Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 12
` Entered: December 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01260
`Patent 8,457,113 B2
`_____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 12
` Entered: December 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01260
`Patent 8,457,113 B2
`_____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01260
`Patent 8,457,113 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`YMax Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting that we institute inter partes review of claims 1, 2, 8, 11, and 15–
`19 (“challenged claims”) of U.S. Patent No. 8,457,113 B2 (Ex. 1001, “the
`’113 Patent”). Petitioner also proffers a Declaration of Dr. Tal Lavian, who
`has been retained as an expert witness for the instant proceeding.
`Ex. 1002 ¶¶ 2, 3. Petitioner additionally filed a Reply. Paper 9 (“Reply”).
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 7, “Prelim. Resp.”). Patent Owner also proffers a Declaration of
`Mr. Regis J. Bates, who has been retained as an expert witness for the instant
`proceeding. Ex. 2001 ¶¶ 1, 2.
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons given below, on behalf of the
`Director (see 37 C.F.R. § 42.4(a)), we institute an inter partes review of the
`challenged claims of the ’113 Patent.
`
`Related Proceedings
`B.
`The parties state that the ’113 Patent is the subject of pending lawsuits
`in the Middle District of Florida, and these lawsuits include assertions
`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
`Pet. 1–2; Paper 4 (Patent Owner’s Mandatory Notices), 2–3. Additional
`petitions have been filed challenging claims of the ’113 Patent (i.e.,
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`IPR2016-01254, IPR2016-01257, and IPR2016-01261). Patent Owner’s
`Mandatory Notices, 3. Further petitions have been filed challenging claims
`of related patents. Pet. 2.
`
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1, 2, 8, 15, and 17–19
`
`§ 102(b)
`
`International Published Application
`No. WO 99/14924 (“Shtivelman,”
`Ex. 1005)
`
`1, 2, 8, 11, and 17–19
`
`§ 102(e) U.S. Patent No. 6,463,145 B1
`(“O’Neal,” Ex. 1003)
`
`1, 11, and 15–17
`
`1, 2, 8, 15, and 17–19
`
`§ 103
`
`§ 103
`
`O’Neal
`
`Shtivelman and O’Neal
`
`
`
`The ’113 Patent
`D.
`The ʼ113 Patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1001, 1:23–26. Figure 1 of the ’113
`Patent is reproduced below.
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`Figure 1illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`Figure 1 illustrates tandem access controller 10 connected to
`conventional Public Switched Telephone Network (PSTN) tandem switch
`16. Id. at 4:43, 44. According to the ’113 Patent, “[d]etails of the operation
`of the existing phone network,” including directing of phone calls by
`“existing” PSTN tandem switch 16 to central offices 17, 18 are further
`described in a publication incorporated by reference, as well as “numerous
`books describing the PSTN.” Id. at 4:43–54.
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional 3rd-party features are applied to the call.” Id. at 4:43–47.
`More specifically, in the network illustrated in Figure 1, a call from calling
`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
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`which places a second call, subject to 3rd party control information to
`subscriber 12. Id. at 4:55–58. The second call is placed “to the subscriber’s
`‘private’ phone number,” without terminating the first call. Id. at 4:58–60.
`When subscriber 12 answers the call, tandem access controller 10 connects
`the first call to the second call so as to connect calling party 14 to subscriber
`12. Id. at 4:62–65.
`Figure 1 also shows web server 23 within world wide web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies 3rd-party call control features via web server 23 and these features
`are then relayed via world wide web 22 to tandem access controller 10. Id.
`at 5:17–25.
`
`Illustrative Claim
`E.
`Claim 1 is the independent claim challenged in this proceeding.
`Claims 2, 8, 11, and 15–19 depend directly from claim 1. Independent
`claim 1 is illustrative of the claimed subject matter and is reproduced below:
`1.
