Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 8,457,113
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`CLAIMS 1, 2, 8, 11, and 15-19 OF U.S. PATENT NO. 8,457,113
`
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
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`U.S. Patent No. 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 8,457,113
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`CLAIMS 1, 2, 8, 11, and 15-19 OF U.S. PATENT NO. 8,457,113
`
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................ i
`
`LIST OF EXHIBITS.............................................................................................. vi
`
`I.
`
`INTRODUCTION .........................................................................................1
`
`II. MANDATORY NOTICES, STANDING, AND FEES ..............................1
`
`A.
`
`Real Parties in Interest – 37 C.F.R. § 42.8(b)(1).........................................1
`
`B.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2).....................................................1
`
`C.
`
`Lead and Back-up Counsel – 37 C.F.R. § 42.8(b)(3)..................................2
`
`D.
`
`Service Information – 37 C.F.R. § 42.8(b)(4).............................................3
`
`E.
`
`Certification of Grounds for Standing – 37 C.F.R. § 42.104(a) ................3
`
`F.
`
`Payment of Fees – 37 C.F.R. § 42.15(a) and § 42.103.................................3
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`
`PRECISE RELIEF REQUESTED.........................................................................4
`
`A.
`
`Claims For Which Review Is Requested .....................................................4
`
`B.
`
`The Proposed Alternative Grounds Are Not Redundant..........................5
`
`IV. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ......5
`
`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED.........5
`
`A.
`
`Summary of the ‘113 Patent .........................................................................5
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`1.
`
`2.
`
`Priority Date .............................................................................................5
`
`Prosecution History of the ’113 Patent ..................................................6
`
`3. Overview Of The ‘113 Patent..................................................................7
`
`B.
`
`Person Of Ordinary Skill In The Art ........................................................11
`
`C.
`
`State of the Art of Telecommunications by June 1999.............................11
`
`1.
`
`2.
`
`3.
`
`The PSTN/Circuit Switching Networks ...............................................11
`
`Signaling..................................................................................................14
`
`Packet-Switching Networks: the Internet and Voice over IP...........14
`
`D.
`
`An Embodiment of the ‘113 Patent............................................................16
`
`E.
`
`Claim Construction .....................................................................................18
`
`1.
`
`2.
`
`3.
`
`4.
`
`“web enabled”.........................................................................................18
`
`“coupled to” ............................................................................................19
`
`“switching facility”.................................................................................20
`
`“a call processing system serving as an intelligent interconnection
`
`between at least one packet network and a second network coupled to a
`
`switching
`
`facility
`
`of
`
`a
`
`telecommunications
`
`network,
`
`the
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`telecommunications network comprising edge switches for routing calls
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`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” ................................................23
`
`5.
`
`6.
`
`“tandem access controller”.....................................................................27
`
`Summary of Claim Interpretations......................................................28
`
`VI.
`
`SUMMARY OF PRIOR ART....................................................................29
`
`A.
`
`Shtivelman: WO 99/14924 ............................................................................29
`
`B.
`
`O’Neal: U.S. Patent No. 6,463,145 ..............................................................32
`
`VII. THERE IS A REASONABLE LIKELIHOOD THAT THE
`
`CHALLENGED CLAIMS ARE UNPATENTABLE.........................................35
`
`A.
`
`Ground 1: Claims 1, 2, 8, 15, and 17-19 are Anticipated by Shtivelman .....35
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claim 1 .....................................................................................................35
`
`Claim 2 .....................................................................................................44
`
`Claim 8 .....................................................................................................44
`
`Claim 15 ...................................................................................................45
`
`Claim 17 ...................................................................................................46
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`Claim 18 ...................................................................................................46
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`7.
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`Claim 19 ...................................................................................................47
`
`B.
`
`Ground 2: Claims 1, 2, 8, 11, 15, and 17-19 are Anticipated by O'Neal ......48
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 1 .....................................................................................................48
`
`Claim 2 .....................................................................................................54
`
`Claim 8 .....................................................................................................54
`
`Claim 11 ...................................................................................................56
`
`Claim 15 ...................................................................................................57
`
`Claim 17 ...................................................................................................57
`
`Claim 18 ...................................................................................................58
`
`Claim 19 ...................................................................................................59
`
`C.
