`________________
`
`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 PRELIMINARY RESPONSE
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 1
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`TABLE OF CONTENTS
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`I. QUALIFICATIONS ............................................................................................ 1
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`II. PERSON OF ORDINARY SKILL ..................................................................... 4
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`III. LEGAL UNDERSTANDING .......................................................................... 4
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`A. ANTICIPATION .............................................................................................. 5
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`B. OBVIOUSNESS ............................................................................................... 6
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`C. BROADEST REASONABLE INTERPRETATION ...................................... 8
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`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE ’113 PATENT .
` .......................................................................................................................... 9
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`V. GENERAL DISCLAIMER OF CONTROLLERS CONNECTED TO EDGE
`SWITCHES ..............................................................................................................17
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`A. Disparaging Statements in the ’113 Patent.....................................................17
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`B. Applicants’ Statements in the Prosecution History to Distinguish over
`Schwab .................................................................................................................22
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`1. ’777 Patent Prosecution - First Response to an Office Action ...................22
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`2. ’777 Patent Prosecution - Second Response to an Office Action ...............24
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`C. Scope of General Disclaimer ..........................................................................28
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`VI. CLAIM CONSTRUCTIONS...........................................................................29
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`A. “Switching Facility” .......................................................................................29
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`B. “Coupled To” ..................................................................................................35
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`VII. SUMMARY OF THE REFERENCES ............................................................36
`
`ii
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 2
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`A. Summary of Shtivelman .................................................................................36
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`B. Summary of O’Neal .......................................................................................38
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`VIII. ARGUMENTS ...............................................................................................43
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`A. The Challenged Claims of Ground 1 Are Not Anticipated by Shtivelman ...43
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`1. The Claimed “Switching Facility” Cannot Be an Edge Switch ..................44
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`2. The Purported “Switching Facility” in Shtivelman is an Edge Switch ......44
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`3. Petitioner’s Secondary Argument Regarding the Breadth of “Coupled To”
`are Equally Deficient .......................................................................................45
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`4. Shtivelman only Discloses Subject Matter that has been Disclaimed ........46
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`5. Independent Claim 1 and Its Dependent Claims are not Anticipated by
`Shtivelman .......................................................................................................47
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`6. Dependent Claim 17 Is Not Anticipated By Shtivelman ............................47
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`7. Dependent Claims 18 and 19 Are Not Anticipated By Shtivelman ............47
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`B. The Challenged Claims of Ground 2 are not Anticipated by O’Neal ............48
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`1. The Claims “Switching Facility Cannot be an Edge Switch ......................49
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`2. The Purported “Switching Facility” in O’Neal is an Edge Switch, and the
`Purported “Call Processing System” is an Edge Device .................................49
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`3. Petitioner’s Secondary Argument Regarding The Breadth of “Coupled To”
`Are Equally Deficient ......................................................................................49
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`4. O’Neal only Discloses Subject Matter that has Been Disclaimed ..............50
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`5. Independent Claim 1 and Its Dependent Claims are not Anticipated by
`O’Neal ..............................................................................................................51
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`6. Dependent Claim 17 is not Anticipated by O’Neal ....................................51
`iii
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 3
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`IX. CONCLUSION ................................................................................................53
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`7. Dependent Claims 18 and 19 are not Anticipated by O’Neal .....................51
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`C. The Challenged Claims of Ground 3 are not Obvious in View of O’Neal ...52
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`D. The Challenged Claims of Ground 4 Are Not Obvious by Shtivelman in
`View of O’Neal ....................................................................................................52
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`
`
`iv
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 4
`Bates Declaration
`IPR2016-01260
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`
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`I, Regis J. “Bud” Bates, declare as follows:
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`1. My name is Regis J. “Bud” Bates, and I have been retained as an
`expert witness for Inter Partes Review of IPR2016-01260.
`
`This report contains statements of my opinions formed to date and the
`
`2.
`bases and reasons for those opinions. I may offer additional opinions based on
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`further review of materials in this case, including opinions and/or testimony of
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`other expert witnesses.
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`3.
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`I understand that this Declaration is being submitted along with Patent
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`Owner’s Preliminary Response.
