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
`Patent Number: 8,457,113
`________________
`
`
`
`
`
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01260
`
`
`________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01260
`Patent Number: 8,457,113
`________________
`
`
`
`
`
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`TABLE OF CONTENTS
`
`QUALIFICATIONS ........................................................................................ 2
`
`LEGAL UNDERSTANDING ......................................................................... 4
`
`I.
`
`II.
`
`A. ANTICIPATION ................................................................................... 4
`
`B.
`
`OBVIOUSNESS ................................................................................... 5
`
`III. THE PROPOSED SUBSTITUTE CLAIM IS PATENTABLE ..................... 8
`
`IV. Lamb Discloses the THS/TNS is Connected to an Edge Switch .................... 9
`
`V.
`
`First Call/Second Call Limitations (Call Establishing Features) .................. 13
`
`VI. The PBX Art – Blaze, Burke, and Fuentes .................................................... 15
`
`VII. Petitioner’s Other Arguments on Procedural Grounds Are Meritless ........... 16
`
`
`
`
`ii
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 2
`Bates Declaration
`IPR2016-01260
`
`
`
`I, Regis J. “Bud” Bates, declare as follows:
`1. My name is Regis J. “Bud” Bates, and I have been retained as an expert
`witness for Inter Partes Review of IPR2016-01260.
`2.
`This report contains statements of my opinions formed to date and the
`bases and reasons for those opinions. I may offer additional opinions based on
`further review of materials in this case, including opinions and/or testimony of other
`expert witnesses.
`3.
`I understand that this Declaration is being submitted along with Patent
`Owner’s Reply in Support of its Contingent Motion to Amend.
`4.
`Capitalized terms found in this Declaration that are not defined herein have
`the meaning given them in Patent Owner’s Reply in Support of Patent Owner’s
`Contingent Motion to Amend Claim 1 of U.S. Patent No. 8,457,113.
`5.
`In preparing this Declaration, I have reviewed the Petitions, the
`declarations that accompany the Petitions, the Institution Decision, Patent Owner’s
`Response to the Petitions, Petitioners’ Replies in Support of the Petitions, the
`Motions to Amend, Petitioner’s Oppositions to the Motions to Amend, and the
`exhibits that have been submitted in this IPR proceeding as well as the Related IPR
`Proceedings.
`6.
`This Declaration is a statement of my opinions on issues related to the
`validity of the Proposed Substitute Claim and the other issues raised in the Reply in
`Support of the Contingent Motion to Amend.
`7.
`I am of the opinion that the Proposed Substitute Claim is patentable over
`the IPR Art, as well as all other art about which I am aware.
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 3
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`I.
`
`QUALIFICATIONS
`8.
`This section summarizes my career history, education, publications, and
`other relevant qualifications. My full curriculum vitae is attached as Appendix A to
`this report.
`9.
`I have been involved in and with the telecommunications industry for 50
`years and have seen the development and growth of the various technologies,
`infrastructure, legal, regulatory, and technical services.
`10. Notably, I am the author of 20 books which outline the use of Voice and
`Data technologies used throughout the industry. As author of these books, I am
`situated to opine upon the state of the Telephone Networks, as well as the
`conclusions that both parties in this proceeding draw therefrom.
`11.
`I am the founder and president of TC International Consulting, Inc.
`(TCIC), based in Heber, Arizona. I have held this position since the inception of the
`company in October 1989. TCIC is a full-service consulting and training firm
`specializing in communications and computer convergence.
`12. My role is to assist our client companies with the analysis of options,
`selection of vendors or products to meet their strategic goals, and training for
`technologies including voice, telephone systems, data networks, video, Internet,
`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
`systems and services, fiber optics, and infrastructure. We have been responsible for
`selecting and implementing over 100 private branch exchange (PBX) systems for
`our client companies. TCIC develops and conducts training for corporate users,
`equipment manufacturers, and Telephone and Internet carriers.
`
`
`
`2
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 4
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`13. From September 1986 to October 1989, I was the chief information officer
`at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities included
`the complete automation of the law firm’s multiple offices around the country.
`14. From September 1979 to September 1986, I was the telecommunications
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
`select, analyze and implement voice and data communications projects at U.S. and
`international sites.
`15. From April 1977 to September 1979, I was the senior telecommunications
`manager for manufacturing and international sites at Data General Corporation in
`Westboro, MA. I was responsible for selecting telecommunications equipment for
`sites across the world, selecting services (voice, data and fax traffic) from common
`carriers, and selecting appropriate means and protocols to use these goods and
`services.