`
`Ground 3: Claims 1, 11, and 15-17 Are Obvious In Light Of O'Neal ..........60
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 .....................................................................................................60
`
`Claim 11 ...................................................................................................62
`
`Claim 15 ...................................................................................................63
`
`Claim 16 ...................................................................................................64
`
`Claim 17 ...................................................................................................65
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`D.
`
`Ground 4: Claims 1, 2, 8, 15, and 17-19 Are Obvious over Shtivelman in
`
`Light of O'Neal .....................................................................................................66
`
`1.
`
`2.
`
`Claim 1 .....................................................................................................66
`
`Claims 2, 8, 15, 17, 18, 19 .......................................................................68
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`VIII. CONCLUSION ............................................................................................69
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`LIST OF EXHIBITS
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`1001
`
`U.S. Patent No. 8,457,113 to Wood et al. (the “‘113 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`Declaration of Tal Lavian, Ph.D.
`
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`
`International Publication No. WO 99/14924 to Shtivelman et al.
`
`("Shtivelman")
`
`1006
`
`Prosecution History of U.S. Patent No. 6,529,596
`
`1007
`
`Prosecution History of U.S. Patent No. 7,764,777
`
`1008
`
`Federal Standard 1037C (Glossary of Telecommunications
`
`Terms) (Aug. 7, 1996)
`
`Newton’s Telecom Dictionary (February 1999)
`
`http://www.Internetlivestats.com/total-number-of-websites
`
`Plug-in Basics - Plugins
`
`Exhibit Number not used
`
`1009
`
`1010
`
`1011
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`1012
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`1013
`
`http://www.thefreelibrary.com/eBay's+AuctionWeb+Tops+One
`
`+Million+Bids%3B+Leading+Online+Auction...-a018940197
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Exhibit Number not used
`
`U.S. Patent No. 6,031,836 to Haserodt
`
`Curriculum vitae for Tal Lavian, Ph.D.
`
`ITU-T Recommendation Q.700-Q.705.
`
`Introduction to CCITT
`
`Signaling System Number 7. Melbourne 1988-1992.
`
`http://www.speakfreely.org/history.html
`
`Office Action Response in the Prosecution History of U.S. Patent No.
`
`8,848,894, dated September 13, 2013
`
`Prosecution History of the ‘113 Patent
`
`W. Bressler, SS7 Level Two over IP, dated January 1999
`
`Lucent Technologies and Ascend Communications announce
`
`voice over IP interoperability, dated June 2, 1999
`
`1023
`
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`
`Flows, dated January 20, 1999
`
`1024
`
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`
`Flow Test Case 1, dated February 25, 1999
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`1025
`
`The iNOW!
`
`[VoIP Interoperability Now!] Joint Press Release,
`
`dated December 19, 1998
`
`1026
`
`L. Ong, et al. Framework Architecture for Signaling Transport, dated
`
`October 1999
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`I.
`
`INTRODUCTION
`
`YMax Corporation (“YMax” or “Petitioner”) requests inter partes review
`
`(“IPR”) of claims 1, 2, 8, 11, and 15-19 of U.S. Patent No. 8,457,113 (“the ’113
`
`patent”), titled “Tandem Access Controller Within The Public Switched Telephone
`
`Network” (Ex. 1001).
`
`II. MANDATORY NOTICES, STANDING, AND FEES
`
`A.
`
`Real Parties in Interest – 37 C.F.R. § 42.8(b)(1)
`
`The real parties in interest are YMAX CORPORATION (Petitioner) and
`
`magicJack VocalTec Ltd., which owns ten percent (10%) or more of the shares of
`
`Petitioner and is publicly traded.
`
`B.
`
`Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`Records of the U.S. Patent and Trademark Office indicate that the ’113
`
`patent, assigned on its face to Telemaze, LLC, and subsequently assigned to Focal
`
`IP, LLC ("Patent Owner"), issued from U.S. Patent Application No. 12/821,119,
`
`(the “’119 application”) filed June 22, 2010.