`A method performed by a web enabled processing system
`including one or more web servers coupled to a call processing
`system serving as an intelligent interconnection between at least
`one packet network and a second network coupled to a switching
`facility
`of
`a
`telecommunications
`network,
`the
`telecommunications network comprising edge switches for
`routing calls from and to subscribers within a local geographic
`area and switching facilities for routing calls to other edge
`switches or other switching facilities local or in other geographic
`areas, the method for enabling voice communication from a
`calling party to a called party across both the packet network and
`the second network, the method comprising the steps of:
`receiving call data which is associated with a call originated by
`the calling party via either the packet network or the
`second network, at the call processing system, the calling
`party using a communications device to originate the call
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`for the purpose of initiating voice communication, the call
`processing system coupled to at least one switching
`facility of the telecommunications network via the second
`network, the call processing system processing the call
`across both the packet network and the second network to
`complete the call to the called party; and
`establishing the voice communication between the calling party
`and the called party after the call is completed, across both
`the packet network and the second network.
`Ex. 1001, 12:30–56.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144‒45 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`proceeding). Consistent with the rule of broadest reasonable interpretation,
`claim terms are generally given their ordinary and customary meaning, as
`would be understood by a person of ordinary skill in the art in the context of
`the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`The Parties’ Contentions
`B.
`Petitioner provides contentions regarding the broadest reasonable
`interpretation of “web enabled,” “coupled to,” “switching facility,”
`“interconnection,” “intelligent,” and “tandem access controller.” Pet. 18–29.
`Patent Owner contends “a person of skill in the art (a ‘POSA’) would clearly
`understand that (i) Applicants disclaimed application of call control features
`through an edge switch or an edge device; and (ii) the Challenged Claims
`‘controller’/‘call processing system’ is in communication with or coupled to
`“switching facility,’ and that such ‘switching facility’ cannot be edge switch
`or edge device.” Prelim. Resp. 2. Patent Owner provides contentions
`regarding the broadest reasonable interpretation of “switching facility” and
`“coupled to.” Prelim. Resp. 12–43. In its Reply, Petitioner provides
`responsive contentions regarding disclaimer. See generally Reply. We
`address the parties’ contentions below.
`
`“web enabled”
`C.
`Claim 1 recites “web enabled.” Petitioner contends that “[t]he
`broadest reasonable interpretation of the phrase ‘web enabled’ is ‘capable of
`receiving information from, or sending information over, the Internet’s
`world wide web.’” Pet. 18–19 (citing Ex. 1001, 2:67–3:3, 4:1–3, 5:16–20,
`5:22–24, 6:41–46, 8:8–12; Ex. 1002 ¶ 55). At this juncture, Patent Owner
`does not dispute Petitioner’s contentions. See generally Prelim. Resp.
`The ’113 Patent describes as background “web-based companies
`managing 3rd-party call control, via the toll-switch network, which allows
`users to enter call control information through a web portal.” Ex. 1001,
`1:34–37 (emphasis added). As part of the description, the ’113 Patent
`illustrates “WEB” 22, which is accessed via “User Interface” 23. Id. at Fig.
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`1; see also id. at 5:38–45 (“FIG. 1 uses a public internet portal connected via
`a data link to the TAC 10 or other interface system” which “a user logs
`onto . . . allowing the user to make additions or changes to features . . . A
`user-friendly web page leads the subscriber through the various procedures
`and available features.”).
`Accordingly, on this record, we determine that the broadest
`reasonable interpretation, in light of the Specification, of the term “web
`enabled” encompasses the examples set forth in the ’113 Patent
`Specification including (1) systems that allow users to enter information
`through “a web portal” (id. at 1:36–37, 41) and (2) “TAC 10 or other
`interface system” (id. at 5:38–39) that allows a user to add or change
`features by accessing a “public internet portal” (id. at 5:38–44) and/or “[a]
`user-friendly web page” (id. at 5:44). We determine that no other express
`construction is necessary to resolve a controversy in this proceeding.
