Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 38
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`________________
`
`Case IPR2016-01260
`Patent Number: 8,457,113
`_______________
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`CONTINGENT MOTION TO AMEND CLAIM 1 OF
`U.S. PATENT NO. 8,457,113 UNDER 37 C.F.R. § 42.121
`
`
`
`
`
`
`
`Patent 8,457,113
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`Paper No. 38
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`YMAX CORPORATION,
`
`Petitioner
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`________________
`
`Case IPR2016-01260
`Patent Number: 8,457,113
`_______________
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT OF
`CONTINGENT MOTION TO AMEND CLAIM 1 OF
`U.S. PATENT NO. 8,457,113 UNDER 37 C.F.R. § 42.121
`
`
`
`
`
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`
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 38
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`TABLE OF CONTENTS
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`I.
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`Introduction ...................................................................................................... 1
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`II.
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`Lamb Discloses the THS/TNS is Connected to an Edge Switch .................... 1
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`III.
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`Petitioner’s Claim that Patent Owner Failed to Disclose Material Art ........... 5
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`IV. First Call/Second Call Limitations (Call Establishing Features) .................... 6
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`V.
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`The PBX Art – Blaze, Burke, and Fuentes ...................................................... 9
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`VI. Petitioner’s Other Arguments on Procedural Grounds Are Meritless ........... 10
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`Case IPR2016-01260
`Patent 8,457,113
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`Cases:
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`Paper No. 38
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`TABLE OF AUTHORITIES
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`Ecowater Systems LLC v. Culligan International Company,
`IPR2013-00155, Paper 18 (P.T.A.B. June 24, 2014) .......................................... 10
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`Google Inc, et al. v. ContentGuard Holdings, Inc.,
`CBM2015-00040, Paper No. 34 (P.T.A.B. June 21, 2016) (ruling on Mot. to
`Amend, Paper No. 16 (filed on Sep. 11, 2015)) .................................................. 10
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 38
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`UPDATED LIST OF EXHIBITS
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`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed.
`2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History of U.S. Patent No. 7,764,777
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed
`Motion for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district
`court litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-
`2, filed 08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for
`IPR2016-01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for
`IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Deposition Transcript of Mr. Willis, Mar. 1, 2017, for IPR2016-
`01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Declaration of Dr. La Porta in support of the Petition, Ex. 1002
`of IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
`Declaration of Mr. Willis in support of the Petition, Ex. 1002 of
`IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
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`2001
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`2002
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`2003
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`2011
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`2019
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`2027
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`Paper No. 38
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`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Deposition Transcript of Dr. Lavian, March 29, 2017, for
`IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated
`with line numbers)
`U.S. Pat. No. 4,646,296 (filed on July 9, 1984)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924 to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi,
`and Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
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`2029
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`Paper No. 38
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`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Declaration of Thomas La Porta in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,457,113, June 23, 2016,
`submitted in support of IPR2016-01261
`Declaration of Dr. Tal Lavian in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,764,777, June 23, 2016,
`submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
`Declaration of Regis J. “Bud” Bates in Support Reply in Support
`of Motion to Amend (“ReplyDec”)
`Deposition Transcript of Dr. Forys, July 13, 2017, for IPR2016-
`01258 and -01260 (“ForysDep.”)
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`I.
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`Introduction
`Petitioner takes a shotgun approach in its Response, citing to no less than 12
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`new references. These references, however, have the same deficiencies found in the
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`art discussed in Patent Owner’s Motion to Amend. ReplyDec, ⁋ 32. The much-relied-
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`upon Lamb patent only shows a call controller connected to an edge switch. Id. This
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`is the same configuration disclosed in much of the art distinguished in Patent Owner’s
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`Motion to Amend. Further, the art Petitioner relies on does not show the first
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`call/second call functionality recited in the Substitute Claim. Id. Notably, Petitioner
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`did not even apply each of the claim limitations to the art. PO believes Petitioner
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`bears the burden of proving that the Substitute Claim is not patentable.
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`II. Lamb Discloses the THS/TNS is Connected to an Edge Switch
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`The Lamb reference is the single most discussed reference in the Response – it
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`is specifically mentioned by name on 13 of the 25 pages of the Response. To call it
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`the linchpin of Petitioner’s arguments against the Substitute Claim is not an
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`overstatement. According to Petitioner, Public Phone Switch 202-2 in Lamb is (or at
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`least can be) a tandem switch (which it is not). ReplyDec, ⁋ 33.