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`Capitalized terms found in this Declaration that are not defined herein
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`4.
`have the meaning given them in Patent Owner’s Preliminary Response.
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`In preparing this Declaration, I have reviewed the Petition, the
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`5.
`declaration that accompanies the Petition (hereinafter referred to as “Petitioner’s
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`Declaration”), and the exhibits that have been submitted with the aforementioned
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`filings.
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`This Declaration is a statement of my opinions on issues related to the
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`6.
`validity of the Challenged Claims of the ’113 Patent.
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`I am of the opinion that the Challenged Claims of the ’113 Patent are
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`7.
`patentable for the reasons discussed below.
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`I.
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`QUALIFICATIONS
`This section summarizes my career history, education, publications, and
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`8.
`other relevant qualifications. My full curriculum vitae is attached as Appendix A to
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`this report.
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 5
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`I have been involved in and with the telecommunications industry for 50
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`9.
`years and have seen the development and growth of the various technologies,
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`infrastructure, legal, regulatory, and technical services.
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`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 this book, I am
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`uniquely situated to opine upon the state of the Telephone Networks, as well as the
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`conclusions that both parties in this proceeding draw therefrom.
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`11.
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`I am the founder and president of TC International Consulting, Inc.
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`(TCIC), based in Heber, Arizona. I have held this position since the inception of
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`the company in October 1989. TCIC is a full service consulting and training firm
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`specializing in communications and computer convergence.
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`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
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`technologies including voice, telephone systems, data networks, video, Internet,
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`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
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`systems and services, fiber optics, and infrastructure. We have been responsible for
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`selecting and implementing over 100 private branch exchange (PBX) systems for
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`our client companies. TCIC develops and conducts training for corporate users,
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`equipment manufacturers, and Telephone and Internet carriers.
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`13. From September 1986 to October 1989, I was the chief information
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`officer at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities
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`included the complete automation of the law firm’s multiple offices around the
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`country.
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`2
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 6
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`14. From September 1979 to September 1986, I was the telecommunications
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
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`select, analyze and implement voice and data communications projects at U.S. and
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`international sites.
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`15. From April 1977
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`to September 1979,
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`I was
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`the
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`senior
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`telecommunications manager for manufacturing and international sites at Data
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`General Corporation
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`in Westboro, MA. I was responsible for selecting
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`telecommunications equipment for sites across the world, selecting services (voice,
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`data and fax traffic) from common carriers, and selecting appropriate means and
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`protocols to use these goods and services.
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`16. From September 1974 to April 1977, I was the manager of administrative
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`services at a retail chain in Canton, MA called Hills Department Stores. There, I
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`was responsible for communications matters including voice, data, fax, telex, and
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`teletype.
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`17. From April 1972 to September 1974, I worked as the telecommunications
`and facilities manager at Damon Corporation, a conglomerate that included
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`medical-biological development, veterinary products, clinical labs, security
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`manufacturing, and hobby craft. My responsibilities included voice and data
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`communications for a variety of locations across the country.
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`18. From September 1966 to April 1972, I was a captain in the U.S. Army
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`Signal Corps. My assignments took me to many locations, including a deployment
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`in Vietnam, where I worked in mobile and fixed-site communication environments
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`using radio-based troposcatter systems.
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`
`
`3
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 7
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`In addition to these formal roles, I have consulted for and provided
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`19.
`training courses to over 20 major organizations, including Cisco, Motorola
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`Solutions, Nortel Networks, the University of California at Berkeley, and Fidelity
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`Investments, as well as the U.S. Army, Electronic proving Grounds, Central
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`Intelligence Agency, Federal Bureau of Investigation, and National Security
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`Agency.
`
`I received a Bachelor of Sciences degree in Business Management in
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`20.
`1979 from Stonehill College in Easton, MA with additional work towards my
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`Masters of Business Administration from Lehigh University in Bethlehem, PA and
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`St. Joseph’s College in Philadelphia, PA. I completed all the coursework but not
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`the thesis for an MBA.
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`I have authored or co-authored 20 books on telecommunications
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`21.
`technologies, and have authored 9 magazine articles.
