IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Filed on behalf of YMax Corporation
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01260
`U.S. Patent No. 8,457,113
`
`PETITIONER’S OBSERVATIONS ON CROSS-EXAMINATION OF
`PATENT OWNER’S REPLY WITNESS REGIS J. “BUD” BATES
`
`
`U.S. Patent No. 8,457,113
`
`Filed on behalf of YMax Corporation
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01260
`U.S. Patent No. 8,457,113
`
`PETITIONER’S OBSERVATIONS ON CROSS-EXAMINATION OF
`PATENT OWNER’S REPLY WITNESS REGIS J. “BUD” BATES
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`LIST OF EXHIBITS
`
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`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
`i
`
`1018
`1019
`
`1020
`1021
`1022
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`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
`Communications Magazine, Vol. 23, Issue No. 12, Dec. 1995
`(“Andrews”)
`Transcript of Deposition of Regis Jerome “Bud” Bates taken on
`
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`
`1044
`
`ii
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
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`1045
`
`YMax Exh. Description
`May 4, 2017 (“Bates Tr.”)
`Declaration of Dr. Leonard J. Forys in Support of Opposition to
`Motion to Amend (“Forys Dec.”)
`Curriculum vitae of Dr. Leonard J. Forys
`Affidavit of Alexander D. Walden
`Transcript of Deposition of Regis Jerome "Bud" Bates taken on
`August 9, 2017
`
`1046
`1047
`1048
`
`iii
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`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Pursuant to the stipulation of the parties dated July 6, 2017 (paper no. 34 at
`
`2), Petitioner respectfully makes the following observations regarding the August
`
`9, 2017 cross-examination testimony of Patent Owner’s Reply declarant, Regis J.
`
`Bates (Ex. 1048):
`
`1.
`
`In Exhibit 1048, on page 7, lines 7-18, the witness testified that in preparing
`
`his declarations in support of the Patent Owner’s replies he “tried not to read [the
`
`references] in full --if it only cited to a specific quote.” The testimony is relevant
`
`because it demonstrates that Mr. Bates’ testimony regarding the scope of the
`
`teachings of the prior art cited in Petitioner’s Opposition to the Motion to Amend
`
`should be given little to no weight.
`
`2.
`
`In Exhibit 1048, on page 8, line 21 – page 9, line 11, the witness testified
`
`that he didn’t believe that Lamb used the term “edge switch.” This testimony is
`
`relevant to the argument on pages 14-16 of Petitioner’s Opposition to the Motion
`
`to Amend (paper no. 32) and to the argument on page 1 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). The testimony is relevant because
`
`it supports Petitioner’s argument that Lamb’s public phone switch 202-2 may be a
`
`tandem switch. See also Exhibit 2071, p. 43, l. 25 – p. 46, l. 3 (Dr. Forys testifying
`
`regarding Lamb’s options for placement of the TNS). This testimony is also
`
`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
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`relevant because it undermines Patent Owner’s argument that Lamb’s phone
`
`switch 202-2 is limited to being an edge switch. See also, Lamb, 27:17-18
`
`(describing public phone switch 202 as a “public phone switch”); Ex. 2071, p. 89,
`
`l. 18-23.
`
`3.
`
`In Exhibit 1048, on page 16, line 8 – page 17, line 9, the witness testified
`
`that Lamb describes that its TNS receives signaling, such as SS7 signaling, from
`
`the PSTN. This testimony is relevant to the argument on page 1 of Patent Owner’s
`
`Reply in Support of the Motion to Amend (paper no. 38). The testimony is
`
`relevant because it contradicts Patent Owner’s argument that Lamb’s phone switch
`
`202-2 is limited to being an edge switch. See also, Lamb, 20:46-58, 12:50-65, and
`
`24:28-38 (describing how Lamb’s THS receives call signaling messages from the
`
`connection-based network); Ex. 2070, ¶ 40 (“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”); See also Exhibit 2071, p. 57, l. 10 – p. 59, l. 24 (Dr. Forys
`
`testifying why one would have connected Lamb’s system to an access tandem).
`
`2
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
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`4.