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`As an initial matter, the Detailed Description of Lamb’s invention never
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`describes Switch 202-2 as a tandem switch. Various portions of Lamb make clear
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`that Switch 202-2 is an edge switch (a class 5 switch), not a tandem switch. This puts
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`Lamb in the same category as the External (EXT) Art discussed in Patent Owner’s
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`Motion to Amend. See Mot. at 15-19. Lamb does not add any more to the analysis
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`Paper No. 38
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`than Alexander, Archer, Burger, McMullin, O’Neal, and Schwab. ReplyDec, ⁋ 34.
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`Specifically, Fig. 4 of Lamb shows Switch 202-2 as connecting directly to
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`telephones 106 and 108. Telephones 106 and 108 are “consumer telephones.” Lamb
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`at 31:64. The Substitute Claim requires that tandem switches not be directly
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`connected to telephones. Every expert in this and the related IPRs that has
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`characterized edge switches and tandem switches has noted that edge switches are
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`directly connected to user telephones (while tandem switches are not). See, e.g.,
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`Lavian Dec. (Ex. 1002), ¶ 43 (“Landline phones in people’s houses are generally
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`connected to a geographically local class 5 switch (also be called an edge switch, end
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`switch, or central office switch.”); BatesDec (Ex. 2001), ¶ 42; and ForysDep (Ex.
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`2071) at 8:21-25, 12:10-18; ReplyDec, ⁋ 35. Fig. 4, standing alone, conclusively
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`demonstrates that Switch 202-2 is an edge switch. ReplyDec, ⁋ 35. Lamb provides
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`additional evidence that Switch 202-2 is an edge switch. Lamb describes that the
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`functionality of Switch 202-2 that is utilized by the TNS is the same functionality that
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`can be utilized by consumer telephones 106 and 108. Lamb states that the “call
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`service logic provided by the telecommunications network server 202-1 is rather
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`limited to creating, maintain, bridging, and disconnecting call connections within the
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`PSTN 101, via the public phone switch 202-2,” and that “such functions are typically
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`allowed to be controlled via regular telephone devices.” Lamb at 31:58-65. Petitioner
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`brings forward no evidence that describes a customer phone being able to control
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`Paper No. 38
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`services provided by a tandem switch. On the other hand, starting in the 1980s, the
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`Regional Bell Operating Companies provided features such as call waiting and call
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`forwarding to their customers through edge switches. See Mot. at 10-12. These
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`features were controlled by the customers’ phones. ReplyDec, ⁋ 35. Lamb similarly
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`discusses the fact that these features were found in central offices (another name for
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`edge switches). See Lamb at 2:8-49 (discussing the capabilities of central offices);
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`ReplyDec, ⁋ 35.
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`Lamb teaches that TNS 202-1 can be located “within the confines of a central
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`office.” Lamb at 30:56. TNS 202-1 is the device that manipulates Switch 202-2 to
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`provide the functionality described in Lamb. Lamb at 30:46-47. It would be more
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`natural for a TNS located in a central office to manipulate the edge switch also found
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`in the central office as opposed to a tandem switch located somewhere else.
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`ReplyDec, ⁋ 36. Further, TNS 202-1, located in an edge switch, falls outside the
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`scope of the Substitute Claim requiring that communications do not pass through any
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`edge switches. Id.
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`Petitioner’s assertions that a POSA “would have understood Lamb to be
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`teaching that its TNS could be connected at any type of public PSTN switch suitable
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`for managing call connections to the PSTN” are wholly without merit. Resp. at 15.
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`Petitioner first argues that a POSA would have understood that a tandem switch would
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`have provided the functionality of “creating, maintain, bridging, and disconnecting
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`Paper No. 38
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`call connections within the PSTN 101,” where Lamb’s public phone switch provides
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`access to the PSTN by “creating, maintain, bridging, and disconnecting call
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`connections within the PSTN 101.” Resp. at 15; Lamb at 31:58-62. But, this
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`argument is directly contradicted by Petitioner’s previous expert’s statement that
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`“tandem switches are not capable of originating or terminating PSTN calls, but rather
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`direct[] calls to/from an edge switch or another tandem switch.” Ex. 2030 (Lavian
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`Dec. in -01256), ¶106; see also Ex. 2029 (Lavian Dep.) at 32:4-16 (confirming that
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`Dr. Lavian stands by his statements in ¶106 of his declaration); ReplyDec, ⁋ 37.
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`Petitioner also claims that I confirmed Forys’s erroneous view of the functionalities
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`of a tandem switch, citing Bates deposition transcript at 35:6-18. See Resp. at 15.
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`But in the cited deposition testimony, Mr. Bates only read the portions of the Lavian
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`transcript previously cited that directly rebut Forys’s claims. Thus, the cited
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`deposition testimony contradicts Petitioner.
