Filed on behalf of YMax Corporation
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`PETITIONER’S OPPOSITION TO
`
`PATENT OWNER’S MOTION TO AMEND
`
`

`

`TABLE OF CONTENTS
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`I.
`
`PO’s Motion Does Not Comply with the Board’s Rules ................................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`PO Failed to Disclose Material Prior Art..............................................1
`
`The Substitute Claim Adds New Subject Matter..................................3
`
`1.
`
`2.
`
`3.
`
`4.
`
`PO failed to explain any of the citations in its appendix ............3
`
`There is no written description support for the TAC
`placing/processing a second call to a subscriber over a
`packet network when it receives an incoming call for the
`subscriber ....................................................................................5
`
`There is no written description support for the TAC
`receiving a first call request and call data...................................7
`
`There is no written description support for “establishing the
`voice communication” after the second call is completed and
`answered......................................................................................8
`
`Substitute Claim 183 is Indefinite and/or Inoperable ...........................8
`
`The amendment does not respond to a ground of unpatentability
`involved in the trial................................................................................9
`
`The amendment is improperly broadening .........................................10
`
`II.
`
`THE SUBSTITUTE CLAIM REMAINS UNPATENTABLE.....................11
`
`A.
`
`The TAC Feature Was Known in the Art ...........................................11
`
`1.
`
`2.
`
`The PBX prior art teaches the TAC feature..............................11
`
`Lamb teaches the TAC feature .................................................13
`
`B.
`
`C.
`
`It would have been obvious to connect O’Neal’s UMS directly to a
`tandem switch......................................................................................19
`
`The “call establishing” feature ............................................................21
`
`1.
`
`PO introduced and argued unrecited limitations ......................21
`
`i
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`The “call establishing” feature was well-known in the art.......22
`
`2.
`
`III. CONCLUSION..............................................................................................25
`
`ii
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`TABLE OF AUTHORITIES
`
`CASES
`
`EcoWater Sys. LLC v. Culligan Int’l Co.,
`IPR2013-00155, Paper 18 (PTAB June 24, 2014) ..........................................4
`
`Thermalloy, Inc. v. Aavid Eng’g, Inc.,
`121 F.3d 691, 692 (Fed. Cir. 1997) ...............................................................11
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.121 (a)(2)(i) .......................................................................................9
`
`37 C.F.R. § 42.121(a)(2)(ii).......................................................................................3
`
`iii
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`LIST OF EXHIBITS
`
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`
`YMax Exh. Description
`U.S. Patent No. 8,457,113 to Wood et al. (the “‘113 patent”)
`1001
`1002
`Declaration of Tal Lavian, Ph.D.
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`1003
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`1004
`International Publication No. WO 99/14924 to Shtivelman et al.
`1005
`(“Shtivelman”)
`Prosecution History of U.S. Patent No. 6,529,596
`Prosecution History of U.S. Patent No. 7,764,777
`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
`http://www.thefreelibrary.com/eBay’s+AuctionWeb+Tops+One+Mi
`llion+Bids%3B+Leading+Online+Auction...-a018940197
`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
`1019 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
`
`1014
`1015
`1016
`1017
`
`1018
`1019
`
`1020
`1021
`1022
`
`iv
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`1023
`
`1024
`
`YMax Exh. Description
`over IP interoperability, dated June 2, 1999
`C. Huitema, et al., Media Gateway Control Protocol (MGCP) Call
`Flows, dated January 20, 1999
`C. Huitema, et al., Media Gateway Control Protocol (MGCP)
`CallFlow Test Case 1, dated February 25, 1999
`The iNOW! [VoIP Interoperability Now!] Joint Press Release, dated
`December 19, 1998
`L. Ong, et al. Framework Architecture for Signaling Transport,
`dated October 1999
`U.S. Patent No. 5,333,185 (“Burke”)
`U.S. Patent No. 5,574,781 (“Blaze”)
`U.S. Patent No. 5,440,613 (“Fuentes”)
`U.S. Patent No. 6,327,258 (“Deschaine”)
`Hanmer and Wu, Traffic Congestion Patterns (“Hanmer”)
`U.S. Patent No. 5,566,236 (“MeLampy”)
`U.S. Patent No. 6,747,970 (“Lamb”)
`US Patent No. 6,169,735 (“Allen”)
`US Patent No. 6,614,781 (“Elliot”)
`U.S. Patent No. 6,215,790 (“Voit”)
`U.S. Patent No. 5,377,186 (“Wegner”)
`U.S. Patent No. 5,841,854 (“Schumacher”)
`U.S. Patent No. 5,867,562 (“Scherer”)
`Prosecution History of Application No. 13/358, 353 (“‘353 Pros.”)
