Case 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
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`

`

`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`TABLE OF CONTENTS
`
`2.
`
`3.
`
`2.
`
`i
`
`I.
`II.
`
`III.
`
`B.
`
`C.
`
`B.
`
`C.
`D.
`E.
`
`INTRODUCTION ...........................................................................................1
`PO’S DISCLAIMER ARGUMENT SHOULD BE REJECTED – ONCE
`AGAIN – AS FLAWED AND IMPROPER...................................................1
`A.
`Disavowal Is A Narrow Exception That Requires “Words or
`Expressions of Manifest Exclusion or Restriction” ..............................2
`The Specification Does Not Include Any “General” Disclaimer .........4
`1.
`The Background Discussion of Certain Prior Art Systems Is not
`an Unmistakable Disavowal .......................................................4
`The Specification Consistently Describes the Tandem
`Configuration as an Embodiment – Never as “the Invention” ...5
`The Challenged Claims Recite Broader Language Not Found
`Anywhere in the Specification....................................................8
`The Prosecution History Confirms That Applicants Did Not Intend To
`Disavow Any Claim Scope ...................................................................9
`1.
`Examining the Prosecution History is Critical to Properly
`Determine Claim Scope ..............................................................9
`The Prosecution History Makes Clear that Applicants
`Deliberately Pursued Broader Claim Scope .............................11
`PO’S CLAIM CONSTRUCTIONS ARE IMPROPER ................................13
`A.
`“Switching Facility”............................................................................14
`B.
`“Coupled To” ......................................................................................16
`C.
`“Tandem Access Controller” ..............................................................17
`IV. ALL OF THE CHALLENGED CLAIMS ARE UNPATENTABLE...........18
`A.
`Both Shtivelman and O’Neal Disclose a Call Processing System
`Coupled to a Switching Facility..........................................................18
`O’Neal Discloses Establishing Voice Communications Between the
`Two Parties After the Second Call is Completed ...............................19
`Shtivelman Anticipates Dependent Claim 8 .......................................22
`Shtivelman and O’Neal Render Obvious Dependent Claim 17..........23
`Shtivelman and O’Neal Anticipate Dependent Claims 18 and 19......24
`
`

`

`Grounds 3 and 4 Render the Challenged Claims Obvious .................24
`F.
`CONCLUSION..............................................................................................24
`
`V.
`
`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Akamai Techs., Inc. v. Limelight Networks, Inc.,
`629 F.3d 1311 (Fed. Cir. 2010) .................................................................9, 10
`Altiris Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003) .......................................................................6
`In re Am. Acad. Of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ...............................................................2, 5, 7
`Biogen, Inc. v. Berlex Labs., Inc.,
`318 F.3d 1132 (Fed. Cir. 2003) .....................................................................10
`Bradford Co. v. Conteyor N. Am., Inc.,
`603 F.3d 1262 (Fed. Cir. 2010) .....................................................................16
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ...................................................................2, 7
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .......................................................................4
`Chi. Bd. Options Exch., Inc. v. Int’l Secs. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2014) .......................................................................7
`Epistar Corp. v. Int’l Trade Comm’n,
`566 F.3d 1321 (Fed. Cir. 2009) ...................................................................2, 5
`Honeywell Intern., Inc. v. ITT Industries, Inc.,
`452 F.3d 1312, 1318 (Fed. Cir. 2006) .......................................................7, 10
`LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2015-01986, Paper 34 (PTAB March 16, 2017).......................................6
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .....................................................................2, 6
`In re Man Mach. Interface Techs. LLC,
`822 F.3d 1282 (Fed. Cir. 2016) .......................................................................7
`Openwave Sys., Inc. v. Apple Inc.,
`808 F.3d 509 (Fed. Cir. 2015) .....................................................................3, 7
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .....................................................................10
`
`iii
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`U.S. Patent No. 8,457,113
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`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001) ....................................................................10
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) .......................................................................7
`Telcordia Techs., Inc. v. Cisco Sys., Inc.,
`612 F.3d 1365 (Fed. Cir. 2010) .....................................................................10
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) ...................................................................2, 6
`Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .....................................................2, 3, 4, 7, 12
`Ventana Med. Sys., Inc.,
`473 F.3d 1173 (Fed. Cir. 2006) .......................................................................5
`
`iv
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`LIST OF ABBREVIATIONS
`
`Document Description
`Patent Owner
`Petition for Inter Partes Review (Paper No. 1)
`Patent Owner Preliminary Response (Paper No.