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`PERSON OF ORDINARY SKILL
`II.
`22. While I am not expressing an opinion at this time on whether Petitioner’s
`declarant’s definition of a person of ordinary skill in the art is correct, I am
`
`adopting it for the limited purposes of this Declaration.
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`III. LEGAL UNDERSTANDING
`23. 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
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`understand that the Patent Office will find a patent claim invalid in an inter partes
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`review if it concludes that it is more likely than not that the claim is invalid.
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`
`
`4
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 8
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`A. ANTICIPATION
`I have read 35 U.S.C. §§ 102 (a)-(g) and have been advised by counsel of
`24.
`the requirements to prove “anticipation” of a patented invention under these
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`statutory provisions. I have been advised that if each and every element or step of
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`a claim is disclosed within the “four corners” of a single prior art reference, that
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`claim is said to be anticipated by that prior art reference and is invalid under 35
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`U.S.C. § 102.
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`I understand that anticipation requires that a single reference disclose all
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`25.
`the elements, as arranged in the claim. I further understand that the prior art
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`reference must clearly and unequivocally disclose the claimed invention or direct
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`those skilled in the art to the claimed invention without any need for picking,
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`choosing, and combining various disclosures not directly related to each other by
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`the teachings of the cited reference.
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`I also have been advised that a prior art reference can disclose a claim
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`26.
`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
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`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
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`cannot be established by probabilities or possibilities, and that the mere fact that
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`something may result from a given set of circumstances is not sufficient to show
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`inherency.
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`
`
`5
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 9
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`B. OBVIOUSNESS
`I have also been advised by counsel of the legal standards that apply to
`27.
`invalidity for obviousness under 35 U.S.C. § 103. I understand that a patent claim
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`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
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`have been obvious at the time the invention was made to a person having ordinary
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`skill in the art to which the subject matter pertains. I understand that obviousness is
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`a question of law and that the following factors must be evaluated to determine
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`whether a party challenging a patent claim’s validity has met its burden of proof
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`that the claimed invention is obvious: (1) the scope and content of the prior art; (2)
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`the differences between the claims and the prior art; (3) the level of ordinary skill
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`in the art; and (4) objective indicia of nonobviousness.
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`I understand that to reach a proper determination under 35 U.S.C. § 103,
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`28.
`one must step backward in time and into the shoes worn by the hypothetical
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`“person of ordinary skill in the art” (“POSA”) when the invention was unknown
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`and just before it was made. In view of all factual information, one must then make
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`a determination whether the claimed invention “as a whole” would have been
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`obvious at that time to that person of ordinary skill in the art. Knowledge of the
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`applicants’ disclosure must be put aside in reaching this determination, yet kept in
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`mind in order to determine the differences between the claimed subject matter as a
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`whole and the content of the prior art.
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`If a single element of the claim is absent from the prior art, alone, or in
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`29.
`combination, the claims cannot be considered obvious.
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`
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`6
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 10
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`30. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I have been informed by
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`counsel to consider any distortion caused by hindsight bias, to guard against
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`slipping into the use of hindsight, to be cautious of opinions that rely upon after‐
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`the-fact reasoning, and to avoid the temptation to read into the prior art the
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`teachings of the invention at issue. The determination of obviousness is not
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`whether a person could, with full knowledge of the patented device, reproduce it
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`from prior art or known principles. The question is whether it would have been
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`obvious, without knowledge of the patentee’s achievement, to produce the same
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`thing that the patentee produced. This judgment must be made without the benefit
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`of hindsight. It is improper to take concepts from other devices and change them in
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`light of the now‐known template of the patented device, without some direction
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`that would render it obvious to do so.
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`31.
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`I understand that a claim is not proven obvious merely by demonstrating
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`that each of the claim elements was independently known in the prior art. I
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`understand that most, if not all, inventions rely on building blocks long since
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`uncovered and claimed discoveries, and, almost of necessity, will likely be
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`combinations of elements that were already known. A party challenging validity
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`must show that a person of ordinary skill in the art would have had a reason to
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`combine the teachings of the prior art to achieve the claimed invention and would
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`have had a reasonable expectation of success in doing so.
