Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 31
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC,
`
`
`
`
`
`Petitioner
`
`v.
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`FOCAL IP, LLC,
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`
`
`Patent Owner
`
`________________
`
`
`Case IPR2016-01261
`Patent Number: 8,457,113
`________________
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`
`
`PATENT OWNER FOCAL IP, LLC’S CONTINGENT MOTION TO
`AMEND CLAIM 1 OF U.S. PATENT NO. 8,457,113
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`
`
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`Patent 8,457,113
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`Paper No. 31
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC,
`
`
`
`
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`
`
`Patent Owner
`
`________________
`
`
`Case IPR2016-01261
`Patent Number: 8,457,113
`________________
`
`
`
`PATENT OWNER FOCAL IP, LLC’S CONTINGENT MOTION TO
`AMEND CLAIM 1 OF U.S. PATENT NO. 8,457,113
`
`
`
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`Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 31
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. CLAIM LISTING ................................................................................................ 2
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`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM .................................. 2
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIM ................................................ 4
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`V. CLAIM CONSTRUCTIONS .............................................................................. 5
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`A.
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`B.
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`Tandem Switch ...................................................................................... 5
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`Call Request .......................................................................................... 7
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`VI. THE SUBSTITUTE CLAIM IS PATENTABLE ............................................ 8
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`A.
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`B.
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`The Level of Ordinary Skill in the Art .................................................. 8
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`State of the Art as of the Priority Date .................................................. 8
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`VII. SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM ........................ 12
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`VIII. DISTINCTIONS OVER THE ART ............................................................... 13
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`A.
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`Scope of the Art and Deficiencies of the Art ...................................... 13
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`IX. THE SUBSTITUTE CLAIM IS NOT OBVIOUSNESS ............................... 21
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`TABLE OF AUTHORITIES
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`Cases:
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`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) ........................................................................... 13
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`
`Regulations:
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`37 C.F.R. § 42.121(a) ................................................................................................ 2
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`37 C.F.R. §42.121(a)(3) ............................................................................................ 2
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`UPDATED LIST OF EXHIBITS
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`2001
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`2002
`2003
`2004
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`2005
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`2006
`2007
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`2008
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`2009
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`2010
`2011
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`2019
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`2020
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`2021
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`2022
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`2023
`2024
`2025
`2026
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`7,764,777
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`of U.S. Patent No.
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`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed. 2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district court
`litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-2, filed
`08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for
`IPR2016-01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for
`IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Excerpts of Deposition Transcript of Mr. Willis, Mar. 1, 2017, for
`IPR2016-01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`(“BatesDec”)
`Excerpts of Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Excerpts of Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Excerpts of Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Excerpts of Declaration of Dr. La Porta in support of the Petition,
`Ex. 1002 of IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
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`2028
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`2040
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`2041
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`2042
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`2043
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`2044
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`Excerpts of Declaration of Mr. Willis in support of the Petition,
`Ex. 1002 of IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Excerpts of Deposition Transcript of Dr. Lavian, March 29, 2017,
`for IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend (“BatesDec”)
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated with
`line numbers)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924
`to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi, and
`Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
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`2046
`2047
`2048
`2049
`2050
`2051
`2052
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`2053
`2054
`2055
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`2056
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`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Excerpts of Declaration of Thomas La Porta in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,457,113, June 23,
`2016, submitted in support of IPR2016-01261
`Excerpts of Declaration of Dr. Tal Lavian in Support of Petition
`for Inter Partes Review of U.S. Patent No. 7,764,777, June 23,
`2016, submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
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`2062
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`2063
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`2064
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`2065
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`2066
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`I.
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`INTRODUCTION
`To the extent that original independent Claim 1 (the “Original Claim”) of U.S.
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`Pat. No. 8,457,113 (“the ’113 Patent”) is found unpatentable in this proceeding,
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`Patent Owner requests the Board to substitute the Original Claim and replace it with
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`Proposed Substitute Claim 183. The Proposed Substitute Claim amends the Original
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`Claim by incorporating limitations that describe (i) communications between a
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`PSTN tandem switch and the tandem access controller (as described in the ’113
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`Patent) (“TAC”) occur without passing through an intervening edge switch; and (ii)
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`the TAC receiving a first call request associated with a first call and processing a
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`second call associated with a second call request and establishing voice
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`communications across both a packet network and a network of tandems after the
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`second call is answered. None of these claimed features are disclosed, taught, or
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`obvious by the art known to Patent Owner, as explained below. BatesDec, ¶152.