`U.S. Patent No. 8,848,894 (“the ‘894 patent”)
`Signaling System #7 4th ed. (“Russell”)
`Divestiture: A Record of Technical Achievement, IEEE Communi-
`cations Magazine, Vol. 23, Issue No. 12, Dec. 1995 (“Andrews”)
`Transcript of Deposition of Regis Jerome “Bud” Bates taken on
`May 4, 2017 (“Bates Tr.”)
`
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`
`1025
`
`1026
`
`1044
`
`v
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`YMax Exh. Description
`1045
`Declaration of Dr. Leonard J. Forys in Support of Opposition to Mo-
`tion to Amend (“Forys Dec.”)
`Curriculum vitae of Dr. Leonard J. Forys
`
`1046
`
`vi
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`Petitioner YMax Corporation hereby submits this Opposition to the Contin-
`
`gent Motion to Amend filed by Patent Owner Focal IP, LLC (“PO”). PO’s Motion
`
`to Amend seeks to substitute original claim 1 of the ‘113 patent with substitute
`
`claim 183. For the following reasons, PO’s motion should be denied.
`
`I.
`
`PO’S MOTION DOES NOT COMPLY WITH THE BOARD’S RULES
`
`A.
`
`PO Failed to Disclose Material Prior Art
`
`PO states that its proposed amendments are directed to two features, namely
`
`that the TAC: (1) the “communicates with the tandem switch without passing
`
`through an edge switch.” Mot., p. 12 (“the TAC feature”); and (2) “receiv[es] a
`
`first call request associated with a first call and processing a second call associated
`
`with a second call request and establishing voice communications across both a
`
`packet network and a network of tandems after the second call is answered.”1 Mot.,
`
`p. 13 (“the call establishing feature”). When setting forth its proposed amend-
`
`ments, it is well settled that PO is obligated to disclose to the Board any “prior art
`
`that is relevant to the substitute claims, including prior art of record and prior art
`
`known to PO.” Guidance, Paper 23, p. 3. PO failed to disclose prior art references
`
`it was aware of - Lamb and Hess. Here, this is particularly troubling given that PO
`
`1 It appears that throughout its Motion, PO attempts to introduce additional claim
`
`requirements, regarding the “answering” of the first call which are not expressly
`
`recited in the claims (infra at 21); see also, Mot., p. 4, 18, 25.
`
`1
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`knew (or should have known) that this art is highly relevant to these two features
`
`PO asserts that it is unaware of any prior art that teaches the TAC feature.
`
`See e.g., Mot., p. 12-13, 22. Not so. The TAC feature was taught by the Lamb and
`
`Hess references. PO learned of these references during the prosecution of the ‘894
`
`patent – a patent that is closely related to, and shares a common ancestor with the
`
`‘113 patent. During that prosecution, the Examiner repeatedly rejected claims that
`
`included a very similar limitation to the claim language PO is adding in its pro-
`
`posed substitute claims. The table below reproduces the corresponding limitations
`
`for comparison (emphasis added).2
`
`Substitute Claim 183
`wherein communications….