`16. From September 1974 to April 1977, I was the manager of administrative
`services at a retail chain in Canton, MA called Hills Department Stores. There, I
`was responsible for communications matters including voice, data, fax, telex, and
`teletype.
`17. From April 1972 to September 1974, I worked as the telecommunications
`and facilities manager at Damon Corporation, a conglomerate that included medical-
`biological development, veterinary products, clinical labs, security manufacturing,
`and hobby craft. My responsibilities included voice and data communications for a
`variety of locations across the country.
`
`
`
`3
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 5
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`18. From September 1966 to April 1972, I was a captain in the U.S. Army
`Signal Corps. My assignments took me to many locations, including a deployment
`in Vietnam, where I worked in mobile and fixed-site communication environments
`using radio-based VHF and troposcatter systems.
`19.
`In addition to these formal roles, I have consulted for and provided training
`courses to over 20 major organizations, including Cisco, Motorola Solutions, Nortel
`Networks, the University of California at Berkeley, and Fidelity Investments, as well
`as the U.S. Army, Electronic proving Grounds, Central Intelligence Agency, Federal
`Bureau of Investigation, and National Security Agency.
`20.
`I received a Bachelor of Sciences degree in Business Management in 1979
`from Stonehill College in Easton, MA with additional work towards my Masters of
`Business Administration from Lehigh University in Bethlehem, PA and St. Joseph’s
`College in Philadelphia, PA.
`21.
`I completed all the coursework but not the thesis for an MBA.
`
`II. LEGAL UNDERSTANDING
`22. Although I am not an attorney and do not intend to testify about legal
`issues, my opinions are also informed by my understanding of the relevant law. I
`understand that a patent claim can be found invalid in an inter partes review if the
`Patent Office concludes that it is more likely than not that the claim is invalid.
`
`A. ANTICIPATION
`23.
`I have read 35 U.S.C. §§ 102 (a)-(g) and understand the requirements to
`prove “anticipation” of a patented invention under these statutory provisions. I have
`
`
`
`4
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 6
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`been advised that if each and every element or step of a claim is disclosed within the
`“four corners” of a single prior art reference, that claim is said to be anticipated by
`that prior art reference and is invalid under 35 U.S.C. § 102.
`24.
`I understand that anticipation requires that a single reference disclose all
`the elements, as arranged in the claim. I further understand that the prior art
`reference must clearly and unequivocally disclose the claimed invention or direct
`those skilled in the art to the claimed invention without any need for picking,
`choosing, and combining various disclosures not directly related to each other by the
`teachings of the cited reference.
`25.
`I also have been advised that a prior art reference can disclose a claim
`feature because the feature is expressly described, or because the feature is inherent
`in the disclosure. I understand that something is inherent in a prior art reference if
`the missing descriptive matter must be necessarily present, and it would be so
`recognized by one of ordinary skill in the art. I also understand that inherency cannot
`be established by probabilities or possibilities, and that the mere fact that something
`may result from a given set of circumstances is not sufficient to show inherency.
`
`B. OBVIOUSNESS
`26.
`I also understand the legal standards that apply to invalidity for
`obviousness under 35 U.S.C. § 103. I understand that a patent claim may be invalid
`under 35 U.S.C. § 103 if the differences between the claimed subject matter and the
`prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which the
`subject matter pertains. I understand that obviousness is a question of law and that
`5
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 7
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`the following factors must be evaluated to determine whether a party challenging a
`patent claim’s validity has met its burden of proof that the claimed invention is
`obvious: (1) the scope and content of the prior art; (2) the differences between the
`claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective
`indicia of non-obviousness.
`27.
`I understand that to reach a proper determination under 35 U.S.C. § 103,
`one must step backward in time and into the shoes worn by the hypothetical “person
`of ordinary skill in the art” (“POSA”) when the invention was unknown and just
`before it was made. In view of all factual information, one must then make a
`determination whether the claimed invention “as a whole” would have been obvious
`at that time to that person of ordinary skill in the art. Knowledge of the applicants’
`disclosure must be put aside in reaching this determination, yet kept in mind in order
`to determine the differences between the claimed subject matter as a whole and the
`content of the prior art.