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`This IPR is but one of nine IPRs filed by three groups of petitioners involving
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`two other related patents (the “Related IPR Proceedings”). The patents at issue in
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`these Proceedings share a common specification and the claims of these patents are
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`related in that they share common terms and are directed to similar inventions.
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`Furthermore, the art cited by the various Petitioners overlaps from one Related IPR
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`Proceedings to the next. As used herein, “Petitioners” refers to all three groups of
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`Petitioners. A “cheat sheet” listing the various IPRs by docket number, along with
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`the identity of the petitioner, claims at issue, and art at issue, is attached hereto as
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`Ex. 2063. Patent Owner has satisfied the conference requirement of 37 C.F.R. §
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`42.121(a) for this motion.
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`II. CLAIM LISTING
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`A listing of Proposed Substitute Claim 183 is provided, as well as redlined
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`versions showing the differences between the Proposed Substitute Claim and the
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`Original Claim. Ex. 2062.
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`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM
`The Proposed Substitute Claim corresponds to the Original Claim, thereby
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`satisfying the rule that “only one substitute claim would be needed to replace each
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`challenged claim.” See 37 C.F.R. §42.121(a)(3).
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`The Proposed Substitute Claim is narrower than the Original Claim.
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`Specifically, all of the language originally found in the Original Claim is found in
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`the Proposed Substitute Claim or a narrower term is found in the Proposed Substitute
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`Claim in place of a corresponding term in the Original Claim.
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`Limitations were added to the Proposed Substitute Claim to specifically
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`identify a telecommunication network as the PSTN network and a second network
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`as a network of PSTN tandem switches, which are narrower. The “called party” was
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`also more narrowly defined as “a subscriber.” The next limitation added was to
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`change the term “call processing system” found in the Original Claim to “tandem
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`access controller.” The term “tandem access controller” was not construed in the
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`ID, but it is no broader than “controller.” The descriptive language of the term
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`“tandem access controller” indicates that it is a controller associated with a tandem
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`switch, not an edge switch.
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`Other limitations added were the PSTN communication network includes “a
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`plurality of edge switches connected to telephones on one side and PSTN tandem
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`switches on the other side”, “wherein the PSTN tandem switches includes the
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`particular PSTN tandem switch”, “wherein the PSTN tandem switches are not the
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`edge switches”, and “wherein the PSTN tandem switches are not directly connected
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`to any of the telephones.” These limitations make explicit restrictions on the scope
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`of the claims that Patent Owner believes already exists by virtue of disclaimers made
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`in the ’113 Patent itself and the file history.
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`The next limitation added is “wherein communications between the tandem
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`access controller and the particular PSTN tandem switch occur without passing
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`through any edge switches”. This limitation eliminates the possibility that the TAC
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`is connected through an edge switch with the tandem switch. This limitation, for
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`example, takes outside the scope of the Substitute Claim edge devices, such as PBXs,
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`that connect to the PSTN through edge switches.
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`Other newly-added limitations are directed to more particular mechanisms of
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`completing and processing “a call” across both the network of tandems and the
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`packet network by the TAC “receiving a first call request … associated with a first
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`call,” “processing a second call request associated with a second call across the
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`packet network,” and “establishing the voice communication between the calling
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`party and the subscriber, by the tandem access controller, after the second call is
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`completed and answered.” These limitations are narrower than the Original Claim,
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`and exclude PBXs and other devices known in the art that must answer an incoming
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`call to process it before initiating a second call request to establish a second call.
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIM
`Support for the Substitute Claim from the original disclosure of the patent and
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`from each earlier-filed disclosure for which benefit of the earlier filing date is sought
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`is provided in Ex. 2041 (as granted by the Board). Support for the Proposed
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`Substitute Claim is clear in the underlying disclosures, and a POSA would
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`reasonably conclude that the inventors had possession of each of the features of the
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`Substitute Claim. Based on the state of the art and the supporting disclosure in the
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`charts, a POSA would understand that Fig. 2 read in light of the whole underlying
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`application support of the ’113 Patent (e.g., Fig. 5, 4:55-5:3) discloses the TAC
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`completing “a call” across both the network of tandems and the packet network by
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`the TAC receiving a first call request … associated with a first call,” “processing a
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`second call request associated with a second call across the packet network,” and
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`“establishing the voice communication between the calling party and the subscriber,
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`by the tandem access controller, after the second call is completed and answered” in
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`addition to the other limitations of the Substitute Claim. BatesDec, ¶¶45-46.