`7)
`Petitioner’s Reply to Patent Owner’s Preliminary
`Response
`Institution Decision (Paper No. 12)
`Patent Owner Request for Rehearing (Paper No.
`14)
`Decision Denying Request for Rehearing (Paper
`No. 15)
`Patent Owner Response (Paper No. 26)
`Declaration of Dr. Regis J. Bates in Support of
`Patent Owner Response (Exhibit 2022)
`Deposition Transcript of Dr. Regis J. Bates, May
`4, 2017 (Exhibit 1027)
`
`Abbreviation
`PO
`Pet.
`Prelim. Resp.
`
`Reply to PR
`
`Institution
`Rehearing Req.
`
`Rehearing Dec.
`
`POR
`Bates Dec.
`
`Bates Tr.
`
`v
`
`

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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`EXHIBIT LIST
`
`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
`
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`1019
`
`1020
`1021
`1022
`
`vi
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`Case IPR2016-01260
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`1023
`
`1024
`
`1025
`
`1026
`
`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
`
`1044
`
`vii
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`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
`
`viii
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`U.S. Patent No. 8,457,113
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`I.
`
`INTRODUCTION
`
`PO devotes more than 30 pages of its Response to faulting the Board for
`
`“fail[ing] to give effect to the ‘113 Patent’s disclaimer of subject matter and claim
`
`scope” and challenging the Board’s claim constructions in light of this alleged dis-
`
`claimer. See generally POR, 1-3, 9-29, 31-39. In doing so, PO merely rehashes
`
`substantially the same arguments that have already been rejected, twice, by the
`
`Board in this proceeding. Not surprisingly, as with its previous challenges, PO’s
`
`faulty disclaimer theory and overly-narrow claim constructions are at the heart of
`
`its arguments for why the prior art does not render the challenged claims unpatent-
`
`able. POR, 2-3, 54-57, 63-64. Notably, these arguments constitute PO’s sole basis
`
`for why claims 1, 2, 11, 15, 16, 18, and 19 are allegedly patentable over
`
`Shtivelman (i.e., grounds 1 and 4).
`
`II.
`
`PO’S DISCLAIMER ARGUMENT SHOULD BE REJECTED – ONCE
`AGAIN – AS FLAWED AND IMPROPER
`
`The Board correctly determined that the intrinsic record falls far short of
`
`demonstrating a clear and unmistakable disavowal of claim scope. For example,
`
`the Board found that: (i) the specification describes different embodiments, only
`
`some of which include the “tandem configuration” that purportedly addresses
`
`problems in the prior art; (ii) the specification lacks any mention of the broader
`
`claim term – “switching facility” – which was added during prosecution; and (iii)
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`U.S. Patent No. 8,457,113
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`the prosecution history includes statements contradicting a disclaimer. Institution
`
`at 9-18; Rehearing Dec. at 2-6. Presumably recognizing these fatal defects, PO
`
`now asserts that the specification includes a “general” disclaimer that allows it to
`
`read-in limitations from a preferred embodiment and ignore the broader claim
`
`terms and the statements the applicants made about these terms during prosecution.
`
`This is clearly improper.
`
`A.
