Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP, LLC
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun. 22, 2010
`Issue Date: Jun. 4, 2013
`
`Title: BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,457,113 B2
`
`Inter Partes Review No. 2016-01254
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 1
`Cisco Petition Excerpts
`IPR2016-01260
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP, LLC
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun. 22, 2010
`Issue Date: Jun. 4, 2013
`
`Title: BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,457,113 B2
`
`Inter Partes Review No. 2016-01254
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 1
`Cisco Petition Excerpts
`IPR2016-01260
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`C.
`
`The Telephone Network
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`The PSTN is an interconnected network of the world’s telephone networks.
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`Id. at ¶¶ 38-40. In the US, the PSTN consists of two levels of interconnected digital
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`circuit switches, class 3 switches and class 5 switches. Id. Class 5 switches are also
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`known as edge switches and serve to connect end-user devices, such as telephones
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`and fax machines, to the PSTN. Id. Class 3 switches are also known as tandem
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`switches and generally provide long distance calling links by interconnecting
`
`between edge switches and other tandem switches. Id.; EX1001, 1:42–51.
`
`1.
`
`Telephone Calls
`
`Telephone calls over the telephone network have two parts, signaling and
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`media. EX1002, ¶¶ 38-40. A telephone call is initiated with a call request signal
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`that is routed through the telephone network to an edge switch, which causes the
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`dialed telephone to ring. Id. When a user picks up the telephone, a call accept
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`signal is sent which causes the telephone network to establish the circuit for
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`carrying the call participants’ voices (i.e. media). Id. The telephone call signaling
`
`and media generally take different paths through the telephone network. Id.
`
`2.
`
`Telephone Network Standards
`
`In order to allow the PSTN to be interconnected, the International
`
`Telecommunications Union (ITU) has published an extensive set of recommended
`
`standards for governing the operation of the world’s telephone networks. Id. ¶¶ 44-
`
`45. ITU standards govern telephone numbering, signaling, and data transmission
`
`7
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 2
`Cisco Petition Excerpts
`IPR2016-01260
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`EX1027, Figs. 2-3, 5-7, 9-10; 3:39-7:10; EX1002 at ¶ 55-60.
`
`F.
`
`Telephone Calls Over the Internet – VOIP
`
`In the 1990s, voice telephone calls began to be carried over the Internet
`
`using the Internet Protocol (IP). EX1002, ¶ 61. This became known as VOIP or
`
`voice over Internet Protocol. Id. By mid-1999 to 2000, the PSTN and VOIP
`
`networks were interconnected and one telephone call could be routed across both
`
`the Internet and the PSTN by using protocol converting gateways. EX1002, ¶¶ 61-
`
`65, 84-86, 95 (citing EX1004; EX1017-1120; EX1023). VOIP signaling protocols,
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`such as H.323 and the SIP, were standardized between 1998 and 1999. Id. Cable
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`10
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 3
`Cisco Petition Excerpts
`IPR2016-01260
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`16, 1999, and issued September 28, 2004, to Alexander et al. (“Alexander,”
`
`EX1006). Alexander is prior art to the ‘113 patent under at least 35 U.S.C. § 102(e)
`
`because it is an issued patent that was filed prior to the earliest claimed priority
`
`date of the ‘113 patent of May 4, 2000.
`
`Alexander teaches a call controller coupled to a packet network and a circuit
`
`switched network. EX1006, Figs. 1-2, Abstract. Alexander’s call controller can
`
`establish voice communications across both networks and provides call control
`
`features such as call forwarding. EX1006, Figs. 2, 5A-B; 1:35-2:27.
`
`VII. SUMMARY OF THE ’113 PATENT
`
`The ’113 patent depends through continuations and divisionals to application
`
`no. 10/426,279, filed Apr. 30, 2003, which in turn is a continuation-in-part of
`
`application no. 09/565,565, filed May 4, 2000. EX1001, 1:7–16. As a result, the
`
`earliest possible filing date for the ‘113 patent is May 4, 2000.
`
`The petitioned claims of the ‘113 patent recite controllers that interface
`
`between a packet network and a circuit switched network for establishing a voice
`
`communication between two parties and implementing call control features such as
`
`call forwarding or blocking. EX1001, cls. 38 and 65.
`
`VIII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`A.