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`V. CLAIM CONSTRUCTIONS
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`Constructions are provided for the term “PSTN tandem switch” and the
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`language “call request for the purpose of initiating voice communication.” These
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`terms were not construed by any of the Parties in their submissions to date, or by the
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`Board in its Institution Decisions.
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`A. Tandem Switch
`Patent Owner submits a “PSTN tandem switch” be construed as “as a switch
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`in the PSTN that interconnects other PSTN tandem switches and edge switches.”
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`This construction is consistent with the various Petitioners’ description of tandem
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`switches and the language of the Proposed Substitute Claim. If the Board, however,
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`believes that because of footnote one in the ’777 Patent’s prosecution history, that
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`“PSTN tandem switch” should be construed in a broader fashion (see e.g., -01262
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`ID (Paper 19) at 12), there are specific claim limitations in the Proposed Substitute
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`Claim that effectively limit the scope of the term “PSTN tandem switch” to
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`approximately the proposed construction.
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`As background, neither Patent Owner nor Petitioners have previously set forth
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`a formal construction of the term “tandem switch” in this or any of the other Related
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`POPRs. The Board declined to formally construe the term “tandem switch” when
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`considering claim 94 of the ’113 Patent. -01261 ID (Paper 19) at 12.
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`Nevertheless, Petitioners and Patent Owner have consistently described
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`tandem switches in a very similar manner. In all of the Related POPRs, Patent
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`Owner described tandem switches as being “connected to edge switches and other
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`tandem switches.” Petitioner BHN states, “[t]he PSTN consists of switches known
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`as tandem switches or class 4 switches (switching facilities in the claims) which
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`serve to interconnect between different geographical regions and edge switches or
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`class 5 switches, which connect to end-user devices, like telephones, within a local
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`geographic area.” -01261 Pet. at 29 (emphasis added). BHN provided no
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`construction otherwise. Id. at 10. Petitioner Cisco states, “[c]lass 3 switches are
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`also known as tandem switches and generally provide long distance calling links by
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`interconnecting between edge switches and other tandem switches.” -01254 Pet. at
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`7 (emphasis added). Cisco provided no construction otherwise. Id. at 14-15.
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`Petitioner YMax states that “[w]hen a telephone call is placed on the PSTN . . . the
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`call is then typically routed to one or more tandem switches (in sequence), until it
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`reaches the edge switch that is directly connected to the recipient’s phone, and
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`finally to the recipient’s phone.” -01260 Pet. at 13 (emphasis added). YMax
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`provided no formal construction of “tandem switch.” Id. at 18-27.
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`Related to the construction of “PSTN tandem switch” are the negative
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`limitations found in the Proposed Substitute Claim. The Claim explicitly provides
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`that the “PSTN tandem switch” is not an edge switch and does not connect directly
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`to the telephones of subscribers. These limitations were added to address the
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`controversy surrounding the terms “switching facility”, “tandem switch”, and
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`footnote one found in the prosecution history of the ’777 Patent. See, e.g., -01261
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`Institution Decision at 7-12.
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`In light of the foregoing, Patent Owner’s construction is consistent with the
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`intrinsic and extrinsic record, as well as all of the Parties’ descriptions of “PSTN
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`tandem switch.” But, a broader construction of “PSTN tandem switch” is effectively
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`limited by the specific claim requirements that prevent the claimed “PSTN tandem
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`switch” from being considered an edge switch or connecting directly to telephones.
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`For example, these negative limitations would eliminate a “hybrid switch” from
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`being considered a PSTN tandem switch since it connects directly to telephones.
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`B. Call Request
`The term “call” was not previously construed by the Board or any of the
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`Parties in this or any other of the Related IPRs.