`
`Judicial Matters: The ’113 patent is being asserted against Petitioner in the
`
`U.S. District Court for the Middle District of Florida in matter Patent Asset
`
`Licensing, LLC v. YMax Corporation, 3:15-cv-00744. The '113 patent is also
`
`being asserted against third parties in the U.S. District Court for the Middle District
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`of Florida in the following matters: Patent Asset Licensing, LLC v. Bright House
`
`Networks, LLC (3:15-cv-00742), Patent Asset Licensing, LLC v. T3
`
`Communications, Inc. (3:15-cv-00747), Patent Asset Licensing, LLC v. Birch
`
`Communications, Inc. (3:15-cv-00746), and Patent Asset Licensing, LLC v.
`
`Wideopenwest Finance, LLC et al. (3:15-cv-00743).
`
`Administrative Matters: U.S. Patent Application No. 13/905,036, filed on
`
`May 29, 2013, issued as U.S. Patent No. 9,083,719, claims priority through the
`
`'119 application. U.S. Patent Application No. 14/737,243, filed on June 11, 2015,
`
`projected to issue as U.S. Patent No. 9,386,158, claims priority through the '119
`
`application. Petitioner has or will file separate petitions for inter partes review of
`
`U.S. Patent No. 8,155,298 and U.S. Patent No. 7,764,777, both of which are
`
`related to the '113 patent, owned by Patent Owner, and being asserted in each of
`
`the above listed litigations.
`
`C.
`
`Lead and Back-up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`Petitioner identifies Mark D. Passler (Reg. No. 40,764), of Akerman LLP, as
`
`Lead Counsel and Brice S. Dumais (Reg. No. 65,800), of Akerman LLP, as Back-
`
`up Counsel. A Power of Attorney is filed concurrently herewith.
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`D.
`
`Service Information – 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to Counsel may be made via hand delivery or
`
`postal mailing to Akerman LLP, 777 South Flagler Drive, Suite 1100 West Tower,
`
`West Palm Beach, FL 33401. Telephone: (561) 653-5000; Facsimile: (561) 659-
`
`6313.
`
`Petitioner
`
`consents
`
`to
`
`service
`
`by
`
`electronic mail
`
`at
`
`(a)
`
`mark.passler@akerman.com; and (b) brice.dumais@akerman.com.
`
`E.
`
`Certification of Grounds for Standing – 37 C.F.R. § 42.104(a)
`
`Petitioners certify that the ’113 Patent is available for inter partes review
`
`and that the Petitioners are not barred or estopped from requesting inter partes
`
`review of the claims of the ’113 Patent on the grounds set forth herein.
`
`F.
`
`Payment of Fees – 37 C.F.R. § 42.15(a) and § 42.103
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 50-0951.
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`III.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF
`PRECISE RELIEF REQUESTED
`
`A.
`
`Claims For Which Review Is Requested
`
`Petitioner
`
`requests inter partes review under 35 U.S.C. § 311 and
`
`cancellation of claims 1, 2, 8, 11, and 15-19 of the ’113 patent on one or more of
`
`the following grounds:
`
`Ground 1: Shtivelman anticipates claims 1, 2, 8, 15, and 17-19 under 35
`
`U.S.C. § 102(b).
`
`Ground 2: O’Neal anticipates claims 1, 2, 8, 11, and 17-19 35 U.S.C. §
`
`102(e).
`
`Ground 3: Claims 1, 11, and 15-17 are obvious under 35 U.S.C. § 103 in
`
`light of O’Neal.
`
`Ground 4: Claims 1, 2, 8, 15, and 17-19 are obvious under 35 U.S.C. § 103
`
`over Shtivelman in light of O’Neal.
`
`Petitioner’s detailed statement of the reasons for the relief requested is set
`
`forth below in the section titled “Statement of Reasons for Relief Requested.” In
`
`accordance with 37 C.F.R. § 42.6(c), copies of the exhibits are filed herewith. This
`
`Petition is accompanied by the declaration of Tal Lavian, Ph.D. (Ex. 1002).