`
`“coupled to,” “intelligent,” and “interconnection”
`D.
`Claim 1 recites “a call processing system serving as an intelligent
`interconnection between at least one packet network and a second network
`coupled to a switching facility of a telecommunications network, the
`telecommunications network comprising edge switches for routing calls
`from and to subscribers within a local geographic area and switching
`facilities for routing calls to other edge switches or other switching facilities
`local or in other geographic areas” and “the call processing system coupled
`to at least one switching facility of the telecommunications network”
`(emphasis added). Patent Owner does not provide contentions regarding the
`broadest reasonable interpretation of the terms “intelligent” and
`“interconnection” and, on this record, we determine that no express
`
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`construction of these terms is necessary to resolve a controversy in this
`proceeding. We discuss the term “coupled to” below.
`Petitioner contends “[t]he broadest reasonable interpretation of the
`phrase ‘coupled to’ is ‘connected either directly or indirectly.’” Pet. 19.
`Petitioner, more specifically, contends that the ’113 Patent Specification
`describes two embodiments, one in which the call processing system “is
`simply ‘connected to the PSTN’” and the other in which the call processing
`system is “‘connected directly to the PSTN switch.’” Id. (citing Ex. 1001,
`3:28–31, 3:33–40). Petitioner also points to dependent claim 124, which
`recites “wherein the one or more web servers coupled to the call processing
`system are coupled through a database.” Id. at 20. Petitioner further points
`to the prosecution history and, in particular, an amendment adding
`“directly.” Id. (citing Ex. 1006, 108).
`Although Patent Owner does not dispute that the plain and ordinary
`meaning of the term “coupled to” does not require a direct connection,
`Patent Owner contends “a proper BRI construction of ‘coupled to’ must
`reflect that the ‘call processing system’ cannot be ‘coupled to’ a ‘switching
`facility’ / ‘tandem switch’ through an ‘edge switch.’” Prelim. Resp. 42.
`Patent Owner’s dispute regarding the broadest reasonable interpretation of
`“coupled to” pertains entirely to Patent Owner’s contentions regarding
`general disclaimer. More specifically, Patent Owner asserts that Petitioner’s
`“construction [ ] would allow a controller to be connected to a ‘switching
`facility’ through an edge switch” and “this configuration was disclaimed by
`Applicants.” Id. at 41–42. Patent Owner supports its assertions by pointing
`to “Section V.” Id. at 42.
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`In “Section V,” Patent Owner provides contentions regarding a
`“GENERAL DISCLAIMER.” Id. at 22–35. We start with the plain
`language of the claims. Claim 1 is representative and recites “the call
`processing system coupled to at least one switching facility of the
`telecommunications network” (emphasis added). Claim 1 does not recite
`either “tandem access controller” or “tandem switch,” and does not recite
`that “coupled to” is limited to a direct connection. We are not persuaded
`that the plain language of the claims sets forth Patent Owner’s disclaimer.
`We now turn to Patent Owner’s contentions regarding disavowing
`statements in the ’113 Patent Specification. Prelim. Resp. 22–27. Patent
`Owner provides “a general description of the public telephone network” that
`includes a hierarchy of interconnected “edge” (class 5) and “tandem” (class
`4) equipment. Id. at 3–10. Patent Owner’s contentions regarding
`disparaging statements in the Specification are based on this hierarchy,
`“Applicants unequivocally disclaimed controllers that applied call control
`features through an edge switch or controllers that were themselves an edge
`device” (id. at 23 (emphasis added)) and “[i]n contrast . . . the ’113 Patent
`emphasizes the importance of connecting the TAC (a Tandem Access
`Controller) to a tandem switch” (id. at 25 (emphasis in the original)).