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`Nevertheless, two of the Petitioners agree that a traditional telephone call
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`consists of two parts - signaling and media. For a typical person-to-person call,
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`signaling between PSTN switches sets up the call, then the voice connection is
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`established so that two people can speak to each other. See, e.g., -01261 Pet. at 12
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`(BHN) and -01254 Pet. at 10 (Cisco). Patent Owner characterizes this call setup as
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`“the exchange of control signaling that causes the establishment of a path over which
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`voice data can flow.” See, e.g., -01261 POPR (Paper 11) at 7.
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`Turning back to the construction of the phrase “call request”, the proper
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`construction of this phrase is “signaling indicating a request to set up a connection
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`that provides for a two way voice communication.” In the context of “call request
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`for the purpose of initiating voice communication” this can only refer to signaling,
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`which the Parties agree must precede the establishment of two way voice
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`communications. This construction is also supported by the ’113 Patent, which gives
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`an example of call data of an “incoming call” as a “call request” exemplified by
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`“SS7 data indicating an incoming call.” ’113 Pat., Fig. 5, Box 2 and 5:61.
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`VI. THE SUBSTITUTE CLAIM IS PATENTABLE
`A. The Level of Ordinary Skill in the Art
`Patent Owner believes that a person of ordinary skill in the art with respect to
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`the ’113 Patent in 1999-2000 would have a bachelor’s degree in electrical
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`engineering, computer science, or the equivalent thereof and approximately 2-3
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`years of professional experience within the field of telecommunications or network
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`communications. BatesDec, ¶22. This is consistent with the positions taken by the
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`Petitioners in the Related IPRs. See, e.g., -01262 La Porta Dec (Ex. 2064) at ¶28; -
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`01258 Lavian Dec (Ex. 2065) at ¶19; -01257 Willis Dec (Ex. 2027) at ¶21.
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`B.
`State of the Art as of the Priority Date
`Related to the growth of the internet during the 1990’s was the growth of
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`VoIP. VoIP would grow significantly after the turn of the century, and certain
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`businesses saw this potential back in the 1990s and began to innovate in this space.
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`One obvious issue with the growth of VoIP was how to integrate VoIP systems with
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`the already existing PSTN. BatesDec, ¶47.
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`Related to the development of VoIP were PBXs. As a bit of history, PBXs
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`(private branch exchanges) were private telephone switches used by businesses of
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`all sizes. PBXs allowed businesses to share a handful of voice lines, and provided
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`various calling features, such as voice mail, conference calling, call forwarding, and
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`call waiting. Since at least the mid-1980s, PBXs provided users with call features
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`such as call forwarding and conference calling. See, e.g., U.S. Pat. No. 4,646,296
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`(filed on July 9, 1984) (Ex. 2056) and BatesDec, ¶48.
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`There was a need for PBXs that could adapt intra-office VoIP calls (or VoIP
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`calls generally) to the PSTN, which was primarily an analog system at the local level,
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`and vice versa. This is at issue in Alexander, Archer, Burger, O’Neal, Schwab, and
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`Swartz. See e.g., Alexander (Ex. 2051), Background, 1:14-33. BatesDec, ¶49.
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`In summary, during the 1990s, inventors were working on the problem of how
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`to better integrate circuit and packet switched voice networks. These innovations,
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`however, were largely being implemented from outside the PSTN by companies
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`other than the Baby Bells (i.e., the original regional Bell operating companies that
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`resulted as the breakup of AT&T in 1984 - Ameritech, Bell Atlantic, BellSouth,
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`NYNEX, Pacific Telesis, Southwestern Bell, and US West), as opposed from inside
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`the PSTN itself. BatesDec, ¶50.
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`Generally speaking, the Baby Bells (and other regional phone companies such
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`as Cincinnati Bell) owned the equipment that made up the PSTN and controlled
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`access to the PSTN. These companies generally only allowed access to the PSTN
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`through edge switches. Edge switches served as “firewalls” to the rest of the PSTN.
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`As one of their functions, they serve to protect the switching fabric of the PSTN
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`from malfunctioning/malicious end user equipment such as PBXs. Thus, consumers
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`of PBXs only had access to the PSTN though the lines provided to them by the local
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`telecommunication companies through edge switches. These lines generally
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`consisted of analog phone lines (common for residences) and digital T1 connections
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`(which provided up to 24 simultaneous voice paths, common for larger businesses).
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`These lines originated from edge switches. In sum, the only practical interface into
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`the PSTN (from the outside) was through central offices. BatesDec, ¶51.