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`B.
`
`The Proposed Alternative Grounds Are Not Redundant
`
`Ground 2 (anticipation from Shtivelman) is not redundant with Ground 1
`
`(anticipation from O’Neal) because they address not-identical sets of claims, and
`
`because Patent Owner may attempt to swear behind O’Neal but cannot swear
`
`behind Shtivelman.
`
`In addition, to the extent it is argued O’Neal does not
`
`anticipate claims 1, 11, and 15-17 as set forth in Ground 1, Ground 3 addresses
`
`obviousness of those claims in light of O’Neal. Finally, to the extent it is argued
`
`Shtivelman does not anticipate claims 1, 2, 8, 15, and 17-19 because Shtivelman
`
`does not disclose required web-related features, such claims are obvious in light of
`
`the combination of Shtivelman and O’Neal.
`
`IV. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`
`For each of the grounds of unpatentability proposed below, there is a
`
`reasonable likelihood that Petitioner will prevail with respect to at least one of the
`
`challenged claims, as required by 35 U.S.C. § 314(a).
`
`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`A.
`
`Summary of the ‘113 Patent
`
`1.
`
`Priority Date
`
`The ‘113 patent reflects a chain of patent applications dating back to May 4,
`
`2000. However, in pending litigation against Petitioner YMax Corporation in
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`which the ‘113 patent is being asserted, the plaintiff has asserted that the claims of
`
`the ‘113 patent may be entitled to a priority date as early as June 1, 1999.
`
`2.
`
`Prosecution History of the ’113 Patent
`
`The final application resulting in the ’113 Patent was filed on June 22, 2010.
`
`See Ex. 1001. During prosecution, the claims of the application were never rejected
`
`over prior art. The claims were only rejected on the grounds of nonstatutory
`
`obviousness-type double patenting in view of U.S. Patent No. 6,574,328 and under
`
`35 U.S.C. § 112, second paragraph, as being indefinite. Ex. 1020 at 186-187. In
`
`response, applicant amended various claims “to more particularly claim the
`
`Applicants' invention,” added new claims, and filed a terminal disclaimer. Ex.
`
`1020 at 149-172. Following this, applicant further amended the claims and added
`
`additional claims “to more particularly claim the Applicants' invention.” Ex. 1020
`
`at 56-85. The ’113 Patent then issued on June 4, 2013.
`
`In a Notice of Allowance dated April 26, 2012, the Examiner provided the
`
`following reasons for allowance:
`
`The prior art fails to disclose applicant's web-enabled processing
`
`system that connects phone calls between the packet switched
`
`network/Internet and the circuit
`
`switched network/PSTN. The
`
`processing system will receive a phone call via the packet switched
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`system and then originate another phone call
`
`that
`
`initiates voice
`
`communication, with the web enabled processing system coupled to a
`
`switch of the PSTN. No obvious combination of references found
`
`would have taught one of ordinary skill in the art to make and use
`
`applicant's method as claimed.
`
`Id. at 139. Contrary to the Examiner's belief, however, the recited elements
`
`(and all those in the challenged claims) were neither new nor nonobvious as
`
`of June 1, 1999.
`
`3.
`
`Overview Of The ‘113 Patent
`
`What the specification of the ’113 Patent describes as the alleged invention
`
`is somewhat different from the focus of the challenged claims.
`
`The '113 Patent summarizes its alleged invention as relating to “a system for
`
`allowing a subscriber to select features of the subscriber’s telephone service and to
`
`various novel features that can be selected.”
`
`Ex. 1001 at 1:23-26.
`
`The
`
`specification explains that telephone companies offer optional features such as call
`
`forwarding.
`
`Id. at 1:52-54, 2:17. However, the specification continues, “these
`
`features typically require access from [the calling party or called party's
`
`telephones] and are extremely awkward to program. The user interaction is not
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`only awkward, it is limited and requires interaction with the telephone company to
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`provision them. In other words, past systems for provisioning, meaning addition,
`
`modification, or control of telephone features, required a subscriber to make the
`
`feature selection through the telephone business office. Central office workers
`
`would then implement the provisioning under request of the business office.” Id.