`28. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I understand that to consider any
`distortion caused by hindsight bias, to guard against slipping into the use of
`
`hindsight, to be cautious of opinions that rely upon after‐the-fact reasoning, and to
`
`avoid the temptation to read into the prior art the teachings of the invention at issue.
`The determination of obviousness is not whether a person could, with full knowledge
`of the patented device, reproduce it from prior art or known principles. The question
`is whether it would have been obvious, without knowledge of the patentee’s
`achievement, to produce the same thing that the patentee produced. This judgment
`6
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 8
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`other devices and change them in light of the now‐known template of the patented
`
`must be made without the benefit of hindsight. It is improper to take concepts from
`
`device, without some direction that would render it obvious to do so.
`29.
`I understand that a claim is not proven obvious merely by demonstrating
`that each of the claim elements was independently known in the prior art. I
`understand that most, if not all, inventions rely on building blocks long since
`uncovered and claimed discoveries, and, almost of necessity, will likely be
`combinations of elements that were already known. A party challenging validity
`must show that a person of ordinary skill in the art would have had a reason to
`combine the teachings of the prior art to achieve the claimed invention and would
`have had a reasonable expectation of success in doing so.
`30.
`I also understand that an inference that a claimed combination would not
`have been obvious is especially strong where the prior art’s teachings undermine the
`very reason being proffered as to why a person of ordinary skill would have
`combined the known elements. A reference may be said to “teach away” when a
`person of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction divergent
`from the path that was taken by the applicant. Where a proposed modification or
`combination for the prior art would change the principle of operation of the prior art
`being modified or render the prior art unsatisfactory for its intended purpose then
`the teachings of the references are not sufficient to render the claims at issue obvious.
`31.
`I understand that a party challenging the claims of a patent must present
`evidence sufficient to establish some articulated, rational reason to select and
`7
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 9
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`combine the teachings of the prior art to produce the claimed invention with a
`reasonable expectation of success, which is sometimes referred to as a prima facie
`conclusion, or case, of obviousness.
`
`III. THE PROPOSED SUBSTITUTE CLAIM IS PATENTABLE
`32. Petitioner takes a shotgun approach in its Response, citing to no less than
`12 new references. In my opinion, these references, however, have the same
`deficiencies found in the art discussed in Patent Owner’s Motion to Amend. The
`much-relied-upon Lamb patent only shows a call controller connected to an edge
`switch. This is the same configuration disclosed in much of the art distinguished in
`Patent Owner’s Motion to Amend. Further, the art Petitioner relies on does not show
`the first call/second call functionality recited in the Proposed Substitute Claim.
`Notably, Petitioner did not even apply each of the claim limitations to the art. To
`Petitioner’s credit, it finally discovered some references that show PBXs attached to
`a tandem switch. But, these PBXs fail to disclose any of the functionality the
`claimed tandem access controller is required to have, as recited in the Proposed
`Substitute Claims. Petitioner relies upon other references that have their own
`deficiencies. The references discovered by Petitioner that disclose a PBX attached
`to a tandem switch show large PBX systems that function as an edge switch.
`Namely, these specialized PBX systems can have hundreds or thousands of
`telephones connected directly to them. Namely, these PBXs can only receive calls
`from the PSTN for a 1-800 number over a direct line, in a customized way. The
`PBXs cannot communicate outgoing calls directly to a tandem switch either. These
`systems were not associated with a tandem switch. Further, a POSA would
`8
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 10
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`understand that these PBXs would still have connections to the local Telco edge
`switch to get access to local dial tone and for numbering purposes. The PBX will
`then route calls between these phones and the PBX, in the same manner as an edge
`switch or a class five switch. As will be discussed below, this is a very different
`type of device than the claimed tandem access controller.
`
`IV. Lamb Discloses the THS/TNS is Connected to an Edge Switch
`33. The Lamb reference is the single most discussed reference in the Response
`– it is specifically mentioned by name on 13 of the 25 pages of the Response. To
`call it the linchpin of Petitioner’s arguments against the Proposed Substitute Claim
`is not an overstatement. According to Petitioner, Public Phone Switch 202-2 in
`Lamb is (or at least can be) a tandem switch (which it is not).
