Filed on behalf of YMax Corporation
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`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 SUPPLEMENTAL BRIEFING
`
`IN OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`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 SUPPLEMENTAL BRIEFING
`
`IN OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`I.
`
`II.
`
`THE AQUA PRODUCTS DECISION.............................................................1
`
`OVERVIEW OF PROPOSED SUBSTITUTE CLAIM 183 ..........................3
`
`III. O’NEAL IN VIEW OF BLAZE......................................................................6
`
`IV.
`
`LAMB............................................................................................................10
`
`i
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`TABLE OF AUTHORITIES
`
`CASES
`
`Aqua Prods., Inc. v. Matal,
`No. 2015-1177, slip op. (Fed. Cir. Oct. 4, 2017) (en banc) ........................1, 2
`
`STATUTES AND RULES
`
`37 C.F.R. § 42.11 .......................................................................................................1
`
`ii
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`LIST OF EXHIBITS
`
`YMax Ex.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
`
`1014
`1015
`1016
`1017
`
`1018
`1019
`
`1020
`1021
`
`Description
`U.S. Patent No. 8,457,113 to Wood et al. (the “‘113 patent”)
`Declaration of Tal Lavian, Ph.D.
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`International Publication No. WO 99/14924 to Shtivelman et al.
`(“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
`
`iii
`
`
`
`YMax Ex.
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Description
`Lucent Technologies and Ascend Communications announce voice
`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 Communi-
`cations Magazine, Vol. 23, Issue No. 12, Dec. 1995 (“Andrews”)
`
`iv
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`YMax Ex.
`1044
`
`1045
`
`1046
`1047
`1048
`
`Description
`Transcript of Deposition of Regis Jerome “Bud” Bates taken on
`May 4, 2017 (“Bates Tr.”)
`Declaration of Dr. Leonard J. Forys in Support of Opposition to Mo-
`tion 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 Au-
`gust 9, 2017
`
`v
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`Pursuant to the Board’s Order on October 19, 2017 (Paper 54), Petitioner
`
`submits this supplemental brief addressing the patentability of substitute claim 183
`
`in light of the Federal Circuit’s recent decision in Aqua Prods., Inc. v. Matal, No.
`
`2015-1177, slip op. (Fed. Cir. Oct. 4, 2017) (en banc).
`
`I.
`
`THE AQUA PRODUCTS DECISION
`The court in Aqua Products held that the ultimate burden of persuasion with
`
`respect to the patentability of substitute claims in a motion to amend rests with the
`
`petitioner – not the patent owner. Aqua Products, slip op. at 19. 1 Importantly,
`
`however, the court did not alter any of patent owners’ burdens of production under
`
`the various procedural rules promulgated by the Patent Office. Id. at 45-46 (ex-
`
`plaining that, under Rules 42.20 and 42.121, patent owners have the burden to
`
`show that amendments “do ‘not enlarge the scope of the claims of the patent or in-
`
`troduce new matter,’” and are “responsive to at least one ground of unpatentability
`
`at issue in the IPR.”); id. at 21 (“These requirements describe a threshold showing
`
`the Board must deem satisfied before the amended claims can be considered in—
`
`i.e., ‘entered into’—an IPR.”). Likewise, patent owners’ burden to disclose all
`
`known and material prior art pursuant to their duty of candor and good faith re-
`
`mains unchanged. Paper 23, 5-6; 37 C.F.R. § 42.11. Here, Patent Owner failed to
`
`1 Petitioner objects to the Aqua Products decision and hereby reserves its rights to
`
`challenge that decision, as well as any reliance thereon by the Board.
`
`1
`
`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`satisfy many of these (and other) threshold requirements. Mot. Opp., 1-8. Based
`
`on these procedural defects alone, Patent Owner’s Motion should be denied.