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`I have also been informed by counsel that an inference that a claimed
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`32.
`combination would not have been obvious is especially strong where the prior art’s
`7
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`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 11
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`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
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`to "teach away" when a person of ordinary skill, upon reading the reference, would
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`be discouraged from following the path set out in the reference, or would be led in
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`a direction divergent from the path that was taken by the applicant. Where a
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`proposed modification or combination for the prior art would change the principle
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`of operation of the prior art being modified or render the prior art unsatisfactory for
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`its intended purpose then the teachings of the references are not sufficient to render
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`the claims at issue obvious.
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`I have been informed by counsel that a party challenging the claims of a
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`33.
`patent must present evidence sufficient to establish some articulated, rational
`
`reason to select and 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.
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`C. BROADEST REASONABLE INTERPRETATION
`34. The Board interprets claims in an unexpired patent using the broadest
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`reasonable interpretation (“BRI”) in light of the specification of the patent in which
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`they appear. Under a broadest reasonable interpretation, words of the claim must
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`be given their plain meaning, unless such meaning is inconsistent with the
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`specification and prosecution history. Under this standard, claims should always
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`be read in light of the specification and teachings in the underlying patent claim. A
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`construction under BRI cannot be divorced from the specification and the record
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`evidence, and must be consistent with the one that those skilled in the art would
`8
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`
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 12
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`reach. The construction must be reasonable in light of the totality of the written
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`description and the claims. I have also been informed by counsel that the
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`prosecution history may be an important component of intrinsic evidence in
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`construing claims, even when a broadest reasonable construction standard applies.
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`35.
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`I understand that the broadest reasonable interpretation of a claim term
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`cannot be so broad as to include a configuration expressly disclaimed or disavowed
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`in the specification. Claim terms are given their plain meaning unless the
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`specification or prosecution history evidences that the patentee acted as his own
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`lexicographer or disavowed claim scope.
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`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE ’113
`
`PATENT
`36. Before discussing ’113 Patent, a general description of the public
`telephone network is in order. The public telephone network is often associated
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`with the acronym PSTN (Public Switched Telephone Network). While Petitioner
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`and Patent Owner disagree over what is and is not included in the PSTN, there are
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`areas of agreement. All parties seemingly agree that the core networks of
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`“traditional” telecommunications companies (e.g., AT&T) used to route voice calls
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`from one phone to another are part of the PSTN. For example, a voice call from a
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`“wired” analog telephone in California on an AT&T network to another “wired”
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`analog telephone in New York on a Verizon network will traverse the PSTN.
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`
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`9
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 13
`Bates Declaration
`IPR2016-01260
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`
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`Declaration of Regis J. “Bud” Bates
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`37. To connect phones in distant locations, the PSTN employs various
`equipment to route calls. This equipment includes switches and databases, and is
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`arranged in a hierarchical fashion:
`
`10
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 14
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`
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`See https://en.wikipedia.org/wiki/PSTN_network_topology. Notably, the same
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`hierarchical levels/equipment may be referred to by a variety of names. In both
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`examples above, the class 4 level refers to both a “toll center” and a “tandem
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`switch.” This understanding is important because the ’113 Patent and prior art
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`references sometimes use different terminology to refer to the same hierarchical
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`level.
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`38. At the top of the hierarchy are regional toll centers (class 1 offices).
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`These offices are interconnected with sectional toll centers (class 2 offices), which
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`in turn connect to primary centers (class 3 offices). As a point of reference, in
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`1984 (the year AT&T was broken up into the “Baby Bells”), there were 10 class 1
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`centers, 67 class 2 centers, and 200 class 3 centers. Ray Horak, Communications
`Systems & Networks 159-61, (2nd ed. 2000) (Ex. 2002).
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`
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`11
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 15
`Bates Declaration
`IPR2016-01260
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`Declaration of Regis J. “Bud” Bates
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`39. Class 4 and 5 levels comprise the rest of the hierarchy and are of
`particular relevance to the ’113 Patent. Class 4 centers contain tandem switches.