`In reliance on the testimony of Mr. Bates,1 Patent Owner asserts that
`the hierarchy of the PSTN included a “class 4 level,” which “refers to both a
`
`
`1 Patent Owner submits Mr. Bates’ Declaration (Ex. 2001) in support of its
`claim construction and disclaimer positions. See 37 C.F.R. § 42.108(c)
`(“The Board’s decision will take into account a patent owner preliminary
`response where such a response is filed, including any testimonial evidence,
`but a genuine issue of material fact created by such testimonial evidence will
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`‘toll center’ and a ‘tandem switch.’” Id. at 4–5 (citing Ex. 2001 ¶ 37).
`Patent Owner further contends that “tandem switches serve to interconnect
`Class 5 offices that contain edge switches.” Id. at 6 (citing Ex. 2001 ¶ 41).
`According to Petitioner, the PSTN hierarchy included “[c]lass 4 and
`class 5 switches . . . combined as a ‘hybrid” switch.” Pet. 12–13 (citing Ex.
`1002 ¶¶ 39–40). Consistent with Petitioner’s contentions, a dictionary relied
`upon by Patent Owner (Prelim. Resp. 5 (Ex. 2003, 474)) indicates “[i]n a
`contemporary PSTN, a tandem switch commonly is a hybrid Class 4/5,
`functioning as both a tandem and a CO (Class 5).” Ex. 2003, 474–75.
`Regarding disavowing statements in the ’113 Patent Specification,
`Patent Owner also contends that “[t]he specification is replete with
`commentary emphasizing the importance of connecting the controller to a
`tandem switch.” Prelim. Resp. 25–26 (citing Ex. 1001, 2:1–3, 3:37–40,
`3:19–27, 3:65–4:3). Patent Owner, however, points to only one sentence
`that mentions a direct connection. Id.
`Patent Owner further contends “[t]he controller described in the ’113
`Patent is always shown connected to a tandem switch, not an edge switch.”
`Prelim. Resp. 26–27 (citing Ex. 1101, Figs. 1, 2, 7, 8; Ex. 2001 ¶ 56).
`Contrary to Patent Owner’s contention, each of Figures 1 and 2 shows that
`tandem access controller 10 is connected to web 22, which connects to
`personal computer 26 and phone 21, respectively, of subscriber 12. Ex.
`1001, Figs. 1, 2. Figures 7 and 8 illustrate systems that allow “cell phones
`28” and “fax and modem calls” to “obtain the same provisioning options” as
`shown in Figures 1 and 2. Id. at 6:21–29. Furthermore, in addition to the
`
`
`be viewed in the light most favorable to the petitioner solely for the purposes
`of deciding whether to institute an inter partes review.”).
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`provisioning options presented to the user by web 22 (id. at 5:38–42), the
`’113 Patent Specification describes a subscriber making “an outbound call
`via the web” (id. at 6:21–23), and provides a flow chart showing the call
`flow “via web.” Id. at Fig. 6. Figure 2 illustrates “a system similar to FIG.
`1” but “also showing how the subscriber may . . . make phone calls using
`Voice Over IP.” Id. at 4:4–8. Accordingly, on this record, and for the
`purposes of this Decision, we determine the statements in the ’113 Patent
`Specification do not give rise to a disclaimer.
`Patent Owner also provides contentions regarding disavowing
`statements in the prosecution history. Prelim. Resp. 27–33. However, the
`portion of the prosecution history cited by Patent Owner for support (id. at
`33 (citing Ex. 2005, 66)) is ambiguous, at best. The Amendment adds
`“coupled to a switching facility for routing calls to edge switches or other
`switching facilities in local or other geographic areas,” and is silent as to
`whether “coupled to” requires a direct connection between elements. Ex.
`2005, 66. In contrast, as Petitioner correctly notes, Applicants specifically
`added the term “directly” so as to distinguish other claims, i.e., “a controller
`connected directly to a tandem switch.” Ex. 1006, 108.