`
`Disavowal Is A Narrow Exception That Requires “Words or Ex-
`pressions of Manifest Exclusion or Restriction”
`
`It is axiomatic that “claim terms take on their ordinary and accustomed
`
`meanings unless the patentee demonstrated an intent to deviate from the ordinary
`
`and accustomed meaning of a claim term by redefining the term or by characteriz-
`
`ing the invention in the intrinsic record using words or expressions of manifest ex-
`
`clusion or restriction, representing a clear disavowal of claim scope.” Teleflex, Inc.
`
`v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325–26 (Fed. Cir. 2002); see also Thorn-
`
`er v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012);
`
`Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335–37 (Fed. Cir. 2009);
`
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 905–06 (Fed. Cir. 2004); In
`
`re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369–70 (Fed. Cir. 2004); CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“We in-
`
`dulge a ‘heavy presumption’ that a claim term carries its ordinary and customary
`
`2
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`meaning.”). Thus, “[b]oth exceptions require a clear and explicit statement by the
`
`patentee.” Thorner, 669 F.3d at 1366; Openwave Sys., Inc. v. Apple Inc., 808 F.3d
`
`509, 513 (Fed. Cir. 2015) (disavowal requires a level of clarity and deliberateness
`
`that “is so unambiguous as to be unmistakable evidence of disclaimer.”).
`
`Neither exception applies here. There is nothing to suggest that the patentee
`
`acted as a lexicographer. Similarly, nothing in the intrinsic record comes close to a
`
`clear and unmistakable disclaimer. Tellingly, PO is not able to point to any state-
`
`ments that characterize “the invention” using “words or expressions of manifest
`
`restriction or exclusion.” Rather, PO merely points to a handful of sentences in the
`
`specification (and similar statements in the prosecution history) that identify prob-
`
`lems with certain prior art systems and/or describe a purported solution thereto.
`
`POR, 15-18, 21-25. Moreover, this solution (i.e., the “tandem configuration”) is
`
`consistently described as a “preferred embodiment” or “one embodiment” – never
`
`as the “invention/present invention.” POR, 17. This fact, alone, is fatal to PO’s
`
`“general” disclaimer theory.
`
`Additionally, the prosecution history makes clear that the applicants deliber-
`
`ately chose to add broad language to the challenged claims, including terms not
`
`even mentioned in the specification, in an effort to secure broader claim scope. It
`
`is neither reasonable nor permissible for PO to ask the Board to redraft these
`
`claims more narrowly now that it is confronted with invalidating prior art. Thorn-
`
`3
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`er, 669 F.3d at 1367 (We do not read limitations from the specification into claims;
`
`we do not redefine words. Only the patentee can do that.”); Chef America, Inc. v.
`
`Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (“This court, however,
`
`repeatedly and consistently has recognized that courts may not redraft claims,
`
`whether to make them operable or to sustain their validity” and, thus, “we construe
`
`the claim as written, not as the patentees wish they had written it.”).
`
`B.
`
`The Specification Does Not Include Any “General” Disclaimer
`
`1.
`
`The Background Discussion of Certain Prior Art Systems Is
`not an Unmistakable Disavowal
`
`As is often the case, the ‘113 patent specification begins with a brief
`
`“background” section that describes certain prior art telecommunications systems
`
`and identifies certain purported drawbacks therewith. ‘113 patent, 1:30-2:54. In
`
`addition to discussing various other prior art, this section includes a few passages
`
`referring to alleged disadvantages with certain systems that utilized “edge devices”
`
`or devices connected through an “edge switch.” Id., 1:37-40, 1:59-67, 2:40-54.
`
`PO makes far too much of these background passages, and asserts that “dis-
`
`paraging the prior art is sufficient to disclaim claim scope.” POR, 10, 12, 14-15.
