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 REPLY TO PATENT OWNER'S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
`
`{39844855;2}
`
`
`
`____________
`
`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 REPLY TO PATENT OWNER'S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
`
`{39844855;2}
`
`
`
`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Paper No. 9
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................ i
`
`I.
`
`II.
`
`INTRODUCTION .........................................................................................1
`
`THE STANDARD FOR CLAIM SCOPE DISCLAIMER........................3
`
`III. THE SPECIFICATION DOES NOT CONTAIN A DISCLAIMER .......4
`
`A.
`
`The specification states that its criticisms of controlling features through an
`
`edge switch are overcome by the “preferred embodiment” – not by all
`
`embodiments of the invention ................................................................................4
`
`B.
`
`The specification discloses an embodiment that includes the controller being
`
`connected to an edge switch...................................................................................6
`
`IV. THE PROSECUTION HISTORY DOES NOT CONTAIN A
`
`DISCLAIMER..........................................................................................................7
`
`A.
`
`The patent applicants did not clearly disavow connection to edge switches,
`
`and, moreover, defined “switching facility” to include edge switches..................7
`
`B.
`
`The PTO is not required to accept prosecution history disclaimer .................9
`
`V.
`
`CONCLUSION ............................................................................................10
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`{39844855;2}
`
`i
`
`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`I.
`
`INTRODUCTION
`
`Paper No. 9
`
`Pursuant
`
`to the Board’s oral
`
`ruling during the October 21, 2016
`
`teleconference with the parties, Petitioner respectfully submits this Reply to
`
`address Patent Owner’s arguments concerning disclaimer of claim scope.
`
`Claim 1 of the ’113 patent uses the phrase “switching facility” several times,
`
`including in the limitation “the call processing system coupled to at least one
`
`switching facility of the telecommunications network.” Patent Owner argues that
`
`the applicants disclaimed call processing systems (controllers) that are connected
`
`to edge switches.
`
`It further argues that the construction of “switching facility”
`
`should therefore exclude edge switches, notwithstanding the phrase’s plain
`
`meaning of “any switch in the communication network.” See Prelim. Resp. at 2,
`
`14–43; Petition at 20-21.
`
`However, to effectuate a disclaimer of claim scope, the disavowal in the
`
`specification or prosecution history must be “clear and unmistakable.” Thorner v.
`
`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012). The
`
`specification here expressly discloses two embodiments. The first describes the
`
`controller as merely “connected to the PSTN,” without restriction regarding the
`
`connection. It is only the second (albeit preferred) embodiment that more narrowly
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`{39844855;2}
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`1
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`specifies that
`
`the controller is “connected internally to the PSTN,” that
`
`is,
`
`“[c]onnect[ed] directly to the PSTN tandem switch….” Ex. 1001 at 3:28-40.
`
`Likewise, although the applicants argued in the prosecution history that their
`
`architecture differs from that in Schwab where calls are routed via an edge switch,
`
`in their very next breath, applicants define “switching facilities” in a footnote to
`
`broadly encompass “Any point in the switching fabric of converging networks,
`
`also referred to in industry as a signal transfer point (STP), signal control point
`
`(SCP), session border controller (SBC), gateway, access tandem, class 4 switch,
`
`wire center, toll office, toll center, PSTN switching center, intercarrier connection
`
`point, trunk gateway, hybrid switch, etc.” Ex. 2005 at 81-82, 82 n.1 (emphases
`
`added). That broad definition with its open-ended list of examples that include a
`
`“hybrid switch” (which is a combination class 4/tandem and class 5/edge switch)
`
`is contrary to a “clear and unmistakable” disclaimer of edge switches.
`
`Because applicants chose to use the broad phrase “switching facility” in their
`
`claims and did not unambiguously exclude the possibility of that facility being an
`
`edge switch, Patent Owner has failed to prove the existence of a disclaimer that
`
`narrows the scope of the phrase from its plain meaning.
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`{39844855;2}
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`2
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`II.
`
`THE STANDARD FOR CLAIM SCOPE DISCLAIMER
`
`As the Federal Circuit has explained, the standard for finding a disclaimer of
`
`claim scope is “exacting.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d
`
`1304, 1309 (Fed. Cir. 2014). Disavowal does not arise merely by criticizing a
`
`particular embodiment that is encompassed in the plain meaning of a claim term.
`
`See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009).
`
`Nor is it enough that all the embodiments of the invention disclosed in the
`
`specification contain a particular limitation. Thorner v. Sony Computer Ent. Am.
`
`LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Rather, a disclaimer of claim scope
`
`must be “clear and unmistakable.” Id. at 1366-67 (emphasis added); see also
`
`Openwave Systems, Inc. v. Apple Inc., 808 F.3d 509, 513 (Fed. Cir. 2015)
`
`(disavowal must be, among other things, “so unmistakable as to be unambiguous
`
`evidence of disclaimer.’”) (emphasis added); LG Electronics, Inc. v. Advanced
`
`Micro Devices, Inc., Case IPR2015-00324, Paper 39 at 17 (PTAB May 23, 2016).