`
`While the Board’s Order prohibits the incorporation of arguments or evi-
`
`dence presented in other papers (Paper 54, 6), Petitioner notes that the Federal Cir-
`
`cuit made clear that the Board’s “final substantive decision [on the patentability of
`
`amended claims] must be based on the entirety of the record.” Aqua Products,
`
`slip op. at 60-62 (emphasis added). This includes all arguments and evidence be-
`
`fore the Board in the proceeding, including those bearing on the patentability of the
`
`original claims. See id. Accordingly, although Petitioner will not incorporate any
`
`arguments by reference, it does not waive and, in fact, believes that the Board must
`
`consider, the arguments raised in the Petition and Reply concerning the unpatenta-
`
`bility of the original claims (e.g., the arguments based on O’Neal). 2
`
`2 Petitioner also objects to and reserves the right to challenge the Board’s Order
`
`based on the Aqua Products decision. (Paper 54). Given the substantial differ-
`
`ences between the burden of showing patentability pre-Aqua Products and show-
`
`ing unpatentability thereunder, Petitioner objects to the Board limiting this Sup-
`
`plemental Brief to only 15 pages, while also precluding Petitioner from including
`
`claim charts, incorporating by reference anything from prior briefing, submitting
`
`expert testimony, or addressing limitations not in the original claims. (Id. at 6-7).
`
`2
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`II. OVERVIEW OF PROPOSED SUBSTITUTE CLAIM 183
`The Preamble – The amended preamble includes two3 substantive modifi-
`
`cations, namely: i) replacing the “switching facility” with “a particular tandem
`
`switch;” and replacing the “call processing system” with a “tandem access control-
`
`ler” (TAC). Ex. 2062, 1; Mot., 1. These two components - discussed as part of the
`
`“TAC feature” in the Opposition – are then recited throughout the body of the
`
`amended claims. This TAC feature was addressed in detail in Petitioner’s Opposi-
`
`tion and, therefore will not be revisited here.
`
`Much of the remainder of the preamble is directed to certain standard com-
`
`ponents of the PSTN architecture (e.g., PSTN telecommunications network, tele-
`
`phones, edge switches, etc.), which as Patent Owner acknowledges were common-
`
`place long before the time of the ‘113 patent. See Mot. Opp., 25; PO Resp., 4-8;
`
`Ex. 2022, ¶36-39; Ex. 2040, ¶33-38. Finally, the preamble originally recited that
`
`the claimed method is “performed by a web enabled processing system including
`
`one or more web servers…. serving as an intelligent interconnection between at
`
`least one packet network and a second network [PSTN]” and that the method is
`
`“for enabling voice communication of a call from a calling party to a called party
`
`across both the packet network and the second network [PSTN].” Accordingly, in
`
`order to satisfy the preamble of claim 183, the prior art must teach: (1) a conven-
`
`3 The amended preamble additionally equates the called party to a subscriber.
`
`3
`
`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`tional PSTN Architecture; (2) a TAC coupled to a PSTN tandem switch; (3) a
`
`web-enabled processing system/web servers coupled to the TAC; and (4) voice
`
`communications across a packet network and the PSTN.
`
`The “Receiving” Step – The first claim step has several sub features. First,
`
`the claim requires “receiving… a first call request and call data” at the TAC. Ex.
`
`2062, 1. As discussed by Patent Owner, this portion of the step is satisfied when
`
`the TAC receives “call signaling” (e.g., SS7 signaling) for an incoming call. Mot.
`
`7-8; Ex. 2040, ¶39, 60-61 (describing use of SS7 signaling as conventional). This
`
`first call can be “originated” from either the PSTN or packet network by using a
`
`“communication device” (e.g., phone, computer, etc.). Second, this step requires
`
`the TAC to process a second call request across the packet network4 to complete
`
`the call. Additionally, this step was also amended to require that the TAC is “cou-
`
`pled to the particular PSTN tandem switch of the PSTN telecommunications net-
`
`work via the second network” and that “communications… between the [TAC] and
`
`4 Because the subsequent “establishing” step mandates communication across both
`
`networks, that later requirement appears to contradict the first portion of the “re-
`
`ceiving” step because it implicitly restricts the first incoming call to occurring via
`
`the second [i.e., PSTN] network (otherwise there would be no communication
`
`across the PSTN network). Mot. Opp., 8-9.