`between the tandem access controller
`and the particular PSTN tandem switch,
`occur without passing through any of
`the edge switches
`
`‘353 app./ ‘894 patent (claim 1)
`route the communication from the con-
`troller to the called party via a PSTN tan-
`dem switch without traversing any in-
`tervening switches between the control-
`ler and the PSTN tandem switch.
`
`In particular, the Examiner determined that Lamb in view of Hess teaches
`
`communications between a controller and a PSTN tandem switch that occurs with-
`
`2 Both the substitute claim and the claims of the ‘894 patent limit the presence of
`
`intervening switches in the communications between the controller and the PSTN
`
`tandem switch. The language of the ‘894 patent claim is even narrower in that it
`
`does not allow any intervening switches, whereas the substitute claims only pro-
`
`hibit intervening edge switches.
`
`2
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`out passing through any switches:
`
`[I]t would have been obvious to… modify the teachings of Lamb with the
`teachings of Jones and Hess…. to initiate and route a call to the PSTN
`tandem switch without traversing any other intermediate switches be-
`tween the controller and the PSTN tandem switch…
`‘353 Pros., p. 54, 85 (emphasis added).
`To overcome the Examiner’s rejection, PO amended the claims of the ‘894
`
`patent to further require that the PSTN tandem switch “is separate from a central
`
`office switch.” This limitation, however, is not present in the substitute claim.
`
`Thus, PO was not only aware of the Lamb and Hess references, but it was
`
`also aware of their relevance to the very TAC feature it is trying to add into its
`
`proposed substitute claim. By failing to mention these references, as well as the
`
`Examiner’s statements in the prosecution of the ‘894 patent, PO has failed to ad-
`
`dress known, material prior art, thereby failing to comply with its “duty of candor
`
`and good faith” in this proceeding. Guidance, p. 5-6. Thus, for this reason alone,
`
`PO’s Motion should be denied.
`
`B.
`
`The Substitute Claim Adds New Subject Matter
`
`PO was required to, in its motion, to demonstrate that the proposed substi-
`
`tute claim does not “introduce new subject matter.” 37 C.F.R. § 42.121(a)(2)(ii).
`
`PO’s Motion falls far short of meeting this burden.
`
`1.
`
`PO failed to explain any of the citations in its appendix
`
`The Board’s order made clear that PO must: (1) “show written description
`3
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`support in the specification for each proposed substitute claim,” and (2) “show
`
`written description support for the entire proposed substitute claim.” Guidance, p.
`
`5. While the Board’s order authorized PO to submit a claim listing appendix, it did
`
`not abrogate the requirement that PO explain in the body of its Motion why its cita-
`
`tions provide support for the substitute claims. Indeed, the Board has made clear
`
`that “mere citation to the original disclosure, without any explanation as to why a
`
`person of ordinary skill in the art would have recognized that the inventor pos-
`
`sessed the claimed subject matter as a whole… is inadequate to satisfy the written
`
`description requirement.” EcoWater Sys. LLC v. Culligan Int’l Co., IPR2013-
`
`00155, Paper 18 at 25-26 (PTAB June 24, 2014). Instead of providing the required
`
`analysis, PO’s Motion merely includes three sentences: (1) one sentence citing the
`
`claim chart; (2) one conclusory sentence asserting possession of the claimed inven-
`
`tion; and (3) a single sentence simultaneously addressing most claim features,
`
`which, in turn, cites to two paragraphs of PO’s expert’s declaration. PO’s expert
`
`declaration is similarly conclusory, providing no explanation and should be given
`
`little weight. Further illustrating this deficient analysis, PO’s expert opines that
`
`there is support for limitations not found in the claims. Ex. 2040 ¶ 46 (“initiating a
`
`second call request of a second call via a VOIP network, without yet answering the
`
`4
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`first incoming call”).3 PO’s analysis is clearly deficient. Guidance, p. 4-5.