`
`at 2:4-16.
`
`To address this alleged problem, the specification discloses the alleged
`
`invention of using a website interface for configuring telephone system features
`
`like call waiting instead of having to call the telephone company's customer service
`
`line. See id. at 2:56-64 (“SUMMARY OF THE INVENTION: A system for
`
`allowing a subscriber to remotely control features is described herein along with
`
`various telephone features that may be programmed into the system. A subscriber
`
`may be any customer using the telephone service, in contrast to employees of the
`
`PSTN [the traditional telephone network]…”); Id. at 5:16-24 (“FIG. 1 illustrates
`
`the preferred method for an authorized subscriber to modify the 3rd-party control
`
`criteria by means of the world wide web … The subscriber 12 interacts with the
`
`web 22 via the Internet to quickly and easily specify the enhanced 3rd-party call
`
`control features.”) This “eliminat[es] the need to go through the telephone
`
`company (telco) business office.” Id. at 3:24-27.
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`The patent specification also spends many columns detailing two allegedly
`
`new telephone features: branch calling, and caller ID-based call routing. See id. at
`
`7:54-12-20. Indeed, the title of the patent is "Branch Calling and Caller ID Based
`
`Call Routing Telephone Features."
`
`There are two things to note with respect
`
`to these disclosures in the
`
`specification.
`
`First, by July 1, 1999, there was nothing inventive about setting up a website
`
`for configuring telephone options rather than having to call customer service.
`
`Using a website to configure telephone features was already in the prior art. As
`
`one example, U.S. Patent No. 6,463,145 to O'Neal et al. (“O'Neal”) discloses a
`
`system that allows a user to “review and/or modify [their] communication options”
`
`(such as “call forwarding”) over the world wide web using a “user computer 100”
`
`in communication with a “web-site” and a “web server 122.” Ex. 1003 at 16:36-
`
`64, 7:45-8:22, 11:26-51, Fig. 1.
`
`As a further example, U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`
`discloses a system where the user can “review and/or change” their telephone
`
`“service control information” (such as “chang[ing] the 'forward to' number”) over
`
`the world wide web. Ex. 1004 at 18:33-21:27, 2:54-67.
`
`In explaining the
`
`motivation for this invention, Chang notes that “[i]t is too cumbersome to require
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`the subscriber to call the local telephone company's business office and request
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`each and every one of the routine changes” and that “[a] need therefore still exists
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`for a technique which will enable any subscriber to personally access and control
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`their AIN ['Advanced Intelligent Network'] services from a general purpose
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`computer without specially developed hardware or software interfaces.” Ex. 1004
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`at 2:54-67, 4:39-42.
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`Even the '113 Patent
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`itself admits that web-enabled telephone feature
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`configuration was already known: “Today,
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`there are web-based companies
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`managing 3rd-party call control, via the toll-switch network, which allow users to
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`enter call control information through a web portal.” Ex. 1003 at 1:30-40.
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`This is not surprising because by June of 1999, there were over 3 million
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`websites on the web, including Yahoo (launched in 1994), Amazon (launched in
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`1995), and eBay (launched in 1995). See Ex. 1010.
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`Second, none of the patent claims challenged here focus on any details of
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`using a website to configure telephone options, and none include limitations
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`requiring branch calling or caller ID-based call routing.
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`Instead, the challenged
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`claims, drafted approximately a decade after the filing of the first priority
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`application, focus primarily on the concept of routing calls over both the traditional
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`telephone network (the PSTN) and over the Internet (a packet switched-based
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`network). Not only is that concept barely mentioned in the specification, but
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`routing calls over both the PSTN and the Internet was well known by June 1, 1999.
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`B.
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`Person Of Ordinary Skill In The Art
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`A person of ordinary skill in the art with respect to the ‘113 patent in 1999-
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`2000 would have a bachelor’s degree in electrical engineering, computer science,
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`or the equivalent thereof and approximately 2 years of professional experience
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`within the field of telecommunications or network communications. See Ex. 1002
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`¶ 19.