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`A second development was taking place during the 1980s up until the time of
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`the invention as well. Unlike the VoIP/PBX development discussed above, the
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`implementation of features by the Baby Bells and others did not involve equipment
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`to be attached to the peripheral of the PSTN. The Baby Bells did not attempt to
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`utilize switching equipment similar to the claimed TAC to be attached to existing
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`switching equipment within the PSTN. Rather, the Baby Bells and others
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`contemplated modifications to switching and signaling equipment, referred as
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`intelligent networking. Id.
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`Chang is a representative example of this second development. Chang teaches
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`that switching equipment, such as edge switches and tandem switches, can be
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`modified to serve as Service Switching Points to initiate database queries to SCPs.
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`Chang (Ex. 2049), 9:13-17; Fig. 1, elements 11E and 11T. In these modified edge
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`and tandem switches, database queries are sent to an SCP that stored call control
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`information, and the SCP returns a response to the switch that the switch can utilize
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`to process the call. See Chang, 10:19-31. In Chang, the edge and tandem switches
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`have been modified to contain enhanced functionality to send and receive the query
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`and response signaling with an SCP. BatesDec, ¶52.
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`The Baby Bells were incentivized to add call features such as call waiting and
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`call forwarding because the pricing of such features was not regulated like the cost
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`of providing actual telephone service and was extremely profitable. See, e.g., $200
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`Billion Broadband Scandal, Bruce Kushnick, 2006 (Ex. 2057) at 135 (“Some
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`services could now be “market priced.” Ameritech could charge what customers
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`were willing to pay, even though there was no competition in 1994. In this bucket
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`would be “calling features”, such as Call Waiting, Call Forwarding, etc., that cost
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`about one penny to offer, but could sell for $5.00 per month per line.). BatesDec,
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`¶53.
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`In summary, a POSA in 2000 would have been familiar with PBXs and their
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`ability to provide call features. Such PBXs were available for at least fifteen years
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`prior to the priority date. With respect to these PBXs, a POSA would also have been
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`aware of industry efforts to integrate these traditional PBXs with the nascent VoIP
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`systems. A POSA would have also been aware of the Baby Bell’s 15 year effort to
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`provide call features from inside the PSTN. A POSA would have known that these
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`features were being applied by modifying the software that operates edge switches
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`and tandem switches. As it relates to the Proposed Substitute Claim, a POSA would
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`have been familiar with the various efforts in the VoIP space to provide equipment
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`for use by businesses to integrate VoIP with traditional voice systems. Also, a POSA
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`would have been familiar with a different field of endeavor – that of the Baby Bells’
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`efforts to upgrade the PSTN with an IN architecture to force others to use their call
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`features to drive additional, high-margin revenues. BatesDec, ¶54.
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`VII. SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM
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`The primary goal of the newly added language to the Proposed Substitute
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`Claim is to make explicit the disclaimers of claim scope Patent Owner believes result
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`from disclaimers in the priority document and the prosecution history. Specifically,
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`language was added to make clear that the TAC cannot be connected to an edge
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`switch. Instead, the TAC communicates, including communication related to call
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`requests, with the tandem switch without passing through an edge switch. This
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`concept is not disclosed or suggested in any known prior art.
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`Also, the TAC performs the steps of receiving a first call request associated
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`with a first call and processing a second call associated with a second call request
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`and establishing voice communications across both a packet network and a network
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`of tandems after the second call is answered. As discussed below, this
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`implementation is not disclosed or suggested in any known prior art either.
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`BatesDec, ¶152.
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`Also, certain negative limitations were added to make clear that tandem
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`switches are different than edge switches, that tandem switches are not directly
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`connected to the telephones of subscribers, and that communications between the
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`tandem switch and TAC occur without passing through an edge switch. With respect
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`to these negative limitations, the Federal Circuit has approved of the use of such
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`limitations when drafting claims. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1348
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`(Fed. Cir. 2016).
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`VIII. DISTINCTIONS OVER THE ART
`A.
`Scope of the Art and Deficiencies of the Art
`There are approximately 400 U.S. and non-U.S. patent documents cited in the
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`“References Cited” portion of the ’113 Patent and other patents that claim priority
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`to the same provisional application cited to by the ’113 Patent. In addition, there are
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`approximately 20 “Other References” cited to in these patents. In the underlying
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`district court cases, approximately 44 different patent documents and other
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`publications were cited as potentially invalidating art.