`
`This is simply not correct. Indeed, it is well settled that merely criticizing or dis-
`
`paraging prior art is insufficient to establish a disavowal. See, e.g., Thorner, 669
`
`F.3d at 1366 (“Mere criticism of a particular embodiment encompassed in the plain
`
`4
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`U.S. Patent No. 8,457,113
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`meaning of a claim term is not sufficient to rise to the level of a clear disavowal.”);
`
`Epistar, 566 F.3d at 1335 (“A patentee’s discussion of the shortcomings of certain
`
`techniques is not a disavowal of the use of those techniques in a manner consistent
`
`with the claimed invention.”); Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473
`
`F.3d 1173, 1180-81 (Fed. Cir. 2006) (general comments distinguishing prior art
`
`were not sufficient); In re Am. Acad., 367 F.3d at 1369–70 (descriptions of defi-
`
`ciencies with “mainframe computers” was not a disavowal of such computers).
`
`Likewise, here, the specification’s descriptions of a few shortcomings with
`
`certain prior systems is not a clear and unmistakable disavowal.
`
`2.
`
`The Specification Consistently Describes the Tandem Con-
`figuration as an Embodiment – Never as “the Invention”
`
`As PO emphasizes, the solution proposed in the specification requires “con-
`
`necting the TAC (a Tandem Access Controller) to a tandem switch.” POR, 17, 9.
`
`Significantly, however, this “tandem configuration” is repeatedly (and exclusively)
`
`described as an embodiment in the specification.
`
`Indeed, even the passages quoted in the Response confirm this. POR, 17-18,
`
`citing ‘113 patent, 2:1-3 (“A preferred embodiment ... connects at the tandem ...
`
`.) and 3:65-4:3 (“FIG. 1 illustrates the tandem access controller (TAC) in one em-
`
`bodiment ...). Moreover, the specification describes at least one other embodi-
`
`ment that does not require any direct connection to a tandem switch. See, e.g.,
`
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`U.S. Patent No. 8,457,113
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`‘113 patent, 3:28-40 (describing an embodiment wherein the TAC is simply “con-
`
`nected to the PSTN,” which may occur through any switch, such as an edge
`
`switch); Reply to PR at 6-7; Institution at 12.
`
`It is well settled that merely describing a particular configuration or solution
`
`as a preferred embodiment does not give rise to a clear disavowal and cannot be
`
`used to limit the claims to that configuration. See, e.g., Teleflex, 299 F.3d at 1326
`
`(a party “cannot overcome the “heavy presumption” that a claim term takes on its
`
`ordinary meaning simply by pointing to the preferred embodiment or other struc-
`
`tures or steps disclosed in the specification or prosecution history”); Altiris Inc. v.
`
`Symantec Corp., 318 F.3d 1363, 1371 (Fed. Cir. 2003); LG Electronics, Inc. v.
`
`Core Wireless Licensing S.A.R.L., IPR2015-01986, Paper 34 at 10 (PTAB March
`
`16, 2017 (“It is inappropriate to limit a claim to a preferred embodiment without a
`
`clear intent in the specification to redefine a claim term or a clear disavowal of
`
`claim scope.”).
`
`Importantly, this is even true where the preferred embodiment is the only
`
`embodiment or where all of the disclosed embodiments include a particular con-
`
`figuration. See, e.g., Liebel-Flarsheim, 358 F.3d at 905–06 (“this court has ex-
`
`pressly rejected the contention that if a patent describes only a single embodiment,
`
`the claims of the patent must be construed as being limited to that embodiment”
`
`and the claims “will not be read restrictively unless the patentee has demonstrated
`
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`a clear intention to limit the claim scope using ‘words or expressions of manifest
`
`exclusion or restriction.’”); Thorner, 669 F.3d at 1366–67 (“It is likewise not
`
`enough that the only embodiments, or all of the embodiments, contain a particular
`
`limitation.”); In re Am. Acad., 367 F.3d at 1369; CCS Fitness, 288 F.3d at 1366.
`
`Additionally, PO’s reliance on SciMed, Honeywell, Openwave, ManMach,
`
`and Chi. Bd. Options is entirely misplaced. POR, 12. Each of these cases found a
`
`clear disavowal based on numerous supporting factors going far beyond merely
`
`disparaging the prior art and proposing a solution thereto. See, e.g., SciMed Life
`
`Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344-45 (Fed. Cir.