`The intrinsic record is consistent with Petitioner’s contentions. For
`example, the ’113 Patent Specification describes two embodiments, one in
`which the call processing system “is simply ‘connected to the PSTN’” and
`the other in which the call processing system is “‘[c]onnected directly to the
`PSTN switch.’” Ex. 1001, 3:28–31, 3:33–40. As Petitioner correctly points
`out (Pet. 20), dependent claim 124 recites “wherein the one or more web
`servers coupled to the call processing system are coupled through a
`database.”
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`For these reasons and the reasons given below with respect to other
`statements in the prosecution history, we are not persuaded that the evidence
`of record supports Patent Owner’s disclaimer contentions. Accordingly, on
`this record and for the purposes of determining whether to institute an inter
`partes review, after considering all the arguments and evidence, we
`determine that the broadest reasonable interpretation of the term “coupled
`to” includes both a direct and an indirect connection.
`
`“switching facility”
`E.
`Petitioner contends “[t]he broadest reasonable interpretation of
`‘switching facility’ is ‘any switch in the communication network’ (and
`‘switching facilities’ is simply the plural).” Pet. 21. Patent Owner disagrees
`with Petitioner’s contention that a “switching facility” includes any switch in
`any communications network, including an edge switch. Prelim. Resp. 35.
`Patent Owner also contends “a ‘switching facility’ (1) is a switch for routing
`calls to edge switches or other ‘switching facilities’ local or in other
`geographic areas; and (2) is not an edge switch or edge device.” Id.
`We begin with the plain language of the claims. Claim 1 is
`representative. The preamble of that claim recites “the telecommunications
`network comprising edge switches for routing calls from and to subscribers
`within a local geographic area and switching facilities for routing calls to
`other edge switches, or other switching facilities local or in other geographic
`areas.” On this record, the parties do not present, nor can we discern, a
`reason why the preamble should not be given patentable weight. In fact, the
`parties agree that the preamble is limiting. See, e.g., Pet. 20–21; Prelim.
`Resp. 36. For purposes of this decision, we proceed on the assumption that
`it is.
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`Patent Owner contends that “[t]he preamble states” that “‘switching
`facilities’ are ‘for routing calls to other edge switches or other switching
`facilities local or in other geographic areas.” Prelim. Resp. 36 (emphasis in
`original). Patent Owner emphasizes only a subset of the recitation.
`Contrary to Patent Owner’s contention, the preamble recites that “switching
`facilities” are for routing calls “to other edge switches” or “other switching
`facilities local” (emphasis added).
`We next turn to the Specification of the ’113 Patent to discern the
`meaning of “switching facility.” As pointed out by both parties, the term
`“switching facility” is not found anywhere in the Specification of the ’113
`patent. Pet. 21; Prelim. Resp. 36. The term was added during prosecution.
`Pet. 23; Prelim. Resp. 36. Accordingly, there is not much, if anything
`intrinsically in the Specification of the ’113 patent that explicitly defines or
`informs a person of ordinary skill in the art at the time of the invention the
`meaning of “switching facility.”
`Petitioner argues, with supporting evidence, that a person of ordinary
`skill in the art at the time of the invention would have understood all
`switches in a telecommunications network, like the PSTN, are a “switching
`facility,” which would include edge switches. Pet. 21–22; Ex. 1008, 7, 391;
`Ex. 1009, 757 (defining “switching centers” to refer to all five classes of
`switches in the PSTN). Petitioner argues that although the Specification of
`the ’113 Patent shows a Tandem Access Controller connected to a tandem
`switch (class 4) and not to the CO (central office, the location of a class 5
`switch), such figures and description are representative of a preferred
`embodiment, and that nowhere in the Specification did the inventors provide
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`a definition of “switching facility” that is narrower than the ordinary
`meaning. Pet. 22.2
`Patent Owner counters that the prosecution history makes clear that
`switching facility cannot include an edge switch. Prelim. Resp. 36–37. The
`remarks made during prosecution, however, are equivocal, and do not
`persuade us of a disavowel or disclaimer of the scope of the term switching
`facility to exclude an edge switch. For example, the portion of the
`prosecution history that Patent Owner cites includes a footnote for the
`terminology of a switching facility as:
`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, 82.