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`Petitioner also argues that Switch 202-2 can operate as a signal transfer point
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`(STP), and an STP is equivalent to a tandem switch. Resp. at 16 (“POSITA would
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`have recognized that in order to operate as an STP on the PSTN, a tandem switch
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`would be used as Lamb’s public phone switch 202-2.”); Lamb at 28:12-13. But,
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`Petitioner’s own evidence shows this to not be true. The much discussed Chang
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`reference shows an STP connected to both tandem and edge switches. Chang at Fig.
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`1 (elements 11E, 11T, and 15). In addition, Figs. 1-3 of Allen (discussed and
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`Paper No. 38
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`reproduced on p. 14 of the Response) show much the same thing, i.e., STP 18 apart
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`and separate from tandem switch 16 and central offices 10. ReplyDec, ⁋ 38. Further,
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`Petitioner’s expert further distinguished tandem switches from STPs, including that
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`that an STP cannot carry voice traffic while tandem switches do. Id.; ForysDec, ¶56;
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`ForysDep at 59:25-6:5.
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`The lone reference cited to by Petitioner that equates STPs and tandem switches
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`is Elliot. Resp. at 17. But its description of STPs is at odds with Chang and Allen.
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`Further, the cited portion of Elliot refers to Figs. 17A and C of Elliot, which show an
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`arrangement of equipment that is not representative of the PSTN. ReplyDec, ⁋ 39.
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`Thus, at best, Elliot may stand for the proposition that tandem switches can function
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`as STPs in Elliot’s proprietary network. Id. This, however, does not implicate STPs
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`and tandem switches in the PSTN, which is the relevant network for the purposes of
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`this IPR and the Substitute Claim. Id.
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`III. Petitioner’s Claim that Patent Owner Failed to Disclose Material Art
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`Petitioner’s argument that Patent Owner failed to disclose material prior art is
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`without merit. The Board has provided guidance on what material Patent Owner
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`needs to address in a motion to amend. This material does not include art cited against
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`a later filed patent application. Paper 23 at 5-6. As such, Petitioner’s allegations that
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`Patent Owner breached its duty to disclose the Lamb and Hess references do not stand.
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`See Resp. at 1-3. There are hundreds of references at issue in the patent family of
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`Paper No. 38
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`which the ’113 Patent is a part, including references in file histories, references from
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`Petitioner’s invalidity contentions in district court, 100+ references that are art of
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`record in the patent, and references from this and the related IPRs. Petitioner cited
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`nothing to support that Patent Owner is deemed to have knowledge of the details
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`contained in these thousands of pages of references.
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`Furthermore, the USPTO has already determined that the ’894 Patent is
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`patentable over Lamb (in view of Hess and other references). During prosecution, the
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`USPTO noted that Lamb fails to explicitly teach that the PSTN switch disclosed in
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`Lamb is a tandem switch. See ’894 Patent File History (Ex. 1040), at 124. The ’894
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`Patent subsequently issued with the following claim limitation: “communication from
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`the controller to the called party via a PSTN tandem switch that is separate from a
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`central office switch without traversing any intervening switches between the
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`controller and the PSTN tandem switch.” See id. at 32. Thus, the USPTO agrees with
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`the arguments presented above that Lamb’s Switch 202-2 is not a tandem switch. In
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`response to these arguments and the related claim amendment, the USPTO issued a
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`Notice of Allowance. Id. at 21-23. The Substitute Claim contains similar limitations
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`that are patentable over Lamb and the other references for analogous reasons.
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`Petitioner has not provided any rationale as to why the USPTO was incorrect.
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`IV. First Call/Second Call Limitations (Call Establishing Features)
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`Petitioner argues that the “call establishing” limitations included in the
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`Substitute Claim were well known, citing O’Neal, Lamb, and Voit. Resp. at 22-25.
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`Petitioner’s arguments, however, do not consider that O’Neal and Lamb disclose their
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`respective call establishment methodologies in the context of a controller connected
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`to an edge switch. In such an arrangement, the controller will not receive call
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`signaling (i.e., a call request), since such signaling does not pass beyond edge
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`switches. Reply Dec, ⁋ 40. Such signaling is required by the Substitute Claim. Id.
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`Furthermore, Lamb actually describes two outbound calls (from the perspective
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`of the TNS). ReplyDec, ⁋ 41. Specifically, Lamb describes the TNS causing phone
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`106 to ring first (Lamb at 31:27-28), then causing phone 108 to ring second (Id. at
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`31:33-38). ReplyDec, ⁋ 41. In contrast, the Substitute Claim requires the TAC to
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`receive a first call request, then initiate a second call. Id. Thus, Lamb is describing a
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`very different situation than contemplated in the Substitute Claim. Id.