`
`Indeed, even if PO’s chart was sufficient with regard to each identified limi-
`
`tation (it is not), it clearly does not demonstrate possession of the substitute claim
`
`as a whole. For example, the various citations in the appendix span the first nine
`
`pages of the ‘965 application and five of its figures covering multiple embodi-
`
`ments. Indeed, the ‘113 patent specification uses the phrase “in one embodiment”
`
`multiple times to discuss certain features but only connects “all embodiments” in
`
`relation to the “end unit,” PO has failed to explain how any of these embodiments
`
`and limitations fit together. See ‘113 patent, 2:1-3, 3:41-57, 6:34-40, 9:24-32.
`
`In sum, PO fails to describe the interrelationship between the limitations of
`
`the substitute claims and the alleged relationship between each limitation and the
`
`corresponding citations as would have been understood by a POSITA. According-
`
`ly, PO has failed to make a prima facie case for entry of the substitute claims.
`
`2.
`
`There is no written description support for the TAC plac-
`ing/processing a second call to a subscriber over a packet network
`when it receives an incoming call for the subscriber
`
`None of PO’s cited support discloses the TAC placing a second call over a
`
`packet network to a subscriber after receiving an incoming call for the subscriber.
`
`More particularly, figure 1 does not depict anything concerning a call over a
`
`packet network. Here, the “web” concerns service changes made by subscribers not
`
`3 As discussed (infra at 21), this error runs throughout PO’s motion.
`
`5
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`calls. ‘113 patent, 5:38-48. Figure 7 concerns cell phone, not VoIP calls. ‘113 pa-
`
`tent, 6:26-29. Similarly, figure 8 only depicts fax and modem calls, not a VoIP call.
`
`‘113 patent, 6:30-33. Figure 2 does include arrows labeled “VoIP”; however, the
`
`specification explicitly explains this figure only describes making calls via voice
`
`over IP: “FIG. 2 also illustrates how the subscriber can make calls using voice
`
`over IP via a conventional digital telephone 21.” ‘113 patent, 9:23-25. There is no
`
`disclosure of the subscriber receiving a voice over IP call from the tandem access
`
`controller when it is forwarding/redirecting an incoming call.
`
`The last remaining figure relied upon by PO, figure 5, is a “method… per-
`
`formed by the TAC in response to an inbound call to the subscriber,” the subject of
`
`the proposed claim. ‘113 patent, 4:17-18; 5:57-59. This flowchart, however, fails
`
`to describe the TAC making (or otherwise “processing”) a second call to the sub-
`
`scriber over a packet network. At most, the second call from the TAC is a PSTN
`
`call (not a packet network call). FIG. 5 “Call Request (SS7) to PSTN Tandem.”
`
`The portions of the specification cited by PO also fail to provide the neces-
`
`sary written description. First, the second and fifth cited excerpts (id. at 11:17-19
`
`and 11:31) do not even reference a packet network/voice over IP. The first cited
`
`passage, Ex. 2066 at 8:28-9:13 and 9:20-25, has only one reference to voice over
`
`IP calls, and it explains how figure 2 depicts the subscriber making a voice over IP
`
`call, not receiving one from the TAC: “FIG. 2 also illustrates how the subscriber
`
`6
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`can make calls using voice over IP.” ‘113 patent, 9:23-25. The fourth excerpt (id.
`
`at 10:31-11:5) is consistent with the first, only describing that the subscriber can
`
`use the web to change the TAC’s settings and can make a voice over IP call, not
`
`that the subscriber receives one from the TAC: “FIG. 4 is a flow cart of actions that
`
`may be taken by the TAC 10 in response to the subscriber… controlling the TAC,
`
`using the web…, to change the subscriber’s telephone provisioning or perform an-
`
`other function, such as make a VoIP call.” Forys Dec. ¶54.
`
`The third excerpt (id. at 10:15) is only the single vague sentence, “The in-
`
`vention may also include ivr/vm/v[oice]overip.” This is simply not a written de-
`
`scription of the tandem access controller placing a voice over ip call to the sub-
`
`scriber when redirecting/forwarding an incoming call. Thus, none of the figures or
`
`specification excerpts relied upon by PO describe the TAC placing (or otherwise
`
`processing) a call to the subscriber over a packet network after receiving an incom-
`
`ing call for the subscriber.