`
`2001) (explaining that the specification repeatedly referred to a configuration as
`
`“the present invention” and “the invention,” and explicitly stated that “all embodi-
`
`ments of the present invention and contemplated or disclosed herein” include that
`
`configuration); Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1318
`
`(Fed. Cir. 2006) (finding that the relevant configuration was repeatedly referred to
`
`as “the invention” or “the present invention”); In re Man Mach. Interface Techs.
`
`LLC, 822 F.3d 1282, 1286-87 (Fed. Cir. 2016) (same); Chi. Bd. Options Exch., Inc.
`
`v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012) (same); Openwave,
`
`808 F.3d at 514 (stating that the patent was so “rife” with disparaging remarks that
`
`they “permeate[d] the specification”).
`
`In stark contrast, the ‘113 patent specification never refers to the tandem
`
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`configuration as the “invention/present invention”; nor is it even required by all of
`
`the disclosed embodiments. Tellingly, despite PO’s attempts to characterize the
`
`specification as “replete” with disparaging statements, it is only able to cite to a
`
`few such passages. POR, 15-17; Institution at 11 (“Patent Owner, however, points
`
`to only one sentence that mentions a direct connection”). Accordingly, these cases
`
`further highlight that the specification is devoid of the evidence needed to establish
`
`a clear and unmistakable disavowal.
`
`3.
`
`The Challenged Claims Recite Broader Language Not
`Found Anywhere in the Specification
`
`PO’s disclaimer arguments are further belied by the fact that the terms used
`
`to describe the tandem configuration (i.e., “tandem access controller” and “tandem
`
`switch”) are nowhere to be found in the challenged independent claim. Rather,
`
`claim 1 more broadly recites a “call processing system” that is coupled to a
`
`“switching facility.” In turn, it is undisputed that the claim term “switching facili-
`
`ty” was added during prosecution and does not appear at all in the specification.
`
`Institution at 14. Thus, as the Board recognized, “there is not much, if anything,
`
`intrinsically in the [s]pecification ... that explicitly defines or informs a [POSITA]
`
`[of] the meaning of ‘switching facility.’” Id. Thus, it is not reasonable to suggest
`
`that the specification sets forth an unequivocal “general” disclaimer that limits the
`
`scope of these broader claim terms that are never even mentioned in the specifica-
`
`8
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`tion.
`
`C.
`
`The Prosecution History Confirms That Applicants Did Not In-
`tend To Disavow Any Claim Scope
`
`PO previously asserted that the prosecution history of the ‘777 patent (to
`
`which the ‘113 patent claims priority) also “demonstrates a clear and unambiguous
`
`disclaimer of using controllers connected to edge switches, or that are edge devic-
`
`es, to apply call control features.” Rehearing Req. at 10-11; see also Prelim. Resp.
`
`at 1, 27-33. As the Board correctly determined, however, the cited portions of the
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`prosecution history are ambiguous and, moreover, include a statement that broadly
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`describes the term “switching facility.” Institution at 15-16.
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`1.
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`Examining the Prosecution History is Critical to Properly
`Determine Claim Scope
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`Not surprisingly, PO now backs away from the prosecution history and as-
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`serts that these “after-the-fact” statements “cannot broaden the scope of the
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`claims.” POR, 13-14. Incredibly, PO even goes so far as to criticize the Board for
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`“inappropriate[ly]” and “erroneous[ly]” considering the prosecution history. POR,
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`1, 21. PO’s blatant reversal of opinion is untenable.