`
`Patent Owner bears the burden of establishing the existence of a disclaimer
`
`here. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016)
`
`(“The party seeking to invoke prosecution history disclaimer bears the burden of
`
`proving the existence of a ‘clear and unmistakable’ disclaimer that would have
`
`been evident to one skilled in the art.”)
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`{39844855;2}
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`3
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`III. THE SPECIFICATION DOES NOT CONTAIN A DISCLAIMER
`
`A.
`
`The specification states that its criticisms of controlling features
`through an edge switch are overcome by the “preferred
`embodiment” – not by all embodiments of the invention
`
`It is true that the specification of the '113 Patent asserts that prior art devices
`
`that connected to edge switches had certain problems. See Ex. 1001 at 1:59-66.
`
`Patent Owner asserts that this criticism supports the existence of a disclaimer of
`
`edge switches as part of “switching facilities.” The flaw in this argument is that
`
`the specification explicitly states that these edge switch problems are solved by a
`
`preferred embodiment, as opposed to all embodiments of the invention:
`
`A preferred embodiment of the inventive system described
`herein connects at the tandem, thereby eliminating these problems [of
`edge switches and edge devices].
`
`Ex. 1001 at 2:1-3.
`
`That connecting to a tandem switch is explicitly disclosed as merely the
`
`preferred embodiment is alone sufficient to rebut Patent Owner’s suggestion that
`
`the specification disavowed connecting to an edge switch. For example, in the
`
`Honeywell case cited by Patent Owner, the Federal Circuit found that the claimed
`
`“fuel injection system component” was limited only to fuel filters because the
`
`specification repeatedly described a fuel filter as “the invention” and not as only a
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`{39844855;2}
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`4
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`“preferred embodiment.” Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d
`
`1312, 1318 (Fed. Cir. 2006) (“Moreover, the written description does not indicate
`
`that a fuel filter is merely a preferred embodiment of the claimed invention.”)
`
`In another case, Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317
`
`(Fed. Cir. 2002), the specification described two problems with the prior art.
`
`Because the specification explained that only one configuration of the parts of the
`
`invention solved both of those problems, the district court had found that the
`
`inventors disclaimed other configurations.
`
`Id. at 1325. On appeal, the Federal
`
`Circuit reversed that finding. The appellate court explained that the disclosed
`
`embodiment
`
`that solved both problems was “a preferred embodiment of the
`
`invention. Such a description of a preferred embodiment does not, of course, limit
`
`the scope of the claims.” Id. at 1326.
`
`Here, as in Honeywell v. Victor and unlike in Honeywell v. ITT,
`
`the
`
`applicants specifically describe the controller connected to a tandem switch as a
`
`“preferred embodiment,” not as the only embodiment of the invention. Thus,
`
`Patent Owner has failed to show a clear disavowal here. See also Epistar Corp. v.
`
`Int'l Trade Comm'n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (criticism of a particular
`
`embodiment without a clear disavowal does not create a disclaimer).
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`{39844855;2}
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`5
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
`
`B.
`
`The specification discloses an embodiment
`controller being connected to an edge switch
`
`that includes the
`
`Furthermore, the specification of the ’113 patent goes on to explain that
`
`there are indeed two embodiments of the invention. Only in the second is the
`
`controller connected directly to a tandem switch, avoiding “signal degradation”
`
`problems; the first encompasses any connection to the PSTN:
`
`In one embodiment, the system includes a processor (referred to
`herein as a tandem access controller) connected to the PSTN …. In
`another embodiment, a tandem access controller (TAC) subsystem is
`connected internally to the PSTN in a local service area.
`...
`Connecting directly to the PSTN tandem switch … eliminates the
`signal degradation problems previously described.
`
`Ex. 1001 at 3:28-40. Edge switches are, by definition, components that connect to
`
`devices outside the PSTN. Thus, in contrast to the second embodiment in which
`
`the controller is connected “internally” to the PSTN, the first embodiment in which
`
`the controller is merely “connected to the PSTN” plainly includes being connected
`
`to an edge switch. This is confirmed by the applicants in the prosecution history of
`
`U.S. Patent No. 7,764,777 (the “’777 patent”, to which the ’113 patent claims
`
`{39844855;2}
`
`6
`
`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
`
`priority). Applicants there characterize the phrase “Connection to the PSTN” as
`
`being an “edge device description[]”:1
`
`Ex. 2005 at 135.
`
`The specification therefore fails to disclaim edge switches from the scope of
`
`the switching facilities to which the controller of the invention may be connected.
`
`IV. THE PROSECUTION HISTORY DOES NOT CONTAIN A
`DISCLAIMER
`
`A.
`
`The patent applicants did not clearly disavow connection to edge
`switches, and, moreover, defined “switching facility” to include
`edge switches
`
`Patent Owner also argues that the prosecution history of the ’777 patent (to
`
`which the ’113 patent claims priority) disclaims the “application of call control
`
`features through an edge switch or an edge device.” Prelim. Resp. at 28-35. Patent
`
`Owner is incorrect.