`
`3.
`
`There is no written description support for the TAC receiving a
`first call request and call data
`
`Proposed claim 183 requires the TAC to receive both a “first call request”
`
`and, in addition, “call data.” PO does not point to any written description support
`
`for the TAC receiving both a first call request and call data associated with a first
`
`call originated by the calling party. To the contrary, PO indicates in its motion that
`
`they are in fact the same thing: “an example of call data of an ‘incoming call’ as a
`
`7
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`‘call request’ exemplified by ‘SS7 data indicating an incoming call.’” Paper 27, p.
`
`8. Thus, the proposed claim lacks written description support.
`
`4.
`
`There is no written description support for “establishing the voice
`communication” after the second call is completed and answered
`
`Proposed claim 183 requires the TAC to establish voice communication af-
`
`ter the second call to the subscriber is “completed and answered.” However, PO
`
`does not point to any written description support for the second call being both
`
`“completed” and “answered”; nor does PO explain the difference between the two.
`
`As support, PO cites “When the subscriber 12 terminates (or answers) the
`
`second call, the TAC 10 terminates the first call and connects it to the second call,
`
`thereby connecting the calling party 20 to the subscriber 12.” Ex. 2041 at 14. How-
`
`ever, “terminates (or answers)” is not a disclosure of the claimed “completed and
`
`answered.” To the extent, however, PO argues “terminates” is equivalent to “com-
`
`pleted,” this disclosure is still in adequate. By using the conjunctive “or,” the spec-
`
`ification presents “terminating”/”answering” the second call as alternatives to an-
`
`swering the first call. However, this is in contrast to the proposed claim which re-
`
`quires both steps. Thus, the proposed claim lacks written description support.
`
`C.
`
`Substitute Claim 183 is Indefinite and/or Inoperable
`
`Proposed claim 183 contains several elements which conflict with each oth-
`
`er, making the claim indefinite and/or inoperable. First, the “receiving” element
`
`recites that there is a first call from “either the packet network or the second net-
`
`8
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`work,” where the second network is part of the PSTN. Second, that element also
`
`recites that there is a “second call across the packet network to complete the call to
`
`the subscriber.” Finally, the last element requires that voice communication be es-
`
`tablished “across both the packet network and the second network [i.e., the
`
`PSTN].” If the second call must go across the packet network, and the full com-
`
`munication path must include both the second network/PSTN and the packet net-
`
`work, then the first call (the first leg of the full path) must use the PSTN. Thus, us-
`
`ing the packet network is not an option. This implicit restriction is in direct conflict
`
`with the “receiving” step which explicitly contemplates the first call using the
`
`packet network. Therefore, the claim is indefinite and/or inoperable. Forys Dec.
`
`¶53.
`
`D.
`
`The amendment does not respond to a ground of unpatentability
`involved in the trial
`
`The amendments in a motion to amend must respond to a ground of un-
`
`patentability involved in the trial. 37 C.F.R. §42.121 (a)(2)(i). PO’s substitute
`
`claim does not comply with this requirement. In particular, substitute claim 183 re-
`
`places the phrase “called party” from the original claim with the term “subscriber.”
`
`Ex. 2062 (“processing a second call request associated with a second call across
`
`the packet network to complete the call to the subscriber”).
`
`This “subscriber” amendment does not respond to any ground of unpatenta-
`
`9
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`bility involved in the trial4. First, PO never explains how amending “called party”
`
`to “subscriber” overcomes the prior art in general. Second, it plainly does not. Both
`
`the O’Neal and Shtivelman in this trial disclose a subscriber. O’Neal, Abstract,
`
`9:55-58, 11:40-51, 15:14-43; Shtivelman, 7:29-8:2. This is even confirmed by PO.