`34. As an initial matter, the Detailed Description of Lamb’s invention never
`describes Switch 202-2 as a tandem switch. Various portions of Lamb make clear
`that Switch 202-2 is an edge switch (a class 5 switch), not a tandem switch. This
`puts Lamb in the same category as the External (EXT) Art discussed in Patent
`Owner’s Motion to Amend. See Mot. at 15-19. It is therefore my opinion that Lamb
`does not add any more to the analysis than Alexander, Archer, Burger, McMullin,
`O’Neal, and Schwab.
`35. Specifically, Fig. 4 of Lamb shows Switch 202-2 as connecting directly to
`telephones 106 and 108. Telephones 106 and 108 are “consumer telephones.” Lamb
`at 31:64. The Substitute Claims require that tandem switches not be directly
`connected to telephones. Every expert in this and the related IPRs that has
`characterized edge switches and tandem switches has noted that edge switches are
`9
`
`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 11
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`directly connected to user telephones (while tandem switches are not). See, e.g.,
`Lavian Dec. (Ex. 1002) at ¶43 (“Landline phones in people’s houses are generally
`connected to a geographically local class 5 switch (also be called an edge switch,
`end switch, or central office switch).”); BatesDec (Ex. 2001) at ¶43; and ForysDep
`(Ex. 2071) at 8:21-25, 12:10-18. Fig. 4, standing alone, conclusively demonstrates
`that Switch 202-2 is an edge switch. Lamb provides additional evidence that Switch
`202-2 is an edge switch. Lamb describes that the functionality of Switch 202-2 that
`is utilized by the TNS is the same functionality that can be utilized by consumer
`telephones 106 and 108. Lamb states that the “call service logic provided by the
`telecommunications network server 202-1 is rather limited to creating, maintain,
`bridging, and disconnecting call connections within the PSTN 101, via the public
`phone switch 202-2,” and that “such functions are typically allowed to be controlled
`via regular telephone devices.” Lamb at 31:58-65. Petitioner brings forward no
`evidence that describes a customer phone being able to control services provided by
`a tandem switch. On the other hand, starting in the 1980s, the Regional Bell
`Operating Companies provided features such as call waiting and call forwarding to
`their customers through edge switches. See Mot. at 10-12. These features were
`controlled by the customers’ phones. Lamb similarly discusses the fact that these
`features were found in central offices (another name for edge switches). See Lamb
`at 2:8-49 (discussing the capabilities of central offices).
`36.
` Lamb teaches that TNS 202-1 can be located “within the confines of a
`central office.” Lamb at 30:56. TNS 202-1 is the device that manipulates Switch
`202-2 to provide the functionality described in Lamb. Lamb at 30:46-47. In my
`10
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 12
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`opinion, it would be more natural for a TNS located in a central office to manipulate
`the edge switch also found in the central office as opposed to a tandem switch located
`somewhere else. Further, the TNS-201 (TAC) located in an edge switch falls outside
`the required scope of the Substitute Claim that communications not pass through any
`edge switches.
`37.
` Petitioner’s assertions that a POSA “would have understood Lamb to
`be teaching that its TNS could be connected at any type of public PSTN switch
`suitable for managing call connections to the PSTN” are wholly without merit.
`Resp. at 15. Petitioner first argues that a POSA would have understood that a tandem
`switch would have provided the functionality of “creating, maintain, bridging, and
`disconnecting call connections within the PSTN 101,” where Lamb’s public phone
`switch provides access to the PSTN by “creating, maintain, bridging, and
`disconnecting call connections within the PSTN 101.” Resp. at 15; Lamb at 31:58-
`62. But, this argument is directly contradicted by Petitioner’s previous expert’s
`statement that “tandem switches are not capable of originating or terminating PSTN
`calls, but rather direct[] calls to/from an edge switch or another tandem switch.” Ex.
`2030 (Lavian Dec. in -01256) at ¶106; see also Ex. 2029 (Lavian Dep.) at 32:4-16
`(confirming that Dr. Lavian stands by his statements in ¶106 of his declaration);
`Petitioner also claims that I confirmed Forys’s erroneous view of the functionalities
`of a tandem switch, citing Bates deposition transcript at 35:6-18. See Resp. at 15.
`But in the cited deposition testimony, I only read the portions of the Lavian transcript
`previously cited that directly rebut Forys’s claims. Thus, the cited deposition
`testimony contradicts Petitioner’s position.
`11
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`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 13
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`38. Petitioner also argues that Switch 202-2 can operate as a signal transfer
`point (STP), and an STP is equivalent to a tandem switch. Resp. at 16 (“POSITA
`would have recognized that in order to operate as an STP on the PSTN, a tandem
`switch would be used as Lamb’s public phone switch 202-2.”); Lamb at 28:12-13.
