewise, the sentence preceding the one quoted above further confirms this
`construction. Id.; ’777ProsHist, Ex2005 at 82. As discussed, Schwab’s architecture
`is the same as what is disparaged in the Background of the Invention section of the
`’113 Patent – a microprocessor-based system connected to an edge switch for
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`applying call control features. Paper No. 7 at 33. This record demonstrates a clear
`and unambiguous disclaimer of using controllers connected to edge switches, or that
`are edge devices, to apply call control features.
`In a similar manner, the Board also misapprehended or overlooked the express
`teachings of the specification and disclaimers expressly disclosed in the specification
`regarding the construction of “coupled to” regarding whether the “call processing
`system” can be “coupled to” a “switching facility” through an “edge switch.”
`Decision at 8-13. A proper BRI construction of “coupled to” must reflect that the
`“call processing system” cannot be “coupled to” a “switching facility” through an
`“edge switch.” Paper No. 7 at 42-43. This construction gives meaning to
`Applicants’ statements distinguishing claims using the “coupled to” language from
`Schwab. Id. Moreover, this construction also reflects Applicants’ disclaimer of
`controllers that applied call control features through an edge switch. Id. (citing to
`Section V in the POPR regarding the specification’s teaching and disclaimers
`presented herein). It is unreasonable and clear error to construe the claims so broadly
`to include configurations expressly disclaimed in the specification. Paper No. 7 at
`14 citing In re Man Mach. Interface Techs. LLC, 822 F.3d at 1286 (Fed. Cir. 2016).
`IV. THE BOARD MISAPPREHENDED OR OVERLOOKED PATENT
`OWNER’S ARGUMENTS REGARDING THE CONSTRUCTION AND
`APPLICATION OF “TANDEM ACCESS CONTROLLER”
`The Board failed to analyze the claim language regarding “tandem access
`controller.” Decision at 16-18. For example, the Board failed to give meaning to
`the word “tandem” in the term “tandem access controller”, such that the Board
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`erroneously interprets a “tandem access controller” to be so broad that it can be
`coupled to an “edge switch” rather than a tandem switch. Decision at 16-18, 29-30;
`Paper No. 7 at 55-56. The Board further failed to consider or apply claim
`differentiation by giving “tandem access controller” the same unreasonable broad
`construction as the term “call processing system” which it further defines. Id. The
`Board’s failure to give any real meaning to the term “tandem access controller” is
`unreasonable and clearly erroneous.
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`The Board selectively picked two or three sentences in the ’113 Patent that
`include the term “tandem access controller,” which the Board improperly analyzed
`in a vacuum, such that the Board failed to analyze the numerous teachings
`surrounding the term “tandem access controller” in support of Patent Owner’s
`proposed disclaimer and application of this term. Decision at 17-18. For example,
`within the discussion of disparaging the prior art systems that connect to an edge
`switch discussed in detail above in the specification, the ’113 Patent states that the
`“preferred embodiment of the inventive system described herein connects at the
`tandem, thereby eliminating these problems [of connecting to an edge switch].” ’113
`Patent at 2:1-3; Paper No. 7 at 25. This preferred embodiment is the precise
`embodiment recited in independent claim 1 and dependent claims 18 and 19 that
`intentionally distinguishes “edge switches” from “switching facilities” in claim 1 to
`achieve the claim limitation reflecting the preferred embodiment of the invention of
`“the call processing system [tandem access controller] coupled to at least one
`switching facility [as opposed to an edge switch] of the telecommunications
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`network.” This proper interpretation of the claims read in context of the claims and
`the specification is consistent with the other disclosures cited by the Board when
`reading the ’113 Patent as a whole. It is unreasonable and clear error to construe the
`claims so broadly to include configurations expressly disclaimed in the specification.
`V. THE BOARD OVERLOOKED THE FAILURE OF PETITIONER TO
`SHOW THE REQUISITE THRESHOLD FOR OBVIOUSNESS
`Petitioner bears the burden of showing that this statutory threshold has been
`met. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012).
`The obviousness analysis requires a number of threshold inquiries. For example,
`petitions for inter partes reviews “must address the Graham factors.” See, e.g., Eizo
`Corp. v. Barco N.V., IPR2014-00358, Paper 11 at 29 (P.T.A.B. July 23, 2014) (citing
`Graham, 383 U.S. at 17-18; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)).
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`1.
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`Claims 2, 8, 11, and 15-19
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`The Petition at issue is deficient because it does not address the Graham
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`factors since it fails to resolve the exact differences of any of Claims 2, 8, 11, and
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`15-19 that it seeks derive from the secondary reference. Pet. at 68-69. Indeed,
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`Petitioner does not even assert that Claims 11 or 16 should be rendered obvious by
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`the purported Shtivelman-O’Neal combination, nor does Petitioner present any
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`arguments regarding Claims 11 and 16 in this regard. Pet. at 68-69. The Board
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`made additional incorrect factual findings, including a finding that Petitioner
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`provided detailed contentions that Claim 15 was obvious over the combination of
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`Shtivelman and O’Neal. See Decision at 31; Pet. at 68-69. However, the Petition
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`failed to apply any analysis of Claim 15 directed to the purported Shtivelman-O’Neal
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`combination. Id.
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`Petitioner further failed to provide any reasons why one of skill in the art
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`would combine Shtivelman with O’Neal to achieve any of the inventions disclosed
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`in Claims 2, 8, 11, and 15-19. Id. For each particular claim, the reasons to combine
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`must be more than “mere conclusory statements; instead, there must be some
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`articulated reasoning with some rational underpinning to support the legal
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`conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
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`2. Claim 17
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`The Board acknowledged that Petitioner failed to prove anticipation of Claim
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`17 by Shtivelman or O’Neal. Decision at 29. However, the Board overlooked
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`Petitioner’s failure to meet the requisite threshold for obviousness of Claim 17. Id.
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`The Decision cites to Petition at 11-14 and 62-63 (with corresponding citations to
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`the expert declaration), but these citations to the Petition have nothing to do with
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`Claim 17 or whether or not the claim limitation “wherein the call processing system
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`is located within a local service area corresponding to the specified recipient” is
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`obvious. Petitioner does not rely on any evidence or articulate any reason to modify
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`O’Neal to read on Claim 17 other than conclusory assertions. Pet. at 65-66.
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`As explained above, Petitioner fails to show the Graham factors regarding
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`Claim 17, and further fails to provide any reason why a POSA would combine
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`Shtivelman with O’Neal. Pet. at 68-69. A POSA would not look to combine
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`Shtivelman with O’Neal to achieve the invention of Claim 17, because neither of
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`these references disclose the claim limitations of Claim 17. Paper No. 7 at 55, 59,
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`and 60-61. Institution of Claim 17 in any capacity is clearly erroneous based on the
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`Petition’s failure to provide a requisite threshold showing of obviousness.
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`VI. CONCLUSION
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`For the foregoing reasons, the Decision should be modified to reflect the
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`proper constructions and application of those constructions, such that the Petition
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`should be denied in light of the proper constructions. Further, the Decision should
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`be modified to deny institution of claim 17 of ground 3 and claims 2, 8, 11, and 15-
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`19 of ground 4 due to the failure to make a threshold showing of obviousness.
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`Dated: January 11, 2017
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`CERTIFICATE OF SERVICE
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`Paper No. 14
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`I hereby certify that on this 11th day of January 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Request for Rehearing has been served in its entirety via email
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`on the following:
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`
`
`Mark D. Passler
`Brice S. Dumais
`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`Mark.passler@akerman.com
`Brice.dumais@akerman.com
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`
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`Dated: January 11, 2017
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`16
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