`
`Paper 26 at 45 (PO noting that O’Neal discloses a “subscriber”); Ex. 2040, ¶ (PO’s
`
`expert declaring that Shtivelman discloses a “subscriber[]”). Therefore, amending
`
`“called party” to “subscriber” does not respond to a ground of unpatentability in-
`
`volved in the trial, thus PO’s Motion should be denied.
`
`E.
`
`The amendment is improperly broadening
`
`A motion to amend cannot enlarge the scope of the claims. 37 CFR §42.121
`
`(a)(2)(i); see also Guidance, p. 4. (“the proposed substitute claim should not elimi-
`
`nate any feature or element of the original patent claim which it is intended to re-
`
`place”). Here, PO’s substitute claim violates this rule.
`
`Original claim 1 required “processing the call across both the packet net-
`
`work and the second network to complete the call.” ‘113 patent, claim 1 (emphasis
`
`added). The proposed substitute claim, however, requires processing the call across
`
`only the “packet network” to complete the call. Ex. 2062 (“processing a second
`
`4 Indeed, the amendments from “called party” to “subscriber” after the claim pre-
`
`amble appear to be superfluous or cosmetic since the preamble itself defines
`
`“called party” (“wherein the called party is a subscriber”).
`
`10
`
`

`

`IPR2016-01260
`U.S. Patent No. 8,457,113
`call request associated with a second call across the packet network”). That is, it
`
`eliminates the need for processing the call across the second network. As such, the
`
`proposed substitute claim is broader than the original claim in at least one respect.
`
`Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997). For at
`
`least this reason, PO’s motion should be denied.
`
`II.
`
`THE SUBSTITUTE CLAIM REMAINS UNPATENTABLE
`
`According to PO, the amendment to claim 1 is directed to adding two fea-
`
`tures: TAC feature and the call establishing feature. Mot., p. 1, 12-13. Both fea-
`
`tures, however, were well known before the ‘113 Patent. Accordingly, PO’s reli-
`
`ance on these added features does nothing to salvage the patentability of the claim.
`
`A.
`
`The TAC Feature Was Known in the Art
`
`The TAC feature requires that the tandem access controller be in communi-
`
`cation with a particular PSTN tandem switch, and further requires that “communi-
`
`cations, including the first request to establish the first incoming call, between the
`
`tandem access controller and the particular PSTN tandem switch, occur without
`
`passing through any of the edge switches.”
`
`1.
`
`The PBX prior art teaches the TAC feature
`
`PO asserts that nothing in the prior art shows a PBX directly connected to a
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`tandem switch. Mot., p. 4, 18, 24. Not so. For example, Blaze discloses a commu-
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`nications system that is arranged to route calls to a subscriber. Blaze, Abstract. To
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`route such calls, Blaze teaches a “Private Branch Exchange (PBX) 111” that is “di-
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`U.S. Patent No. 8,457,113
`rectly connected to [a] terminating toll switch 110.” Blaze, 4:7-11 (emphasis add-
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`ed). Forys Dec. ¶87, 90. Figure 1 of Blaze illustrates this direct connection:
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`The direct connection of Blaze’s PBX to the toll switch teaches the TAC
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`feature. In particular, the PBX of Blaze is (or includes) a tandem access controller,
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`as it is (or includes) a processor that can receive calls from Interexchange Carrier
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`(IXC) network 103 and then complete those calls to a “telephone set 130 or 131.”
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`Blaze, 4:64-5:46. Furthermore, the toll switch 110 of Blaze is a PSTN tandem
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`switch. This is confirmed by PO’s own expert, who explained that toll switches are
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`tandem switches. See Ex. 2022, ¶ 36 (“tandem switches are also referred to as
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`Class 4 switches or toll switches”); ‘777 Mot., p. 5 (“class 4 level refers to both a
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`“toll center” and a “tandem switch”). PO’s expert has further explained that IXC
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`switches are part of the PSTN (Bates Tr. 16:21-25). Finally, because the connec-
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`tion is direct, all communications between the PBX 111 and toll switch 111 pass
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`directly from the PBX to the toll switch (or vice versa). Thus, these communica-
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`U.S. Patent No. 8,457,113
`tions “occur without passing through any” edge switches.