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`In the Related IPR Proceedings, Petitioners relied upon ten different
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`references - Alexander, Archer (Ex. 2048), Burger (Ex. 2050), Chang, McMullin
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`(Ex. 2053), O’Neal (Ex. 2047), Schwab (Ex. 2046), Shtivelman (Ex. 2052), Swartz
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`(Ex. 2054), and the SS7 Paper (Ex. 2055). The IDs in the various Related IPR
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`Proceedings were based on all of these references except for Schwab. In the
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`prosecution of the ’777 Patent, four references were substantively discussed:
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`Schwab, Sidhu (Ex. 2058), Shah (Ex. 2059), and Kugell (Ex. 2060). No references
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`were substantively discussed in the prosecution of the ’113 Patent.
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`With respect to Sidhu and Shah, the examiner used the Sidhu and Shah
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`references as a basis to show it would have been obvious to allow a user to provision
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`a telephone service through the internet. See, e.g., ’777ProHist (Ex. 2005) at 121.
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`These references are not believed to be relevant to the Proposed Substitute Claim
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`beyond these teachings. BatesDec, ¶58. Kugell was used by the examiner to reject
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`dependent claims by allegedly disclosing a system that can ring multiple phones at
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`one time. See, e.g., ’777ProHist at 122. This reference is not relevant to the
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`Proposed Substitute Claim beyond this in that it is cumulative to art that shows call
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`control features being applied at an edge switch. BatesDec, ¶59. The SS7 Paper
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`discusses standard SS7 signaling that was known at the time of the invention and is
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`not relevant to the Proposed Substitute Claim, other than discussing call requests.
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`BatesDec, ¶¶60-61.
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`In the discussion below, Patent Owner will concentrate on the references on
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`which the IDs in the Related IPR Proceedings were based (the “IPR Art”). Patent
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`Owner and Patent Owner’s expert are not aware of any prior art that is more relevant
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`and material to the Proposed Substitute Claim than the IPR Art. BatesDec, ¶62.
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`Special attention will be paid to Archer and Chang, as that specific combination is
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`at issue in five of the nine IPRs, and at least one of those references is at issue in
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`seven of the nine IPRs. Further, Patent Owner believes those references are
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`representative of the two categories of all known prior art, discussed below.
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`Instituted in this proceeding were obviousness grounds directed to Archer and
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`the knowledge of a POSA, and Archer combined with Chang. As described below,
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`the Proposed Substitute Claim is patentable and not obvious over each of these
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`grounds. BatesDec, ¶¶120-122, 116-128.
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`All of the known material prior art can be broken down into two categories.
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`The first category includes the overwhelming majority of the art that disclose and
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`teach systems that apply call features external to the PSTN via an edge switch or
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`edge device (the “EXT Art”), rather than a tandem switch, as disclosed and taught
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`by Alexander (BatesDec, ¶¶97-101), Archer (BatesDec, ¶¶83-86), Burger
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`(BatesDec, ¶¶93-96), McMullin (BatesDec, ¶¶106-109), O’Neal (BatesDec, ¶¶76-
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`82), Schwab (BatesDec, ¶¶65-75), Shtivelman (BatesDec, ¶¶102-105), and Swartz
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`(BatesDec, ¶¶110-114). Then, there is the IN Art, which is disclosed in Chang,
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`which discloses capability of applying call features internal to the PSTN via an SCP.
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`As to the EXT Art, none of this art disclose a purported controller comparable
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`to the TAC in communication with a tandem switch, rather than an edge switch,
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`where communications between a PSTN tandem switch and the TAC occur without
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`passing through an intermediary edge switch. BatesDec, ¶116. Notably, none of the
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`EXT Art contains the term “tandem switch”, “class 4”, “transit switch” or other term
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`to refer to what the ’113 Patent refers to as a tandem switch. BatesDec, ¶117. There
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`is simply no disclosure in these references of tandem switches, let alone connecting
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`a controller to one. BatesDec, ¶117.
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`Rather, the majority of the EXT Art explicitly discloses that the purported
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`TAC is connected to a central office/edge switch of the PSTN, rather than a tandem
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`switch, where the edge switch is directly connected to telephones, modems,
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`ga
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