`
`As with regard to the specification, allegedly disavowing statements “made
`
`during prosecution [must] be both clear and unmistakable.” Omega Eng'g, Inc. v.
`
`1 Per Patent Owner, "an edge device is a device connected to an edge
`
`switch." Prelim. Resp. at 10.
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`{39844855;2}
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`7
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003). Thus, the Federal Circuit
`
`has refused to find a disclaimer where the alleged disavowal is ambiguous.
`
`See
`
`Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003).
`
`First, Patent Owner fails to point to a clear statement by the applicants that
`
`their claimed invention excludes controllers that are connected to edge switches.
`
`Patent Owner characterizes the prosecution history as including such an express
`
`statement by the applicants, but Patent Owner is overstating the facts. See Prelim.
`
`Resp. at 29-30 (the text quoted by Patent Owner does not support its contention
`
`that applicants stated "the claimed controller was not" an edge device).
`
`Furthermore, in the same prosecution history, applicants provide a definition
`
`for the phrase at issue – switching facility: “Any point in the switching fabric of
`
`converging networks, also referred to in industry as a signal transfer point (STP),
`
`signal control point (SCP), session border controller (SBC), gateway, access
`
`tandem, class 4 switch, wire center, toll office, toll center, PSTN switching center,
`
`intercarrier connection point, trunk gateway, hybrid switch, etc.” Ex. 2005 at 82
`
`n.1 (emphases added). At least the phrases “Any point in the switching fabric” and
`
`“hybrid switch” include edge switches.
`
`Indeed, a hybrid switch is a combined
`
`class 4/class 5 switch; it is both an edge switch and a tandem switch. This is
`
`confirmed by the Petitioner's expert (Ex. 1002 at 20, ¶ 0041) and by Patent
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`{39844855;2}
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`8
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
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`Paper No. 9
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`Owner's own Exhibit 2002, which explains that "[i]n many instances, a Class 4
`
`office [i.e., a tandem switch] also serves as a Class 5 office [i.e., an edge switch,
`
`otherwise referred to as a central office]; in other words, a hybrid switch serving as
`
`both a Central Office and a tandem toll office, with separate functions provided
`
`through logical and physical partitioning within the switch." Ex. 2002 at 4. Thus,
`
`the Patent Owner's own "switching facility" definition expressly includes an
`
`example of an edge switch.
`
`Having failed to unambiguously disavow connections to edge switches, and
`
`having expressly given a broad definition to “switching facility” that includes as a
`
`non-limiting example a device that serves in part as an edge switch, applicants did
`
`not make a clear and unmistakable disavowal of edge switches as part of the broad
`
`phrase “switching facility.”
`
`B.
`
`The PTO is not required to accept prosecution history disclaimer
`
`Even if the Board disagrees with Petitioner and finds evidence of a
`
`disclaimer here, the Federal Circuit has squarely held that
`
`the Board is not
`
`obligated to accept
`
`it:
`
`"the PTO is under no obligation to accept a claim
`
`construction proffered as a prosecution history disclaimer, which generally only
`
`binds the patent owner." Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978
`
`(Fed. Cir. 2014).
`
`{39844855;2}
`
`9
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Paper No. 9
`
`Declining to adopt any disclaimer here would be appropriate because at
`
`minimum, the record created by applicants is too unclear to provide proper public
`
`notice. Furthermore, declining to accept a disclaimer here would not be unduly
`
`prejudicial to the Patent Owner because inter partes review (if instituted) provides
`
`the Patent Owner with the ability to amend their claims. If Patent Owner believes
`
`that the edge switch / tandem switch distinction it is trying to inject into the claims
`
`will preserve patent validity, Patent Owner will have the opportunity to amend
`
`their claims to include such an alleged distinction.
`
`V.
`
`CONCLUSION
`
`For at least these reasons, the Petitioner respectfully submits that the Patent
`
`Owner did not disclaim edge switches from the scope of the phrase “switching
`
`facilities.”
`
`Dated: October 31, 2016
`
`Respectfully submitted,
`
`AKERMAN LLP
`
`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
`
`{39844855;2}
`
`10
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Paper No. 9
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing Reply was served by
`
`electronic mail addressed to the Patent Owner's counsel of record in this IPR:
`
`(1) Brent N. Bumgardner (at brent@nelbum.com);
`
`(2) John Murphy (at murphy@nelbum.com); and
`
`(3) PAL-IPR@nelbum.com.
`
`Dated: October 31, 2016
`
`/s/ Mark D. Passler
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
`
`{39844855;2}
`
`11
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`
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`Case IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Paper No. 9
`
`CERTIFICATE OF PAGE COUNT
`
`The undersigned hereby certifies that, in compliance with instructions from
`
`the Board, the foregoing reply (excluding the table of contents, table of authorities,
`
`mandatory notices listed in §42.8(b), certificates of service and page count, and list
`
`of exhibits) contains only 10 pages.
`
`Dated: October 31, 2016
`
`/s/ Mark D. Passler
`
`Mark D. Passler
`Registration No. 40,764
`Counsel for Petitioner
`
`{39844855;2}
`
`12
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