`
`4
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`the particular PSTN tandem switch, occur without passing through any edge
`
`switches.” This “TAC feature” was one of two new features allegedly added to the
`
`claim and relied upon by Patent Owner to argue the patentability of substitute
`
`claim 183, 5 and, as noted above, was addressed in detail in Petitioner’s Opposition.
`
`The “Establishing” Step – The second step requires “establishing the voice
`
`communication… after the second call is completed and answered, across both the
`
`packet network and the second network.” Besides replacing the “called party”
`
`with a “subscriber” and inserting the TAC, the only other amendment to this step
`
`merely added that the voice communications be established after the second call is
`
`completed “and answered.” As discussed in the Opposition, the insertion of “and
`
`answered” into the claim does not have any meaningful effect on the scope of the
`
`claim because it is axiomatic that voice communications cannot be established be-
`
`tween the two parties before the second call is answered (and completed). Mot.
`
`Opp., 21-23; Pet. Reply, 21-22; Ex. 1045, ¶113. In any event, as discussed below,
`
`this feature is expressly disclosed in the prior art.
`
`5 The second “new” feature relied upon by Patent Owner (i.e., answering the first
`
`call after the second call is received and answered) is not actually found anywhere
`
`in the language of substitute claim 183. Mot. Opp., 21-22, 4-5; c.f. Ex. 2062, 1
`
`with IPR2016-1258, Ex. 2062, 1.
`
`5
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`
`III. O’NEAL IN VIEW OF BLAZE
`
`As set forth in the Petition, O’Neal discloses all of the original elements and
`
`features recited in issued claim 1 upon which substitute claim 183 is based. In-
`
`deed, in the event the Board is considering Patent Owner’s Motion to Amend, it
`
`has necessarily already determined that O’Neal anticipates and/or renders obvious
`
`claim 1. For ease of reference, the following demonstrates where each such claim
`
`element and feature is found in O’Neal:
`
`Preamble – O’Neal’s UMS serves as an intelligent interconnection between
`
`a packet network (the Internet 102) and the claimed second [i.e., PSTN telecom-
`
`munications] network (PSTN 129). Ex. 1003, 5:23-26, 7:6-14, 9:10-19, Fig. 1.
`
`O’Neal’s UMS processes incoming calls to subscribers of the UMS’s service, and
`
`“rerout[es]” the calls “in accordance with a subscriber's communication option set-
`
`ting,” such as by “forwarding” the call to the subscriber via an “alternate number.”
`
`See, e.g., Ex. 1003, 9:55-58, 11:40-51, 15:14-43, FIG. 1. These calls are received,
`
`processed, and initiated, using the PSTN. Id. at 9:10-19, FIG 1. As shown in Fig-
`
`ure 1, O’Neal’s UMS links the packet network and the second network (PSTN) us-
`
`ing connections made with a switch of the PSTN. Id. Accordingly, O’Neal teach-
`
`es the standard PSTN Architecture as recited in the Preamble.
`
`O’Neal also teaches a “call processing system” in communication with the
`
`PSTN. Id. at 8:41-66 (“telephony server 126 … handles the exchange of infor-
`
`6
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`mation with the user via the telephony-centric network [and] facilitate[s] interac-
`
`tion between unified messaging system 101 and telephony-centric network 129”)
`
`9:10-30 (“Telephone link 128 represents the telephone communications channels
`
`for transmitting and receiving telephone signals between unified messaging system
`
`101 and telephony-centric network 129,” which may be a “Public Service Tele-
`
`phone Network (PSTN)”), FIG. 1 (Public Telephone Network 129).6
`
`O’Neal further teaches that its system enables voice communication across
`
`both the packet network and the PSTN, for example by using a call-forwarding op-
`
`tion. Ex. 1003, 19:1-8 (“call forwarding option” can be used with “any comput-
`
`er… equipped with… appropriate software to enable digital/Internet telephony.”)
`
`Ex. 1003, 19:1-8; Ex. 1002, ¶135-39. Additionally, O’Neal teaches that its system
`
`is web-enabled and uses web servers that are a part of or coupled to the UMS. Ex.