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`PO asserts that, in each of Akamai, Honeywell I, Biogen, and Telcordia, “the
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`Federal Circuit found plain evidence of disclaimer on the face of the patent, and
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`refused to even consider evidence from the prosecution history ...” POR, 14
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`(emphasis added). Nothing could be further from the truth. In each case, the court
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`clearly examined the prosecution history when determining the scope of the
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`claims-at-issue. See, e.g., Akamai Techs., Inc. v. Limelight Networks, Inc., 629
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`F.3d 1311, 1328 (Fed. Cir. 2010) (explaining that the prosecution history con-
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`firmed the narrower meaning in the specification); Honeywell, 452 F.3d at 1318-19
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`(deciding that cited portions of the prosecution history were ambiguous); Telcordia
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`Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1375 (Fed. Cir. 2010) (comparing
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`statements from the prosecution history with the specification). In fact, in Biogen,
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`the court based its finding almost entirely on the prosecution history – not the spec-
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`ification. Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1137-40 (Fed. Cir.
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`2003).
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`Thus, these cases directly contradict PO’s position. This is not surprising,
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`given that examination of the prosecution history is a required and critical step
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`when determining claim scope. See, e.g., Rexnord Corp. v. Laitram Corp., 274
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`F.3d 1336, 1343 (Fed. Cir. 2001) (“After examining the written description and the
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`drawings, the same confirmatory measure must be taken with the prosecution his-
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`tory, since statements made during the prosecution of a patent may affect the scope
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`of the invention”) (emphasis added); Phillips v. AWH Corp., 415 F.3d 1303, 1313
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`(Fed. Cir. 2005).
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`Moreover, the prosecution history is particularly relevant here because the
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`specification is entirely silent with respect to key claim terms (e.g., “switching fa-
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`cility”), and the applicants made statements about these terms when they were add-
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`ed during prosecution. Thus, PO’s assertion is plainly improper.
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`2.
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`The Prosecution History Makes Clear that Applicants De-
`liberately Pursued Broader Claim Scope
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`After faulting the Board for looking at the prosecution history, PO nonethe-
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`less asserts that “the entirety of the prosecution history confirms and reinforces the
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`disclaimer [in the specification].” POR, 21, 26. This too is incorrect.
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`PO re-raises its argument that applicants made several statements distin-
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`guishing the cited prior art for having their call controllers connected through an
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`edge switch/ device. POR, 21-22. As previously explained, however, PO over-
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`states and mischaracterizes these portions of the prosecution history. Reply to PR
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`at 8. Likewise, as the Board correctly determined, twice, these statements are
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`“ambiguous, at best,” and do not support a disavowal of claim scope. Institution at
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`12-13, 15-16; Rehearing Decision at 4-5.
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`PO also emphasizes, again, that claims were amended during prosecution to
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`add that the controller (or processing system) is “coupled to” a switching facility.
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`POR, 25-26. As the Board noted, however, this amendment lacks any suggestion
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`that “coupled to” was intended to require direct connection, and such an interpreta-
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`tion is further belied by the fact that applicants added the narrower term “connect-
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`ed directly to” in other claims. Institution at 12. Thus, if anything, this amend-
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`U.S. Patent No. 8,457,113
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`ment confirms applicants’ deliberate choice to seek broader claim scope.
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`Moreover, and more importantly, when applicants added the term “switching
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`facility” to the claims, they provided a very broad description of this term. Institu-
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`tion at 15; Reply to PR at 8-9. In particular, applicants’ described a “switching fa-
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`cility” as “any point in the switching fabric of converging networks ...,” includ-
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`ing, for example, a “wire center,” “PSTN switching center,” or “hybrid switch.”
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`Ex. 2005 at 82 (emphasis added). It is undisputed that “hybrid switches” are both
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`an edge switch and a tandem switch. Reply to PR at 8-9; Institution at 11. Simi-
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`larly, PO’s declarant acknowledged that “wire centers” were well known to be
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`used in “a central office” and in a “class 5” (i.e., edge) switch. Bates Tr. at 62:15-
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`63:2. Thus, applicants own description of “switching facility” is not only extreme-
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`ly broad, but even includes explicit examples of edge switches. Accordingly, PO’s
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`renewed argument that the Board “misread this footnote” lacks merit. POR, 27-28;
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`Institution at 15-16.