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`As another example, Burke teaches that it was “common” for a PBX (i.e., a
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`tandem access controller) to be connected via a dedicated line (i.e., a direct connec-
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`tion) to a toll switch (i.e., a PSTN tandem switch). Burke, 7:38-56, FIG. 1 (illus-
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`trating a PBX 130 directly connected to toll switch 124 via dedicated line 127).
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`Similarly, Fuentes explains that is was well known to connect a PBX (i.e., a
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`tandem access controller) to a PSTN tandem switch, instead of an edge switch:
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`“Usually, the PBX is connected to a class 5 central office (end office) or to a tan-
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`dem or toll switching system in order to allow the wireless customers to access the
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`public switched telephone network.” Fuentes, 4:62-65 (emphasis added). Forys
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`Dec. ¶88-89,91-93.
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`In its Motion, PO argues that “[i]f the solution to providing call control fea-
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`tures in the PSTN was as simple as taking an existing PBX or other external sys-
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`tem and connecting it to a PSTN tandem switch, as proposed by Petitioners, one
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`would reasonably publish [] something describing such a solution.” Mot., p. 24.
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`The references above are published patents that describe precisely such a solution
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`and clearly demonstrate that such a modification was within the skill of a POSITA.
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`2.
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`Lamb teaches the TAC feature
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`As discussed above, Lamb was used as a rejecting reference against PO’s
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`claims containing the TAC feature during the prosecution of the related ‘894 pa-
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`tent. Despite this, PO never mentioned Lamb in its motion to amend.
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`Lamb discloses a telecommunication system that bridges communications
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`between connectionless (e.g., Internet) and connection-based networks (e.g.,
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`PSTN), enabling seamless communications across both networks for voice calls.
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`Lamb, col. 10:20-46; Forys Dec. ¶60, 63, 64. Lamb’s telecommunications system
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`can be used to provide advanced calling features (e.g., call-redirect, conference
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`calling, call-branching, etc.) as well as VoIP communications. Lamb, 13:56-65,
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`13:11-34, 12:5-16, 6:31:53, 8:9-45, FIGS. 7-8; Forys Dec. ¶61-62. An example of
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`Lamb’s telecommunication system architecture is shown in figure 3 (reproduced
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`below).
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`Lamb’s system includes a Telecom Hosting Server (THS) 203, a Telecom
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`Network Server (TNS) 202-1, and a Public Phone Switch 202-2 that collectively
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`IPR2016-01260
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`form a bridge between a packet-based network (e.g., the Internet) and the PSTN,
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`allowing communications across both networks. Lamb, 10:20-58, 26:24-61, FIG.
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`3; Forys Dec. ¶64-66. The THS is connected to a packet-based network (e.g., the
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`Internet). Lamb, 12:17-38, FIGS. 3-4; Forys Dec. ¶66-67. The THS also communi-
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`cates with a Telecom Network Server (TNS), which, in turn, provides signaling to
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`the Public Phone Switch. Lamb, 30:45-54, 31:58-32:7.
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`The public phone switch provides access to the PSTN by “creating, main-
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`tain, bridging, and disconnecting call connections within the PSTN 101.” Lamb,
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`31:58-62. A POSITA would have readily understood that a tandem switch would
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`have provided such functionality. Forys Dec. ¶68, 63, 55.5 Indeed, PO’s expert
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`confirms this. Bates Tr., 35:6-18. Accordingly, a POSITA would have found it ob-
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`5 Although Lamb also discusses the possibility of locating the TNS (202-1) at a
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`central office, a POSITA would have understood Lamb to be teaching that its TNS
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`could be connected at any type of public PSTN switch suitable for managing call
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`connections to the PSTN. Lamb, 31:58-62; Forys Dec. ¶69. Indeed, this is also
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`consistent with Lamb’s discussion of modifications to the PSTN. Lamb, 1:44-48 (“
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`central or tandem offices 110 through 113 may be replaced, for example, private
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`branch exchanges, PSTN control hardware or other telephone switching equip-
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`ment”); Forys Dec. ¶70.