`
`1003, 8:8-32 (“A web server 122 is employed to facilitate interaction between uni-
`
`fied messaging system 101 and data-centric network 102”), 16:35-64 (disclosing
`
`“access[ing] the [UMS] web site, using a [UMS] web address), FIG. 1 (illustrating
`
`6 Commensurate with the newly-added TAC feature, which will not be addressed
`
`herein, a POSITA would have found it obvious to directly connect O’Neal’s UMS
`
`to a PSTN tandem switch, thereby making it a “tandem access controller coupled
`
`to a PSTN tandem switch.”
`
`7
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`coupling to the web server and packet based network 102), 7:45-8:22.
`
`The “Receiving” Step – O’Neal’s UMS is able to receive call signaling
`
`from a switch on the PSTN associated with an incoming call to a subscriber of the
`
`UMS service. For example, O’Neal teaches the UMS may use a Dialogic board
`
`model “D 240 SC-T1,” which receives ISDN signaling using T-1 ISDN PRI span
`
`with 24 channels of voice processing. Ex. 1003, 8:41-62, 9:10-30 (“telephony-
`
`centric network 129 may represent a wired telephone network popularly known as
`
`Public Service Telephone Network (PSTN)”).
`
`O’Neal’s UMS also receives a telephone number, which is “call data” ac-
`
`cording to Patent Owner. Ex. 1003, 15:23-25 (“dialed digits reaches telephony
`
`server 126 via telephone link 128 [which] then obtains the DNIS (direct number
`
`information service) by digitizing the dialed digits”); PO Reply, 11; ‘113 patent,
`
`FIG. 5. O’Neal also teaches the use of a “communication device” (e.g. a tele-
`
`phone). Ex. 1003, 15:17-22 (“The first step 502 involves accessing the unified
`
`message system through a telephone using the subscriber’s assigned telephone
`
`number”).
`
`O’Neal further discloses processing a second call request across the packet
`
`network to complete the end-to-end call. Specifically, O’Neal’s UMS includes a
`
`“call forwarding” option. If this option is enabled, calls to the subscriber are for-
`
`warded to a particular number, such as “1234567890.” Ex. 1003, Fig. 3. When
`
`8
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`this occurs, “the telephony server receives the forwarding number from the data-
`
`base server and initiates an outgoing call (step 706) to the forwarding number on
`
`another port (e.g., one of the outgoing lines as seen in FIG. 2).” Ex. 1003, 17:11-
`
`49, 11:40-51, Figs. 1, 2-4, and 7. As discussed above, this “call forwarding” op-
`
`tion can also be used to process a call across the packet network (e.g., a VOIP
`
`call). Ex. 1003, 19:1-8 (“call forwarding option” can be used with “any comput-
`
`er… equipped with… appropriate software to enable digital/Internet telephony”);
`
`Ex. 1002, ¶135-39.
`
`The “Establishing” Step – O’Neal discloses that the UMS/telephony server
`
`receives “dialed digits” associated with a first incoming call (i.e., “receiving … a
`
`first call request … associated with a first call”). Ex. 1003, 15:6-35. Based on
`
`these dialed digits, the UMS/telephony server “initiates an outgoing call” across an
`
`IP network (i.e., “processing a second call request associated with a second call
`
`across the packet network”). Ex. 1003, 17:11-49; 9:10-19; 18:18-22; 19:1-8. If
`
`this second call is successful (i.e., answered by the called party), the
`
`UMS/telephony server establishes the voice connection by “complet[ing] the end-
`
`to-end connection” (i.e., establishes voice communication between the calling par-
`
`ty and the subscriber). Ex. 1003, 17:11-49 (“[i]f the outgoing call [i.e., the second
`
`call] is successfully connected to the telephony server (step 708) [i.e., has been
`
`completed and answered], the telephony server then connects the port of the in-
`
`9
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`coming call [i.e., the first call] with the port of the outgoing call (step 710) to com-
`
`plete the end-to-end connection (step 712)”). Thus, O’Neal teaches establishing
`
`voice communications between the two parties after the second call is completed
`
`and answered.