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`The ‘113 patent concerns the basic architecture of the telephone network that
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`has existed in the United States for many decades, as well as basic Internet
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`technology that was well known by 1999. See Ex. 1002 ¶ 20.
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`C.
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`State of the Art of Telecommunications by June 1999
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`1.
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`The PSTN/Circuit Switching Networks
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`The PSTN (public switched telephone network) is the world’s collection of
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`interconnected circuit-switching telephone networks. In the United States, the
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`PSTN is the conventional telephone network, primarily built by AT&T when it
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`was “the” telephone company in the United States. It is a countrywide network of
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`switches connected to each other by wires. The wires and switches between them
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`connect the telephone of a calling party to the telephone of the called party. Once a
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`telephone call between two landline telephones is established, there is a continuous
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`physical path of wires, linked by one or more switches, between the telephones at
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`each end of the call that is dedicated solely to that call. The term “switching” refers
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`to the switching of infrastructure in the network from one dedicated use to another,
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`from call to call. See Ex. 1002 ¶ 36-38.
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`The switches in the PSTN use a five-level hierarchy: edge or end (class 5),
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`toll or tandem (class 4), primary (class 3), sectional (class 2) and regional (class 1).
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`Landline phones in people’s houses are generally connected to a geographically
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`local class 5 switch (also called an edge switch, end switch, or central office
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`switch). Telephones in different geographic areas are connected to different edge
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`switches in different central offices. Tandem/Class 4 switches generally connect
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`edge/class 5 switches together, although nearby class 5 switches can be connected
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`directly. Class 4 and class 5 switches can be combined as a “hybrid” switch. In the
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`PSTN, class 2 and 3 switches are used infrequently, and class 4 switches can be
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`connected to one another as well as by a class 1 switch. Thus,
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`the basic
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`architecture of the PSTN can be illustrated as follows:
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`See Ex. 1002 ¶¶ 39-40.
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`When a telephone call is placed on the PSTN, the call typically travels from
`
`the caller’s phone to the edge switch in the caller’s local central office. Unless the
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`recipient is in the same geographical area and directly connected to the same
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`central office, the call is then typically routed to one or more tandem switches (in
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`sequence), until
`
`it reaches the edge switch that
`
`is directly connected to the
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`recipient’s phone, and finally to the recipient’s phone. The switches use the
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`telephone number dialed by the caller to know where to route the call. Thus, the
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`network of switches enables the communication network to connect users either
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`within or outside a local geographic area. See Ex. 1002 ¶¶ 36-42.
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`2.
`
`Signaling
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`In addition to carrying voice communications,
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`the PSTN also carries
`
`signaling. Signaling communicates information the network needs to operate, such
`
`as the signal sent to the local central office from a telephone when the handset is
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`picked up that notifies the central office to send the telephone a dial tone, or the
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`signal from the central office that tells a telephone to ring because there is an
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`incoming call. The protocol that is used for signaling on the PSTN is called
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`Signalling System 7, or SS7. Ex. 1017. The SS7 signaling protocol was a global
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`standard before the alleged invention.
`
`See Ex. 1002 ¶¶ 43-44.
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`This is
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`acknowledged in the ’113 patent itself. See Ex. 1001 at 4:49-53, 7:59-65.
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`3.
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`Packet-Switching Networks: the Internet and Voice over IP
`
`In contrast
`
`to the PSTN’s circuit-switched network, which requires a
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`dedicated point-to-point connection during a phone call, the Internet is a packet-
`
`switched network. There is no dedicated route between two computers that are
`
`communicating over the Internet. Rather, information is broken down into small
`
`blocks called packets. Each packet may travel a different route through the
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`connected parts of the Internet before arriving at the destination computer, where
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`they are then reassembled. See Ex. 1002 ¶¶ 45.
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`TCP/IP is a collection of protocols used for, among other things, sending
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`information through the Internet. The “IP” stands for Internet Protocol. Voice over
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`IP, or VoIP, is the transmission of voice that has been converted into digital
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`packets of data using the Internet Protocol. VoIP communications typically take
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`place over the Internet. See Ex. 1002 ¶¶ 46-47.