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`Additionally, applicants had ample opportunities to add narrower claim
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`terms, such as “tandem switch,” “tandem access controller,” and/or “[directly]
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`connected,” like they did in various other claims. Instead, applicants deliberately
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`used broader terms in an attempt to obtain broader claim scope. See Thorner, 669
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`F.3d at 136 (“[t]he patentee is free to choose a broad term and expect to obtain the
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`full scope of its plain and ordinary meaning”). Now that it is facing invalidating
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`prior art, PO is effectively asking the Board to redraft these claims to read-in the
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`narrow tandem configuration of the preferred embodiment. As discussed above,
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`this is not permitted.
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`III. PO’S CLAIM CONSTRUCTIONS ARE IMPROPER
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`PO asserts that “the Board’s claim constructions in its Institution Decision
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`are erroneous,” and reargues its previously proposed constructions. POR, 2, 30-39;
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`Prelim. Resp. at 35-42. For each claim term, PO continues to rely exclusively on
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`its faulty disclaimer theory, and merely repeats or repackages the same arguments
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`that the Board already rejected. Institution at 8-18.
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`Moreover, the introduction to PO’s “Claim Construction” section further
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`highlights the serious defects in its disclaimer theory. POR, 30. As PO emphasiz-
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`es, the tandem configuration is the solution proposed in the specification for over-
`
`coming the problems in the prior art. Thus, even assuming that a disavowal exist-
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`ed (it does not), it would only apply, at most, to claims directed to this tandem con-
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`figuration. Notably, however, other than dependent claims 18 and 19, none of the
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`challenged claims recite any of these “tandem elements.” Presumably recognizing
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`this defect, PO attempts to inject its disclaimer into multiple other claim terms, in-
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`cluding the “switching facility,” which does not even appear in the specification.
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`POR, 30 (arguing that, “[p]ractically speaking, the disclaimer can be reflected in
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`any or all of the claim terms ‘switching facility’ and ‘coupled to’ because the scope
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`of the disclaimer relates to the connection of the controller to the switching facili-
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`Case IPR2016-01260
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`ty.”).
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`A.
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`“Switching Facility”
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`The Board correctly construed “switching facility” to mean: “any switch in
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`the telecommunication network.” Institution at 15-16. Indeed, there is no mean-
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`ingful dispute that this is the plain and ordinary meaning of this term. Institution at
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`14-15; see also POR, 33 (PO acknowledging that, even under its disclaimer theory,
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`“‘switching facilities’ encompasses some greater claim scope than ‘tandem switch-
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`es’ under a BRI analysis.”).
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`PO continues to assert, however, that this term must exclude edge switches.
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`POR 31-32, 35-36. In doing so, PO relies almost entirely on its “general” dis-
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`claimer theory, and makes substantially the same flawed arguments that the Board
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`previously rejected, twice. Institution at 13-16; Rehearing Decision at 3-5. Thus,
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`PO’s proposed construction should be rejected for all the same reasons that its dis-
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`claimer theory is improper, as discussed above. Indeed, as the Board explained,
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`PO’s construction is merely another improper “attempt[ ] to import [this] negative
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`limitation into the claims.” Rehearing Decision at 4.
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`PO also argues that the preamble of claim 1 supports its construction. POR,
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`32. Not so. Like in its Preliminary Response, PO misleadingly emphasizes only a
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`subset of the recitation, i.e., “edge switches or other switching facilities” (POR,
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`32), and ignores certain words in the claim language (POR, 33, omitting the word
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`“other,” when asserting that “‘switching facilities’ are for ‘routing calls to edge
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`switches ...’”). See also Institution at 14; Rehearing Decision at 3-4. Moreover,
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`the preamble first recites “a second network coupled to a switching facility of the
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`telecommunications network,” and then separately recites that the telecommunica-
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`tions network comprises “... switching facilities for routing calls to other edge
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`switches or other switching facilities.” In other words, this “routing” functionality
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`does not even apply to the “switching facility” recited in the preamble as coupled
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`to the second network nor the “at least one switching facility” recited i