`
`To the extent that O’Neal does not explicitly teach the claimed TAC feature,
`
`it would have been obvious to a POSITA to connect O’Neal’s PBX-based UMS
`
`system to a PSTN tandem switch as expressly taught by the PBX Art, including
`
`Blaze. This aspect, which is discussed in detail in the Opposition, will not be fur-
`
`ther revisited herein. Accordingly, O’Neal in view of Blaze renders claim 183 un-
`
`patentable.
`
`IV. LAMB
`
`Petitioner’s Opposition demonstrates in detail why the newly added TAC
`
`feature and the amended “call establishing” limitation of claim 183 would have
`
`been obvious based on Lamb. As shown below, Lamb also teaches each of the
`
`claim elements and features that were originally found in claim 1:
`
`The Preamble – Lamb teaches a telecommunication system that bridges
`
`communications between connectionless (e.g., Internet) and connection-based
`
`networks (e.g., PSTN), enabling seamless communications across both networks
`
`for voice calls. Ex. 1045, ¶60-64; Ex. 1033, 21:58-67 (“connection-less network is
`
`a computer network and is coupled to the first interface and the connection-based
`
`10
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`network is a telephone network and is coupled to the second interface and the end-
`
`user equipment is a telephony device”), 10:20-46, 27:40-46 (“The system… in-
`
`cludes one or more public telephone network interfaces 210 which allow the public
`
`phone switch 202-2, under direction and control of the telecommunications net-
`
`work server 202-1 and the telecommunications hosting server 203…. to form call
`
`connections… on the PSTN 101”), 31:58-62, 1:36-3:65, FIGS. 1, 3 (illustrating
`
`Lamb’s TNS/THS as the interconnect point between the packet network and the
`
`PSTN). Accordingly, Lamb teaches an “intelligent interconnection between at
`
`least one packet network and a second network” as stated in the Preamble. Also,
`
`by teaching that this interconnection involves the PSTN, Lamb teaches the stand-
`
`ard PSTN Architecture as recited in the Preamble.
`
`Lamb’s system also enables voice communication across both the packet
`
`network and the PSTN. Ex. 1045, ¶114, 56-59; Ex. 1033, 48:10-26 (“the invention
`
`place[s] a call between a PSTN based telephony device associated with the user,
`
`and another phone number… correspond[ing] to a VOIP connection… the sys-
`
`tem… first creates a first call connection… the user telephony device such as 106,
`
`and then creates a VOIP connection to the computer system”).
`
`Moreover, Lamb’s system is web-enabled and uses web servers that are
`
`coupled to Lamb’s TNS/THS (i.e., TAC). Ex. 1033, 15:64-16:42 (“the call appli-
`
`cation message is provided when a user of a client computer initiates (e.g. clicks
`
`11
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`on) a hyperlink in a web browser on the client computer having a URL which
`
`causes the browser to “fetch” a web page provide by a web server. The web server
`
`may be provided within the telecommunications hosting server, or may be a
`
`separate web server) (emphasis added), 29:8-25 (“user interface 250 may be, for
`
`example, a web browser interface such as one provided by the Netscape Navigator
`
`web browser manufactured by Netscape Corporation or Internet Explorer manufac-
`
`tured by Microsoft Corporation”), 29:46-52 (“user agent interface 250 and user
`
`agents 301 can operate in a client/server model using, for example, web-based data
`
`exchange and messaging protocols such as the hypertext transfer protocol (HTTP),
`
`Java Beans, CORBA, SMTP, Multicasting, SSL or other Internet secure or non-
`
`secure messaging and data exchange protocols”), 41:41-67; Ex. 1045, ¶82 (citing
`
`to Lamb’s “Internet-based user agent”).