`The above description does not explain that a switching facility does
`not include an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad.
`Patent Owner contends “Petitioner has taken a footnote to a term not
`used in the independent claims, found in a parenthetical, as the sole guidance
`in determining what the term ‘switching facility’ means.” Prelim. Resp. 41.
`Contrary to Patent Owner’s contention, the footnote follows the term
`“tandem switching facilities,” and the disputed term is “switching facilities.”
`
`
`2 Patent Owner does not dispute reliance on dictionary definitions, and relies
`on dictionaries as well (see, e,g., Prelim. Resp. 5–6), including a later
`version of one of the dictionaries above, i.e., Newton’s Telecom Dictionary
`(Ex. 2006).
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`Additionally, the Reasons for Allowance following the various amendments
`and arguments that Patent Owner points to does not support Patent Owner’s
`disclaimer. In particular, the Examiner indicated “[t]he prior art fails to
`disclose edge switches for local and other switching facilities; a controlling
`apparatus that will receive a 1st call and then initiating a 2nd call in
`accordance with control criteria entered by a specified user thru the
`Internet, and then the controlling device coupling the 1st and 2nd calls
`together.” Ex. 2005, 43 (emphasis added). On this record, for the purposes
`of this Decision, we, therefore, determine the statements in the prosecution
`history do not give rise to a disclaimer.
`We have considered all of the arguments and evidence regarding the
`term “switching facility.” At this juncture of the proceeding, we determine
`that the broadest reasonable interpretation of the term is any switch in the
`telecommunication network.
`
`“tandem access controller”
`F.
`Claim 18 recites “tandem access controller,” and claim 19 depends
`directly from claim 18. No other challenged claims recite the term.
`Petitioner also contends “[t]he phrase ‘tandem access controller’ in claims
`18 and 19 is not a known term of art in telecommunications.” Pet. 27.
`Petitioner also contends that “the broadest reasonable interpretation in light
`of the Specification of the phrase ‘tandem access controller” is ‘a processor’
`(or a device with a processor).”
`Patent Owner discusses the term “controller” in connection with its
`contentions pertaining to the term “coupled to” and the disclaimer. See, e.g.,
`Prelim. Resp. 34. For example, Patent Owner contends “the ’113 Patent
`emphasizes the importance of connecting the TAC (a Tandem Access
`
`
`
`16
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`Controller) to a tandem switch.” Id. at 25. Claim 18 does not further limit
`the recitation “coupled to at least one switching facility,” recited in claim 1.
`Patent Owner acknowledges that Petitioner’s construction of the term
`“coupled to” “allow[s] a controller to be connected to a ‘switching facility’
`through an edge switch.” Prelim. Resp. 42. At this juncture of the
`proceeding, and for reasons provided above, we decline to adopt Patent
`Owner’s proposed interpretation of “coupled to,” as well as Patent Owner’s
`disclaimer contentions regarding that term. Therefore, we also decline to
`adopt Patent Owner’s disclaimer with respect to the broadest reasonable
`interpretation of “tandem access controller.” As further support that Patent
`Owner’s disclaimer is not appropriate, we note Webster’s New World
`Telecom Dictionary, submitted by Patent Owner (Ex. 2003) defines “tandem
`switch” as follows: “[i]n a contemporary PSTN, a tandem switch commonly
`is a hybrid Class 4/5, functioning as both a tandem and a CO (Class 5).” Ex.
`2003, 474–75. This dictionary definition is consistent with the footnote in
`the prosecution history discussed above with respect to the term “switching
`facility.”