`
`In Exhibit 1048, on page 19, line 18 – page 20, line 7, the witness testified
`
`that STPs are not directly connected to telephones. This testimony is relevant to
`
`the argument on pages 16-17 of Petitioner’s Opposition to the Motion to Amend
`
`(paper no. 32) and to the argument on pages 4-5 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it supports Petitioner’s argument that an STP is an example of the claimed
`
`tandem switch under Patent Owner’s own interpretation of the term. See Patent
`
`Owner’s Motion to Amend (paper no. 27), p. 7 (“‘PSTN tandem switch’ is not an
`
`edge switch and does not connect directly to the telephones of subscribers”). This
`
`testimony is also relevant because it undermines Patent Owner’s arguments to the
`
`contrary.
`
`5.
`
`In Exhibit 1048, on page 24, line 16 – page 25, line 4, the witness testified
`
`that Patent Owner’s construction for tandem switch does not explicitly require the
`
`transmission of voice. This testimony is relevant to the argument on pages 16-17
`
`of Petitioner’s Opposition to the Motion to Amend (paper no. 32) and to the
`
`argument on pages 5 of Patent Owner’s Reply in Support of the Motion to Amend
`
`(paper no. 38). This testimony is relevant because it supports Petitioner’s
`
`argument that an STP is an example of the claimed tandem switch under Patent
`
`Owner’s own construction of the term. See Patent Owner’s Motion to Amend
`
`3
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
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`(paper no. 27), p. 5 (“Patent Owner submits a ‘PSTN tandem switch’ be construed
`
`as ‘as a switch in the PSTN that interconnects other PSTN tandem switches and
`
`edge switches’”). This testimony is also relevant because it undermines Patent
`
`Owner’s arguments to the contrary. See Patent Owner’s Reply in Support of the
`
`Motion to Amend (paper no. 38), p. 5 (“an STP cannot carry voice traffic while
`
`tandem switches do.”); Ex. 2070, ¶ 38-39.
`
`6.
`
`In Exhibit 1048, on page 25, lines 9-24, the witness testified that STPs are
`
`connected to both edge switches and tandem switches. This testimony is relevant
`
`to the argument on page 16-17 of Petitioner’s Opposition to the Motion to Amend
`
`(paper no. 32) and to the argument on page 4-5 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it supports Petitioner’s argument that an STP is an example of the claimed
`
`tandem switch under Patent Owner’s own construction of the term. See Patent
`
`Owner’s Motion to Amend (paper no. 27), p. 5 (“Patent Owner submits a ‘PSTN
`
`tandem switch’ be construed as ‘as a switch in the PSTN that interconnects other
`
`PSTN tandem switches and edge switches’”), Allen, FIG. 1; Ex. 2071, p. 88, l. 17-
`
`21 (Dr. Forys testifying that an STP connects to both tandem and edge switches).
`
`This testimony is also relevant because it undermines Patent Owner’s arguments to
`
`the contrary.
`
`4
`
`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
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`7.
`
`In Exhibit 1048, on page 27, line 13 – page 28, line 14, the witness testified
`
`that Lamb describes items 231 and 232 as call connections not telephone lines.
`
`This testimony is relevant to the argument on page 2 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it undermines Patent Owner’s arguments that items 231 and 232 of Lamb
`
`are telephone lines. See Lamb, 31:22-46 (describing how Lamb’s TNS controls
`
`public phone switch to “create a call connection 231”), 1:36-45 (discussing
`
`telephone lines), FIG. 4.
`
`8.
`
`In Exhibit 1048, on page 28, line 15 – page 32, line 13, the witness testified
`
`that Lamb describes creating a call connection 231 and not a physical construct.
`
`This testimony is relevant to the argument on page 2 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). This testimony is relevant
`
`because it undermines Patent Owner’s arguments that items 231 and 232 of Lamb
`
`are telephone lines. See Lamb, 31:22-46 (describing how Lamb’s TNS controls
`
`public phone switch to “create a call connection 231”), 1:36-45 (discussing
`
`telephone lines), FIG. 4; Ex. 2071, p. 50, l. 22 – p. 53, l. 19 (Dr. Forys testifying
`
`that items 231 and 232 of Lamb are not telephone lines).