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`Class 4 centers are also referred to as toll centers, and tandem switches are also
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`referred to as Class 4 switches or toll switches. As a point of reference, in 1984,
`there were approximately 940 tandem switches. Id.
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`40. Tandem switches have been defined as:
`High-capacity switch[es] positioned in the physical core, or backbone,
`of [the PSTN], where [they] serve to interconnect edge switches, or
`Central Office (CO) switches.
`
`Ray Horak, Webster’s New World Telecom Dictionary (2008), 474 (“Telecom.
`
`Dict.”) (Ex. 2003); and
`[N]etwork switches that serve in partnership with lesser switches,
`linking them together. In other words and in the classic sense, tandem
`switches serve no end users directly; rather, they serve to interconnect
`switches over dedicated
`interoffice
`trunks,
`forming a
`fully
`interconnected and toll-free metropolitan calling area in the process.
`
`Ray Horak, Telecommunications and Data Communications (2007), 212 (Ex.
`
`2004). The ’113 Patent refers to a “PSTN tandem switch” as “exchanges that
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`direct telephone calls (or other traffic) to central offices [] or to other tandem
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`switches.” ’113 Patent, 4:47-49.
`
`41. As stated above, tandem switches serve to interconnect Class 5 offices
`that contain edge switches. Edge switches are sometimes referred to as central
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`
`
`12
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 16
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`offices (“COs”), and vice versa. In 1984, there were thousands of COs containing
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`edge switches in the U.S. Central offices have been defined as:
`[Offices] which serve end users through local loop connections [local
`loops are the actual copper wires that run from a customer’s premises to
`the central office].
`
`Ex2002 at 159; and
`. . . a CO traditionally houses one or more voice-optimized circuit
`switches to interconnect subscriber lines within a local area known as the
`carrier serving area (CSA) and to connect subscriber local loops to
`network trunks.
`
`Ex2003 at 102.
`
`42. These dictionary definitions are consistent with the disclosures of tandem
`switches and edge switches in the ’113 Patent:
`The [PSTN] consists of a plurality of edge switches connected to
`telephones on one side and to a network of tandem switches on the other.
`The tandem switch network allows connectivity between all of the edge
`switches, and a signaling system is used by the PSTN to allow calling
`and to transmit both calling and called party identity.
`
`13
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 17
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`
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`’113 Patent, 1:45-51 and Fig. 2. The most salient points regarding tandem
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`switches and edge switches, as confirmed by both extrinsic and intrinsic evidence,
`
`are (1) edge switches are connected directly to subscribers or edge devices via end-
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`lines (i.e., there are copper wires (or other media) that run directly between the
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`edge switches and subscribers); and (2) tandem switches are not directly connected
`
`to subscribers or edge devices, but are instead connected to edge switches and
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`other tandem switches.
`
`In
`
`the PSTN, before one subscriber
`
`43.
`communication with another subscriber, the call must be “set up.” Setting-up a
`
`is able
`
`to have a voice
`
`call refers to the exchange of control signaling that causes the establishment of a
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`path over which voice data can flow. In the PSTN, voice paths are established on
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`demand, as needed, in order to conserve resources.
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`
`
`14
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 18
`Bates Declaration
`IPR2016-01260
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`
`
`Declaration of Regis J. “Bud” Bates
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`44. At the time of the inventions, the PSTN utilized the Signaling System 7
`(“SS7”) protocol to set up calls. SS7 signaling flows between one CO and another,
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`including all switches in between (e.g., tandem switches). SS7 signaling does not
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`flow past COs to edge devices, as edge devices are not equipped to process and
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`respond to SS7 signaling.
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`45. Generally, the ’113 Patent relates to the provision of call control features
`in a public telephone network. Call forwarding (e.g., transferring a voice call
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`originally directed to 703-555-1212 to an alternate telephone number) is an
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`exemplary call control feature. The ’113 Patent discloses a Tandem Access
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`Controller (“TAC”) that implements call control features. The TAC is a
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`combination of computing hardware and software
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`that
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`is appropriately
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`programmed to process calls. ’113 Patent, 4:35-39.