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`As the ‘113 patent admits, VoIP was invented and used before the alleged
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`invention of the ‘113 patent. See Ex. 1001 at 2:48-51.
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`Indeed, a public domain
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`VoIP application NetFone (later called Speak Freely) was released in 1991 by
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`Autodesk. See Ex. 1018. The first commercial Internet VoIP application, called
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`Internet
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`Phone, was
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`released
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`by
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`Petitioner’s
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`predecessor VocalTec
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`Communications in 1995. See Ex. 1002 ¶¶ 48-50.
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`Notably, U.S. Patent number 6,031,836, the application for which was filed
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`in 1996, discloses: (1) Voice over IP telephony; (2) voice communications between
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`a VoIP user and a PSTN user (thus processing a call across both the packet
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`network of the Internet and the PSTN); and (3) use of a website to allow users to
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`access telephony features, such as “redirection of incoming calls to another
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`destination.” See Ex. 1015 at 1:10-17 (“It is known in the communications arts
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`U.S. Patent No. 8,457,113
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`that voice calls can be carried by the Internet (or some other data transport
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`network) between a pair of Internet phones or voice-enabled computers. It is also
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`known that voice calls carried by the Internet can be interfaced by a gateway to the
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`telephone network so that an Internet phone or a voice-enabled computer
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`connected to the Internet can engage in a voice call with a standard telephone
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`connected to the telephone network.”), 2:33-50 (“a method of accessing telephony
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`features over the Internet by using the World Wide Web …”), 5:30-49 (“To
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`activate redirection of incoming calls to another destination … user of client 101
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`uses [web] browser 113 to click on a “redirection on” feature virtual button …”);
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`see also Ex. 1002 ¶¶ 51-52.
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`In short, prior to June 1, 1999, calls over the Internet (Voice over IP), calls
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`between traditional telephones connected to the PSTN and devices connected to
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`the Internet using Voice over IP, signaling protocols for both the PSTN (such as
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`SS7) and for Voice over IP, and website-based telephone feature management
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`were all well-known technologies. Id. ¶ 52.
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`D.
`
`An Embodiment of the ‘113 Patent
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`One embodiment disclosed in ‘113 Patent’s specification uses what it calls a
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`“tandem access controller (TAC) 10” that is connected to a “PSTN tandem switch
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`16” of the “Public Switched Telephone Network (PSTN).” Ex 1001, 1:42-48;
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`4:52-66. This configuration is seen in, for example, Figure 2 (red annotations
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`added):
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`In this embodiment, a subscriber of the system (item 12) can select or
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`modify telephone service options such as call forwarding using a website hosted by
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`a web server (not shown). Ex. 1001 at 5:33-64. The subscriber’s selections will be
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`provided to the TAC 10. Id. at 5:60-63. In operation, when a caller (item 20) calls
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`the subscriber using the subscriber’s public phone number, the call travels from the
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`caller’s local Central Office 18 to the tandem switch 16, and then to the TAC 10.
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`Id. at 3:14-16. Based on the subscriber’s selections, the TAC will determine where
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`to route the telephone call. Id. 3:16-23, 5:5-20, 6:26-29, 10:1-3. If the subscriber
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`set a forwarding number, the TAC 10 will place a second call to the forwarding
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`number. Id. When the second call is answered, the TAC 10 connects the first call
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`to the second call, “thereby connecting the calling party 20 to the subscriber 12.”
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`Id.; see also Ex. 1002 ¶¶ 53-54.
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`E.
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`Claim Construction
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`For purposes of this petition for Inter Partes Review, the challenged claims
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`must be given their broadest reasonable interpretations to one of ordinary skill in
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`light of the specification. 37 C.F.R. § 42.100(b). Claim language not specifically
`
`addressed below should be given its plain and ordinary meaning.
`
`1.
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`“web enabled”
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`Claim 1 recites “A method performed by a web enabled processing system
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`including one
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