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`vious for Lamb’s public switch 202-2 to be a tandem switch.
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`In addition, Lamb teaches that “telecommunications network server 202-1
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`operates as a service control point (SCP) or Service Node to the telephone network
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`101 and the public phone switch 202-2 operates as a signal transfer point (STP)
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`on the public telephone network.” Lamb, 28:10-14. A POSITA would have recog-
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`nized that in order to operate as an STP on the PSTN, a tandem switch would be
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`used as Lamb’s public phone switch 202-2. Forys Dec. ¶71. This is consistent with
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`how STPs were described in numerous other prior art references.
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`For example, US Patent 6,169,735 to Allen Jr. depicts and describes a con-
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`ventional PSTN where an STP is connected to a tandem switch/office. 6
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`6 The substitute claims cover indirect connection between the tandem access con-
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`troller and tandem switch. See Mot., p. 1 (“The Proposed Substitute Claims amend
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`the Original Claims by incorporating limitations that describe (i) the tandem access
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`controller ….. coupled to a tandem switch”); see also Proposed Claims 47 and 48
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`(reciting the narrower phrase “directly connected” in relation to the telephones);
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`Forys Dec. ¶47, 45-46, 50; Bates Tr., 60:8-16.
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`Allen FIGS. 1-3; see alsoAllen, 2:3-5 (“A conventional connection setup between
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`two end offices 20, 22 in a tandem network is now described with reference to
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`FIGS. 2 and 3.”). This tandem office includes a tandem access switch. Allen, 1:39-
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`59 (“When an end/central office 10 utilizes a tandem trunk group 12, the connec-
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`tion between end offices 10 is via a tandem switch 16.. which passes the call
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`along”). Forys Dec. ¶72-76. As another example, US Patent 6,614,781 to Elliot
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`teaches that STPs are themselves “tandem switches” on the SS7 network, which
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`route SS7 signaling. Elliot, 85:20-26 (“Signal transfer points (STPs) are tandem
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`switches which route SS7 signaling messages long [sic] the packet switched SS7
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`signaling network 114”). Forys Dec. ¶84-86. Accordingly, Lamb in view of this
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`prior art (e.g., Allen, Elliot, and/or Hess) teaches using a PSTN tandem switch
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`(e.g., public phone switch 202-2) to access the PSTN.
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`Lamb also teaches that THS and/or TNS are a tandem access controller. For
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`example, Lamb teaches that the THS and/or TNS communicate with and control
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`the Public Phone Switch 202-2 to make phone calls. Lamb, 27:40-46 (“public
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`phone switch 202-2, under direction and control of the telecommunications
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`network server 202-1 and the telecommunications hosting server 203….
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`form[s] call connections… on the PSTN 101”), 21:58-67, 26:47-55. Thus, the
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`TNS and/or THS7 of Lamb is a tandem access controller that is connected to the
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`Public Phone Switch 202-2 (i.e., a PSTN tandem switch). Forys Dec. ¶77, 79.
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`Importantly, Lamb also teaches that communications amongst Public Phone
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`Switch, TNS, and THS occur without passing through any edge switches (or any
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`other switches) of the PSTN. For example, as is seen in FIG. 3 (reproduced above),
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`Public Phone Switch (e.g., 202-2) is connected to TNS (e.g., 202-1) via interface
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`205-2. In turn, the TNS is connected to THS (e.g., 203) via interface 205-1. Forys
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`Dec. ¶80-81. Lamb explains that the physical connections for interfaces 205-1 and
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`205-2 can include Ethernet, serial port, or other wired interfaces. Lamb, 27:17-26.
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`Accordingly, because the communication inte