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`46. The Background section acknowledges that, at the time of the invention,
`various devices existed to provide call control features. One novel and important
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`aspect of the ’113 Patent concerns where in the PSTN such call control features are
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`implemented. As discussed in more detail below, the ’113 Patent expressly
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`recognizes that prior art call control devices were attached to an edge device (e.g.,
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`phones and PBXs) or an edge switch located in a CO. ’113 Patent 1:51-67; 2:40-
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`44. These prior art edge devices receive a call on one line, dial out on another line,
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`and connect the two lines together.
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`47. By contrast, the ’113 Patent discloses connecting the TAC to a tandem
`switch (hence the name Tandem Access Controller). This arrangement allows
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`calls to be intercepted and processed before they are handed off to the CO (edge
`15
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 19
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`switch) associated with the called party. Stated differently, instead of a call being
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`passed to a destination CO, then on to a controller connected to the CO which
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`would a perform call control feature, the TAC processes the call at a tandem switch
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`before it is ever routed to the destination CO.
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`48. This novel arrangement has several advantages. The first advantage
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`concerns costs. Calls coming into and out of controllers connected to COs
`incurred charges for each incoming and outgoing call. See ’113 Patent 2:17-21
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`(discussing this scenario).
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`In a call forwarding scenario using the present invention, the TAC
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`49.
`intercepts the call at the Class 4 level before it reaches the destination CO edge
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`switch. As a result, the call from called party to the calling party is processed by
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`the TAC before it reaches the CO associated with the called number. The TAC
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`then initiates call signaling to set up the call to the forwarding number, and
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`connects the original call to the one arranged by the TAC. This process is invisible
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`to the called and calling parties, and incurs less tolls than the prior art solutions
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`discussed in the ’113 Patent. ’113 Patent, 4:55-5:3.
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`50. Another advantage regarding the TAC’s placement at a tandem switch
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`concerns call quality. Running an analog voice signal from an edge switch to an
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`edge device over copper wire degrades the quality of the signal (an edge device is a
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`device connected to an edge switch, typically on a customer’s premises, such as a
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`private branch exchange (PBX) or a generic telephone – see ’113 Patent, 5:4-6).
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`The prior art call forwarding solution suffers from this degradation twice: once
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`from the calling party’s call to the controller connected to the CO, and once from
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 20
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`the controller’s call to the forwarding number. On the other hand, handling calls at
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`the tandem level maintains the quality of the call, as it is processed within the
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`PSTN, where the signal may be in digital form and/or carried over high-quality
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`lines (as compared to the end lines that carry a call from a CO to a phone). ’113
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`Patent, 1:59-65; 2:41-51.
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`V. GENERAL DISCLAIMER OF CONTROLLERS CONNECTED TO
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`EDGE SWITCHES
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`A. Disparaging Statements in the ’113 Patent
`51. The intrinsic record of the ’113 Patent recognizes that prior art systems
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`and methods applied call control features through an edge switch or an edge
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`device. The ’113 Patent disparages these prior art attempts as suffering from
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`various shortcomings that the present inventions specifically seek to remedy.
`Indeed, Applicants1, both in the specification and the prosecution history,
`repeatedly criticized applying call control features through an edge switch or an
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`edge device, and in fact distinguished their inventions over such prior art. By
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`making such statements, Applicants unequivocally disclaimed controllers that
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`applied call control features through an edge switch, or controllers that were
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`themselves an edge device, from the scope of their inventions.
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`52. Applicants’ disparaging statements begin in the Background of the
`Invention section of the ’113 Patent. In discussing various prior art systems and
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`1 I will refer to those that drafted and prosecuted the ’113 Patent as
`“Applicants.”
`
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`17
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2001 - 21
`Bates Declaration
`IPR2016-01260
`
`
`
`Declaration of Regis J. “Bud” Bates
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`their perceived disadvantages, Applicants specifically disparage the application of
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`call control features at an edge switch:
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`There are also edge devices in each of the public telephone company’s
`central offices which provide local control, but offer an extremely
`limited number of features and do not provide true 3rd-party call
`control.
`
`’113 Patent, 1:37-40; and
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`In the past, numerous devices have been built that allow the
`connection of two lines together at an edge switch. These devices can
`be used