`But, Petitioner’s own evidence shows this to not be true. The much discussed Chang
`reference shows an STP connected to both tandem and edge switches. Chang at Fig.
`1 (elements 11E, 11T, and 15). In addition, Figs. 1-3 of Allen (discussed and
`reproduced on p. 14 of the Response) show much the same thing, i.e., STP 18 apart
`and separate from tandem switch 16 and central offices 10. Further, Petitioner’s
`expert further distinguished tandem switches from STPs, including that that an STP
`cannot carry voice traffic while tandem switches do. Id.; ForysDec, ¶56; ForysDep
`at 59:25-6:5.
`39.
` The lone reference cited to by Petitioner that equates STPs and tandem
`switches is Elliot. Resp. at 17. But its description of STPs is at odds with Chang
`and Allen. Further, the cited portion of Elliot refers to Figs. 17A and C of Elliot,
`which show an arrangement of equipment that is not representative of the PSTN.
`Thus, at best, Elliot may stand for the proposition that tandem switches can function
`as STPs in Elliot’s proprietary network. This, however, does not implicate STPs and
`tandem switches in the PSTN, which is the relevant network for the purposes of this
`IPR and the Proposed Substitute Claims. An STP is a packet switch that carries
`signaling system 7 messages, not voice or data traffic. A POSA would recognize
`that an STP could not function as a tandem switch.
`
`
`
`12
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 14
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`V.
`
`First Call/Second Call Limitations (Call Establishing Features)
`40. Petitioner argues that the “call establishing” limitations included in the
`Substitute Claim were well known, citing O’Neal, Lamb, and Voit. Resp. at 22-25.
`Petitioner’s arguments, however, do not consider that O’Neal and Lamb disclose
`their respective call establishment methodologies in the context of a controller
`connected to an edge switch. In such an arrangement, the controller will not receive
`call signaling (i.e., a call request), since such signaling does not pass beyond edge
`switches. Such signaling is required by the Substitute Claim.
`41. Furthermore, Lamb actually describes two outbound calls (from the
`perspective of the TNS). Specifically, Lamb describes the TNS causing phone 106
`to ring first (Lamb at 31:27-28), then causing phone 108 to ring second (Id. at 31:33-
`38). In contrast, the Substitute Claim requires the TAC to receive a first call request,
`then initiate a second call. Thus, Lamb is describing a very different situation than
`contemplated in the Substitute Claim.
`42. Lamb joins the first and second calls together as soon as the second call is
`placed. Id. at 31:38-44 (“Once the [TNS] has caused the phone switch 202-2 to place
`the call connections 231 and 232, the [TNS] 202-1 can instruct the phone switch
`202-2 to bridge the two connections 231 and 232 together thus creating a single
`telecommunications session”). But, the Substitute Claim requires that the calls be
`joined when the second call is answered.
`43. Petitioner’s reliance on Voit is misplaced because Voit simply teaches a
`single call without any disclosure that there is even a second call request, as required
`by the Substitute Claim. Resp. at 24.
`
`
`
`13
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 15
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`44. Petitioner also attempts to fault Patent Owner for arguing that the
`Substitute Claim is patentable because it requires receiving a first call without
`answering it until a second call is answered, and then completing the call. Patent
`Owner has made it clear that the Substitute Claim processes calls by “receiving a
`first call without answering it until a second call is answered, then completing ‘the
`call.’” Mot. at 25; The TAC recited in the Proposed Substitute Claim will connect
`the first and second call only in the situation where the second call is answered.
`While the second call is being placed and waiting to be answered, the first call is
`likewise being held. In this manner, when the second call is answered, the first and
`second calls are bridged together to establish voice communications between the
`first and second parties, as required by the Substitute Claim. The claimed invention
`requires that the first call be accepted and not answered until the second call is
`answered. The first call and second call sequence of the TAC requires receiving the
`first call without yet answering it in order to extract the claimed “call data” in order
`to initiate/process the second call per the call features executed by the TAC based
`on the call data. “The call” is completed to establish voice communication when the
`“second call is completed and answered” by the off hook signal from the subscriber
`device. SS7 architecture requires that a call be accepted (ACK) in a limited time
`period (e.g., within 50 milliseconds) to set up the voice channel or a call is dropped.