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`Lamb joins the first and second calls together as soon as the second call is
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`placed. Id. at 31:38-44 (“Once the [TNS] has caused the phone switch 202-2 to place
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`the call connections 231 and 232, the [TNS] 202-1 can instruct the phone switch 202-
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`2 to bridge the two connections 231 and 232 together thus creating a single
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`telecommunications session”). ReplyDec, ⁋ 42. But, the Substitute Claim requires
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`that the calls be joined when the second call is answered. Id.
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`Petitioner’s reliance on Voit is misplaced. Voit s teaches a single call without
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`any disclosure that there is even a second call request, much less the other processing
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`Paper No. 38
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`limitations as required by the Substitute Claim. Resp. at 24; ReplyDec, ⁋ 43.
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`Petitioner attempts to fault Patent Owner for arguing that the Substitute Claim
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`is patentable because it requires receiving a first call without answering it until a
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`second call is answered, and then completing the call. Patent Owner has made it clear
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`that the Substitute Claim processes calls by “receiving a first call without answering
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`it until a second call is answered, then completing ‘the call.’” Mot. at 25; ReplyDec,
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`⁋ 44. The TAC recited in the Substitute Claim will connect the first and second call
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`only in the situation where the second call is answered. ReplyDec, ⁋ 44. While the
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`second call is being placed and waiting to be answered, the first call is likewise being
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`held. Id. In this manner, when the second call is answered, the first and second calls
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`are bridged together to establish voice communications between the first and second
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`parties, as required by the Substitute Claim. Id.
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`None of the art relied on by Petitioner discloses receiving a first call without
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`answering it when the second call is placed. ReplyDec, ⁋ 45. Notably, Lamb has the
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`first call being answered before the second call is placed. See Lamb, 31:30-35
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`(“When the [the TNS] detects . . . that a person (the user) has picked up the handset
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`of user telephony device 106, the phone switch 202-2 under control of the [TNS] can
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`place a second call connection 232 to the user telephony device 108 . . . .”). In other
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`words, a second call is placed only after a person “picks up” the handset to which the
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`first call is placed. ReplyDec, ⁋ 45. This functionality is different than the Substitute
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`Paper No. 38
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`Claim which requires a second call to be placed before the first one is answered. Id.
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`V. The PBX Art – Blaze, Burke, and Fuentes
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`While Petitioner did discover some references that show a PBX connected to a
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`tandem switch, these arrangements are a far cry from the TAC disclosed in Substitute
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`Claim and the ’113 Patent. The ’113 Patent describes the TAC coupled to existing
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`tandem switches in the PSTN to provide enhanced functionality. See, e.g., ’113 Patent
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`at 4:43-47. The TAC is not shown directly connected to telephones, but either routes
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`calls to phones via the PSTN or a packet switched network. The PBXs in the PBX
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`Art, on the other hand, function as substitutes for edge switches. Consider the
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`language of the Substitute Claim. It describes edges switches as “connected to
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`telephones on one side and to PSTN tandem switches on the other side.” And, this is
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`exactly what is shown in the PBX Art. See, e.g., Burke, Fig. 1 (illustrating PBX 130
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`attached to toll switch 124 and telephones 141 and 142); Blaze, Fig. 1 (illustrating
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`PBX 111connected to telephones 130 and 131 and toll switch 110); Fuentes, Fig. 1
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`(illustrating PBX 30 connected to telephone 48 and describing a connection to a toll
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`switch (4:62-65)); ReplyDec, ⁋ 46. Petitioner’s expert acknowledges that this art is
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`the claimed edge switch in the Substitute Claim. ForysDep at 6:10-21. Accordingly,
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`it would not have been obvious to modify O’Neal with this art, nor has Petitioner
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`made any meaningful attempt as to how or why O’Neal could be modified or
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`combined to read on the limitations of the Substitute Claim. ReplyDec, ⁋ 46.
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`Paper No. 38
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`VI. Petitioner’s Other Arguments on Procedural Grounds Are Meritless
`Petitioner complains that Patent Owner’s Ex. 2041 is insufficient to establish
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`where in the ’113 Patent (and its supporting applications) written description support
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`exists for the Substitute Claim. See Resp. at 3-5. Petitioner cites to IPR2013-00155
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`(Paper 18) for the proposition that “mere citation to the original disclosure, without
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`any explanation” is inadequate. Id. at 5. Petitioner, however, neglected to quote the
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`phrase immediately before “mere”—“under the circumstances.” This decision was
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`therefore limited to the facts of the case and is not a general statement of the law.