`We agree with Petitioner that the ’113 Patent Specification describes
`“tandem access controller” as a processor. Ex. 1001, 3:28–29; see also id. at
`6:48–49 (“The TAC 10 may be implemented using conventional processor
`hardware.”) Additionally, the ’113 Patent Specification indicates
`“[d]evising the software/firmware use[d] to control the TAC 10 is well
`within the capability of those skilled in the art since the various control
`features that can be made available are generally already known.” Id. at
`6:53–55 (emphasis added). However, the ’113 Patent Specification also
`describes an embodiment in which “TAC 10 is connected inside the PSTN
`
`
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`17
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`in the sense that it is not an edge device such as a PBX or central office (CO)
`switch because it does not connect directly to subscribers.” Id. at 5:3–5.
`As set forth below, based on the record before us, we determine that
`the asserted prior art discloses both examples, including the more limited
`example of a processor that does not connect to subscribers directly.
`Accordingly, on this record and at this juncture, we determine that no
`express construction of the term “tandem access controller” is necessary to
`resolve a controversy in this proceeding
`
`III. ANALYSIS
`Principles of Law
`A.
`Anticipation, under 35 U.S.C. § 102, requires a lack of novelty.
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). To establish anticipation, each and every element in a claim,
`arranged as is recited in the claim, must be found in a single prior art
`reference. Id.
`Additionally, a patent claim is unpatentable if the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time the invention was made to a
`person of ordinary skill in the art to which said subject matter pertains. 35
`U.S.C. § 103(a). The question of obviousness, under 35 U.S.C. § 103(a), is
`resolved on the basis of underlying factual determinations, including:
`(1) the scope and content of the prior art; (2) any differences between the
`claimed subject matter and the prior art; (3) the level of ordinary skill in the
`art; and (4) objective evidence of nonobviousness, i.e., secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17‒18 (1966).
`In that regard, an obviousness analysis “can take account of the inferences
`
`
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`18
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`and creative steps that a person of ordinary skill in the art would employ.”
`See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The level of
`ordinary skill in the art is reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`Claims 1, 2, 8, and 17–19
`B.
`Petitioner asserts that claims 1, 2, 8, and 17–19 are (1) anticipated by
`Shtivelman; (2) anticipated by O’Neal; and (3) obvious over Shtivelman in
`combination with the O’Neal. Pet. 4. Petitioner additionally asserts that
`claims 1 and 17 are obvious over O’Neal. Id. To support its contentions,
`Petitioner provides detailed explanations as to how the prior art meets each
`claim limitation. Id. at 29–69.
`
`Shtivelman
`1.
`Shtivelman is directed to an Internet call-waiting telephone system,
`including an IP interface connected to both the PSTN and the Internet. Ex.
`1005, 3:21–28. Figure 1 of Shtivelman is reproduced below, with
`annotations.
`
`
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`19
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`
`Figure 1 illustrates a telephony system.
`As shown in Figure 1 of Shtivelman above, telephone 111 and
`personal computer (PC) 112 in client station 110 are linked to telephony
`switch 151 in PSTN 100. Id. at 7:1–3. When a call is made to Internet
`Service Provider (ISP) 130, the call is forwarded to telephony switch 141.
`Id. at 7:19–8:2. The call is forwarded by retrieving a pre-defined number
`programmed into telephony switch 151 (id. at 7:20–23) or by server 142
`directing the activities of telephony switch 151 through link 153 (id. at 12:9–
`11). When the latter of the alternatives is employed for call forwarding,
`client station 110 logs onto ISP 130 via modem bank 120 causing server 142
`to set up forwarding calls from telephony switch 151 to telephony switch
`141. Id. at 12:11–12. Upon receipt of the forwarded call by telephony
`switch 141, telephony switch 141 converts the call into a digital Internet call
`
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`20
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`using TCP/IP format and routes the resulting data to the Internet on TCP/IP
`link 136. Id. at 8:3–6.
`
`O’Neal
`2.
`O’Neal is directed to a control center for permitting a subscriber to
`custo
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