`After acceptance of the first call (ACK) by the TAC the initiating caller hears ringing
`or music while they wait because the first call has not been answered (has not
`generated an ANM message, for example). Without the acceptance of a first call
`that is not yet answered, the TAC would not be able to “process[] a second call
`14
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 16
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`request associated with a second call across the packet network to complete the call
`to the subscriber.” Thus, the Substitute Claim requires that the first call not be
`answered by the TAC until the second call is answered in order for “the call” to be
`completed.
`45. None of the art relied on by Petitioner discloses receiving a first call
`without answering it when the second call is placed. Notably, Lamb has the first call
`being answered before the second call is placed. See Lamb, 31:30-35 (“When the
`[the TNS] detects . . . that a person (the user) has picked up the handset of user
`telephony device 106, the phone switch 202-2 under control of the [TNS] can place
`a second call connection 232 to the user telephony device 108 . . . .”). In other words,
`a second call is placed only after a person “picks up” the handset to which the first
`call is placed. This functionality is different than the Substitute Claim which
`requires a second call to be placed before the first one is answered.
`
`VI. The PBX Art – Blaze, Burke, and Fuentes
`46. While Petitioner did discover some references that show a PBX connected
`to a tandem switch, these arrangements are a far cry from the TAC disclosed in
`Substitute Claim and the ’113 Patent. As described in the ’113 Patent, the TAC
`attaches to existing tandem switches in the PSTN to provide enhanced functionality.
`See, e.g., ’113 Patent at 4:43-47. The TAC is not shown directly connected to
`telephones, but either routes calls to phones via the PSTN or a packet switched
`network. The PBXs in the PBX Art, on the other hand, function as substitutes for
`edge switches. Consider the language of the Proposed Substitute Claim. It describes
`edges switches as “connected to telephones on one side and to PSTN tandem
`15
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 17
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`switches on the other side.” And, this is exactly what is shown in the PBX Art. See,
`e.g., Burke, Fig. 1 (illustrating PBX 130 attached to toll switch 124 and telephones
`141 and 142); Blaze, Fig. 1 (illustrating PBX 111connected to telephones 130 and
`131 and toll switch 110); Fuentes, Fig. 1 (illustrating PBX 30 connected to telephone
`48 and describing a connection to a toll switch (4:62-65)). These illustrations exactly
`match the edge switch described in the Proposed Substitute Claim. In my opinion,
`the Proposed Substitute Claim is therefore patentable over Blaze, Burke, and
`Fuentes. For the same reasons, it is my opinion that it would not have been obvious
`to modify O’Neal in view of Blaze, Burke, or Fuentes to arrive at the Proposed
`Substitute Claims.
`
`VII. Petitioner’s Other Arguments on Procedural Grounds Are Meritless
`47. Petitioner argues that there is no support for limitations in the Proposed
`Substitute Claim regarding packet networks. Ex. 2041 clearly shows this disclosure
`supporting this where a second call can be placed/processed over a packet network,
`including VoIP. These arguments do not stand. Fig. 2 shows TAC 10 placing and
`receiving VoIP calls to/from digital phone 21. Petitioner goes on to state that the
`specification only discloses that calls can be made (i.e., not received by)
`conventional digital phone 21, but this claim is refuted by the bi-directional arrows
`used in Fig. 2 to illustrate the VoIP capabilities of the system and by the knowledge
`of a POSA that in 2000, “conventional digital telephones” were certainly capable of
`receiving and placing calls.
`48. Petitioner also incorrectly argues that the Substitute Claim adds new matter
`because the ’113 Patent does not disclose the TAC receiving both a first call request
`16
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`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 18
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`and call data associated with that call. Resp. at 7. The TAC receives a first call
`request. ’113 Patent, Fig. 5 (“Receiving Incoming Call Request (SS7) from PSTN
`Tandem Office”). Figure 5 also makes clear that the TAC receives call data—
`indeed, the TAC could not format a message with the called PPN, caller ID, channel
`#, etc. if it did not receive “call data” with the call request. See id. The ’113 Patent
`clearly supports the Substitute Claim. see Ex. 2041 at 7-9, 21-23, 35-37, 49-51.
`49. Petitioner argues that the Substitute Claim adds matter by “establishing the
`voice communication. . . after the second call is completed and answered.” Resp.
`at 8. According to Petitioner, the ’113 Patent does not support that the second call
`is completed. But, a call b
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