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`Here, PO’s amendments to the claim largely use the exact words and phrases cited to
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`by PO in Ex. 2041, and, based on the excerpts included in Ex. 2041, it is clear that the
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`invention described by the Substitute Claim is supported. See CBM2015-00040,
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`Paper 16 at 3-5 (listing support for an amended claim that was allowed in Paper 34 of
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`-00040 at 56-60, which is less detailed than that provided by PO in Ex. 2041).
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`Petitioner argues that there is no support for limitations in the Substitute Claim
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`regarding packet networks, but Ex. 2041 clearly shows this disclosure. ReplyDec, ⁋
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`47. As one example, Fig. 2 shows TAC 10 placing and receiving VoIP calls to/from
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`digital phone 21. Petitioner goes on to state that the specification only discloses that
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`calls can be made by (i.e., not received by) conventional digital phone 21, but this is
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`refuted by the bi-directional arrows used in Fig. 2 to illustrate the VoIP capabilities
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`of the system and by the knowledge of a POSA that in 2000, “conventional digital
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`Paper No. 38
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`telephones” were certainly capable of receiving and placing calls. Id.
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`Petitioner also incorrectly argues that the Substitute Claim adds new matter
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`because the ’113 Patent does not disclose the TAC receiving both a first call request
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`and call data associated with that call. Resp. at 7. The TAC receives a first call
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`request. ’113 Patent, Fig. 5 (“Receiving Incoming Call Request (SS7) from PSTN
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`Tandem Office”). Figure 5 also makes clear that the TAC receives call data—indeed,
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`the TAC could not format a message with the called PPN, caller ID, channel #, etc. if
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`it did not receive “call data” with the call request. See id. The ’113 Patent clearly
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`supports the Substitute Claim. ReplyDec, ⁋ 48; see also Ex. 2041 at 7-9, 21-23, 35-
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`37, 49-51.
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`Petitioner argues that the Substitute Claim adds matter by “establishing the
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`voice communication. . . after the second call is completed and answered.” Resp. at
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`8. According to Petitioner, the ’113 Patent does not support that the second call is
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`completed. But, a call being “completed” was in the original claim. There cannot be
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`any controversy that a call (first or second call) is completed when the call has been
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`answered in order to establish voice communication, which is supported by the ’113
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`Patent. ReplyDec, ⁋ 49; Ex. 2041 at 13-15, 27-29, 41-43, 55-57.
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`Petitioner’s argument that the Substitute Claim is indefinite or inoperable is
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`meritless. Resp. at 8-9. As Petitioner acknowledges, when the first call is across the
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`11
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`Patent 8,457,113
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`second network, the claim language is met. Id.; ReplyDec, ⁋ 50. As long as voice is
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`Paper No. 38
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`established over both the packet network and the second network, the claim language
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`is met in this regard. Id. Thus, the Substitute Claim is operable and definite. Id.
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`Patent Owner’s proposed amendments are responsive to a ground of
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`unpatentability. Resp. at 9-10. PO narrowed its claim in several ways. For example,
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`Patent Owner narrowed the definition of “called party” to “subscriber.” These
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`amendments appropriately narrow the claim scope as a whole. ReplyDec, ⁋ 51.
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`Petitioner’s argument that Patent Owner broadened the Substitute Claim by
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`requiring that the call be processed across only the packet network is meritless. Resp.
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`at 10-11. The Substitute Claim requires that “the call” be traversed/processed across
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`both of the claimed networks. ReplyDec, ⁋ 52; Ex. 2062 (“method for … call from a
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`calling party to a called party across both the packet network and the second network”
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`and “establishing the voice communication … across both the packet network and the
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`second network.”) Indeed, Patent Owner has narrowed the claim to require a first call
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`and a second call in order to establish the voice communication across both the packet
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`network and the second network. See id. This is therefore a narrowing amendment.
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`ReplyDec, ⁋ 52.
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`Dated: July 31, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`12
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`Case IPR2016-01260
`Patent 8,457,113
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`Paper No. 38
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 31st day of July, 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Reply In Support of Motion to Amend has been served in its
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`entirety via email on the following:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Mark D. Passler
`David Brafman
`AKERMAN LLP
`777 South Flagler Drive
`Suite 1100 West Tower
`West Palm Beach, FL 33401
`Tel: (561) 653-5000
`Fax: (561) 659-6313
`Mark.passler@akerman.com
`David.brafman@akerman.com
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`Dated: July 31, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`13
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