`
`5
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`9.
`
`In Exhibit 1048, on page 34, line 22 – page 39, line 8, the witness testified
`
`that the tandem switch of the ‘777 patent performs functions (via the TAC) similar
`
`to those performed by Lamb’s public phone switch 202-2 (via Lamb’s TNS). This
`
`testimony is relevant to the argument on page 14-16 of Petitioner’s Opposition to
`
`the Motion to Amend (paper no. 32) and to the argument on page 3-4 of Patent
`
`Owner’s Reply in Support of the Motion to Amend (paper no. 38). The testimony
`
`is relevant because it supports Petitioner’s argument that Lamb’s public phone
`
`switch 202-2 may be a tandem switch. See Lamb, 31:58-62, 27:17-18 (describing
`
`public phone switch 202 as a “public phone switch”). This testimony is also
`
`relevant because it undermines Patent Owner’s argument that Lamb’s phone
`
`switch 202-2 is limited to being an edge switch.
`
`10.
`
`In Exhibit 1048, on page 40 lines 3-21, the witness testified that
`
`“terminates” as used in the ‘777 patent means “stops the ringing.” In Exhibit 1048,
`
`on page 43, line 20 – page 45, line 5 the witness then testified that in answering a
`
`call “an answer message is sent across the SS7 network.” In Exhibit 1048, on page
`
`45, lines 6-15, the witness also testified that for terminated calls in the ‘777 patent
`
`there is no answer supervision. This testimony is relevant to the argument on page
`
`8 of Petitioner’s Opposition to the Motion to Amend (paper no. 32) and to the
`
`argument on page 11 of Patent Owner’s Reply in Support of the Motion to Amend
`
`6
`
`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`(paper no. 38). This testimony is relevant because it supports Patent Owner’s
`
`argument that “terminating” is different from “answering” in the ‘777 patent. See
`
`‘777 patent, Abstract, 3:3-7, and 11:7-10; Ex. 2071, p. 27, l. 17 – p. 34, l. 25 (Dr.
`
`Forys generally testifying how the ‘777 patent treats terminating different from
`
`answering), p. 26, l. 17 – p. 27, l. 3 (testifying that an SS7 answer message is
`
`transmitted when a call is answered), p. 27, l. 9-25 (testifying how in the abstract
`
`of the ‘777 patent “terminate” means to “end the call”). This testimony is also
`
`relevant because it undermines Patent Owner’s arguments to the contrary.
`
`11.
`
`In Exhibit 1048, on page 58, line 19 – page 59, line 4, the witness testified
`
`that the substitute claim in Exhibit 2062 (see Ex. 1048, p. 56, l. 19 – p. 58, l. 18)
`
`did not have any requirements regarding receiving a first call without answering it,
`
`but that this feature is found in the “specification and the patent.” This testimony
`
`is relevant to the argument on pages 21-22 of Petitioner’s Opposition to the Motion
`
`to Amend (paper no. 32) and to the argument on page 8 of Patent Owner’s Reply in
`
`Support of the Motion to Amend (paper no. 38). The testimony is relevant because
`
`it supports Petitioner’s argument that the proposed substitute claim does not
`
`require “receiving a first call without answering it until a second call is answered,
`
`then completing ‘the call.’” See Patent Owner’s Motion to Amend (paper no. 27),
`
`7
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`p. 25. This testimony is also relevant because it undermines Patent Owner’s
`
`arguments to the contrary.
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`8
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`OBSERVATIONS ON CROSS-EXAMINATION OF PATENT OWNER’S
`
`REPLY WITNESS REGIS J. “BUD” BATES and all associated exhibits were
`
`served electronically via e-mail on August 21, 2017, in its entirety on the
`
`following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`PAL-IPR@nelbum.com
`NELSON BUMGARDNER P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
`
`Victor Siber
`VSiber@SiberLaw.com
`Hanna Madbak
`HMadbak@SiberLaw.com
`SIBER LAW LLP
`28 West 44th Street, Suite 604
`New York, NY 10036
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti
`Lead Attorney for Patent Owner
`Reg. No. 47,024
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax
`Corporation
`
`
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