`
`Legal Overview
`Claims in inter partes review proceedings are construed to have their
`
`broadest reasonable interpretation. Claim terms that are not construed are given
`
`14
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 4
`Cisco Petition Excerpts
`IPR2016-01260
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`their plain and ordinary meaning to a POSA at the time in light of the specification
`
`and file history. Petitioner applies the plain and ordinary meaning of the petitioned
`
`claims to the asserted prior art references in support of grounds 1-4, which involve
`
`terms that are readily understood by a POSA upon review of the specification and
`
`file histories. Petitioner provides additional explanation of the scope of the plain
`
`and ordinary meaning for the claim terms “call data,” and “switching facility,”
`
`below and further explanation of the plain and ordinary meaning of these and other
`
`claim terms in sections X and XI below as relevant.
`
`B.
`
`Plain and ordinary meaning of “call data”
`
`Petitioned claims 38 and 65 of the ’113 patent includes the term “call data.”
`
`EX1001, cls. 38 and 65. Claims that depend from claims 38 and 65 and other
`
`claims provide examples of what is included in “call data.” For example claims
`
`131-32 and 136-37, which depend from claims 38 and 65, and claims 144-46 and
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`177-78, which depend from claims 143 and 163, provide that call data can include
`
`a call request, a telephone number, or an IP address. EX1001, cls. 131-32, 136-37,
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`144-46, 177-78; EX1002, ¶¶ 72-74. Therefore, based on the doctrine of claim
`
`differentiation, the plain and ordinary meaning of “call data” at least includes
`
`telephone numbers, IP addresses and/or call requests. Petitioner addresses these
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`claim limitations in the context of the detailed claim analysis provided in Sections
`
`X and XI below.
`
`15
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 5
`Cisco Petition Excerpts
`IPR2016-01260
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`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.”).
`
`To the extent the Board finds that the PSTN does not expressly disclose the
`
`claimed switching facilities and edge switches, they are inherent because the
`
`PSTN’s structure (an embodiment of Burger’s network 22) necessarily requires
`
`tandem switches (i.e., switching facilities) interconnecting edge switches. EX1002,
`
`¶ 121; EX1003, 1:42-43.
`
`3.
`
`[pre3] – enabling voice
`[pre3] and 38
`Claim 65
`communication across and circuit and packet network
`
`65 [pre3] the communication network designed to enable voice communication
`from a calling party to a called party across both the circuit-switched
`network and a packet network, the communication network comprising:
`38 [pre3] the method for enabling voice communication from a calling party to a
`called party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
`Grounds 1–2: Burger discloses that the communication network in the form
`
`of ESP 60 connected to circuit-switched network 22 and packet network 24,
`
`enables voice communications from a calling party to a called party across both the
`
`circuit-switch network (e.g., the PSTN) 22 and the packet network 24 (e.g., the
`
`Internet) at least in the form of ESP procedure 298 for 2-way communication.
`
`EX1003, 8:21-26, 9:19-23, 11:30-32, Figs. 4 (218, 220), 5 (298), 11 (518, 520);
`
`EX1002, ¶¶ 123-128. ESP 60’s processing unit 62 performs the method claimed in
`
`24
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 6
`Cisco Petition Excerpts
`IPR2016-01260
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`
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`readily understood that the PSTN includes both edge switches for routing calls
`
`from and to subscribers within a local geographic area and switching facilities for
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`routing calls to other edge switches or other switching facilities local or in other
`
`geographic areas. EX1004, 5:4–32; EX1002, ¶¶ 254-55; EX1001, 1:45–51. To the
`
`extent the Board finds that the PSTN does not expressly disclose the claimed
`
`switching facilities and edge switches, they are inherent because the PSTN’s
`
`structure (an embodiment of Archer’s networks 118/136) necessarily requires
`
`tandem switches (i.e., switching facilities) interconnecting edge switches. EX1002,
`
`¶ 256; EX1004, 5:23-24.
`
`3.
`
`[pre3] – enabling voice
`[pre3] and 38
`Claim 65
`communication across a circuit and packet network
`
`65 [pre3] the communication network designed to enable voice communication
`from a calling party to a called party across both the circuit-switched
`network and a packet network, the communication network comprising:
`38 [pre3] the method for enabling voice communication from a calling party to a
`called party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
`Grounds 3-4: Archer discloses that the communication network of claim
`
`65[pre3] in the form of server processors 128, converters 126 and 132, and
`
`database 138, enable voice communications from a calling party to a called party
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`across both the packet-based/IP network 130 and the PSTN 118/136. EX1004,
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`8:43–11:43, Figs. 2, 4-6; EX1002, ¶¶ 257-60. Server processor 128 performs the
`
`method of claim 38[pre3] at least by executing software steps 62-68 shown in
`
`Figure 4 to “Establish communication,” and steps 108-109 in Figure 5 to
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`53
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2024 - 7
`Cisco Petition Excerpts
`IPR2016-01260
`
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