`
`The “Receiving” Step – Lamb teaches that its system uses call signaling,
`
`such as SS7 signaling. Ex. 1033, 12:50-55 (“A call signaling message is generally
`
`a specific signaling protocol message such as a message provided by the PINT or
`
`SS7 protocols that is transferred between the telecommunications hosting server
`
`and the telecommunications network server”). Lamb also teaches that the THS re-
`
`ceives signaling from the PSTN through the public phone switch. Id. at 16:53-64
`
`(“a method comprising the steps of receiving, in a telecommunications hosting
`
`server coupled to a connectionless network, at least one first call signaling message
`
`12
`
`
`
`IPR2016-01260
`U.S. Patent No. 8,457,113
`from the connection-based network”); Ex. 1048, 16:8-17:9 (PO’s expert acknowl-
`
`edging that the PSTN is a connection-based network), Mot. Obsv., 2; Ex. 1045,
`
`¶60-62, and 83 (discussing call signaling in Lamb).
`
`Lamb’s system also receives a telephone number, which is “call data” ac-
`
`cording to Patent Owner. Ex. 1033, 46:50-65 (“The call application message 240
`
`may specify the identity of the source and destination public switched telephone
`
`network telephony devices by specifying … telephone numbers of the devices, or
`
`by another indicator that the telecommunications hosting server 203 can use to de-
`
`termine the identities of call connections and hence the telephony devices associat-
`
`ed with the source and destination as specified in the call application message
`
`240”); PO Reply, 11; ‘113 patent, FIG. 5. Lamb also teaches the use of a commu-
`
`nication device (e.g. a telephone). Ex. 1033, 21:49-56 (“connection-based network
`
`is a telephone network and is coupled to the second interface and the end-user
`
`equipment is a telephony device”).
`
`Lamb also discloses processing a second call request across the packet net-
`
`work to complete the call. Ex. 1033, 48:10-26 (“the invention place[s] a call be-
`
`tween a PSTN based telephony device associated with the user, and another phone
`
`number… correspond[ing] to a VOIP connection… the system… first creates a
`
`first call connection… the user telephony device such as 106, and then creates a
`
`VOIP connection to the computer system”); Ex. 1045, ¶114, 56-59.
`
`13
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`Lamb also teaches that this second call may be initiated via call signaling.
`
`Lamb, 15:27-36 (“call signaling message specifies a connection to be placed on the
`
`connection-based network between a single telephony device coupled to the con-
`
`nection based network and wherein the call signaling message, also specifies a
`
`connection to be placed on the connection-less network between a single computer
`
`telephony device coupled to the connection-less network via a voice-over-
`
`computer-network protocol”).
`
`The “Establishing” Step – Lamb teaches establishing voice communica-
`
`tions between first incoming PSTN-based calls and second outgoing packet-based
`
`calls once each call is “in use” (i.e., answered). Ex. 1033, 48:20-26 (“When each
`
`connection is in use… the telecommunications network server 202-1 can provide a
`
`link to the VOIP call connection and can instruct the public phone switch 202-2 to
`
`bridge the two call connections… the original calling user can perform telecom-
`
`munications using a PSTN-based call… while the called user uses a VOIP connec-
`
`tion”). Ex. 1045, ¶115-16; see also Ex. 1033, 49:53-50:2 (describing incoming
`
`PSTN or VoIP call), 52:61-53:9 (describing outgoing packet network VoIP call,
`
`52:9-14 (describing bridging both calls), FIG. 6; Ex. 1045, ¶117-18. Thus, Lamb
`
`teaches establishing voice communications between the two parties after the sec-
`
`ond call is completed and answered.
`
`As discussed in detail in Petitioner’s Opposition, the TAC feature is also
`
`14
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`taught by Lamb or, at a minimum, would have been obvious to a POSITA based on
`
`the teachings of Lamb and the knowledge of a POSITA at the time of the ‘113 pa-
`
`tent. This aspect, which is discussed in detail in the Opposition, will not be further
`
`revisited herein. Accordingly, Lamb renders claim 183 unpatentable.
`
`Date: October 31, 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
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`15
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`
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`IPR2016-01260
`U.S. Patent No. 8,457,113
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S SUP-
`
`PLEMENTAL BRIEFING IN OPPOSITION TO PATENT OWNER’S MOTION
`
`TO AMEND was served electronically via e-mail on October 31, 2017, in its en-
`
`tirety on the following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`Thomas C. Cecil
`tom@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: October 31, 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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