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
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun. 22, 2010
`Issue Date: Jun. 4, 2013
`
`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. [________]
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`
`
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`DM2\6931386.1
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`

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`TABLE OF CONTENTS
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`PAGE
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`
`I. 
`INTRODUCTION ........................................................................................ 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .................... 2 
`A. 
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 2 
`B. 
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 4 
`C. 
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 5 
`D. 
`Service Information under 37 C.F.R. § 42.8(b)(4) ............................... 5 
`III.  PAYMENT OF FEES - 37 C.F.R. § 42.103 ................................................ 6 
`IV.  GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(A) ................ 6 
`V.  REASONS FOR REQUESTED RELIEF (37 C.F.R. §§42.22,
`42.104(B)) ....................................................................................................... 6 
`A. 
`Summary of the ’113 Patent ................................................................. 7 
`B. 
`Prosecution History .............................................................................. 9 
`C. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ........................ 10 
`D.  A POSA’s Level of Skill in the Art ................................................... 10 
`E. 
`State of the Art ................................................................................... 11 
`1. 
`Circuit- and Packet-Switched Networks .................................. 11 
`2. 
`PSTN Architecture ................................................................... 11 
`3. 
`Call Components—Signaling and Media ................................ 12 
`4. 
`PSTN Call Features and Intelligent Networks ......................... 12 
`5. 
`VoIP and Internet Telephony ................................................... 13 
`IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R.
`§42.104(B) .................................................................................................... 14 
`A. 
`Challenged Claims and Statutory Grounds for Challenges ............... 14 
`VII.  HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`(37 C.F.R. §42.104(B)) ................................................................................ 15 
`A. 
`Summary of Asserted References ...................................................... 15 
`1. 
`Archer ....................................................................................... 15 
`2. 
`Chang ....................................................................................... 15 
`Combinability of Archer and Chang .................................................. 16 
`
`VI. 
`
`B. 
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`TABLE OF CONTENTS
`CONTINUED
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`PAGE
`
`5. 
`
`6. 
`
`B. 
`C. 
`
`
`VIII.  CLAIMS 1 AND 94 AND DEPENDENTS ARE OBVIOUS
`UNDER GROUNDS 1– 2 ........................................................................... 17 
`A. 
`Independent Claims 1 and 94 ............................................................. 17 
`1. 
`Claims 1[pre] and 94[pre]–preamble ....................................... 17 
`2. 
`Claims 1[a] and 94[a] – receiving call data ............................. 30 
`3. 
`Claims 1[b] and 94[b] – a communication device ................... 33 
`4. 
`Claims 1[c] and 94[c] – call processing system coupled
`to a switching facility ............................................................... 33 
`Claims 1[d] and 94[d] – processing a call across both the
`circuit and packet networks ..................................................... 39 
`Claims 1[e] and 94[e] – establishing voice
`communication ......................................................................... 40 
`Dependent Claims 2 and 95 Are Obvious Under Grounds 1–2 ......... 41 
`Dependent Claims 8 and 102 Are Obvious Under Grounds 1–2 ....... 41 
`1. 
`Claims 8[a] and 102[a] – identifying control criteria .............. 41 
`2. 
`Claim 8[b] – control criteria previously provided ................... 42 
`3. 
`Claim 102[b] – subscriber requests control criteria ................. 42 
`4. 
`Claims 8[c] and 102[c] – completing the call .......................... 43 
`D.  Dependent Claim 11 Is Obvious Under Grounds 1–2 ....................... 44 
`E. 
`Dependent Claim 15 Is Obvious Under Grounds 1–2 ....................... 45 
`F. 
`Dependent Claim 109 Is Obvious Under Grounds 1–2 ..................... 45 
`G.  Dependent Claims 16 and 110 Are Obvious Under Grounds 1–2 ..... 45 
`H.  Dependent Claims 17 and 111 Are Obvious Under Grounds 1–2 ..... 47 
`I. 
`Dependent Claims 18 and 112 Are Obvious Under Grounds 1–2 ..... 50 
`J. 
`Dependent Claims 19 and 113 Are Obvious Under Grounds 1–2 ..... 52 
`K.  Dependent Claim 128 Is Obvious Under Ground 1 ........................... 54 
`INDEPENDENT CLAIM 163 AND DEPENDENTS ARE
`OBVIOUS UNDER GROUND 1 ............................................................... 55 
`
`IX. 
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`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
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`
`
`A. 
`
`Independent Claim 163 is Obvious Under Ground 1 ......................... 55 
`1. 
`Claim 163[pre] – preamble ...................................................... 55 
`2. 
`Claim limitation 163[a] – receiving call data .......................... 57 
`3. 
`Claim limitation 163[b] – accessing control criteria ............... 58 
`4. 
`Claim limitation 163[c] – initiating a second call ................... 58 
`5. 
`Claim limitation 163[d] – enabling communication ................ 61 
`Dependent Claim 164 is Obvious Under Ground 1 ........................... 61 
`B. 
`Dependent Claim 166 is Obvious Under Ground 1 ........................... 61 
`C. 
`D.  Dependent Claim 167 is Obvious Under Ground 1 ........................... 62 
`E. 
`Dependent Claim 168 is Obvious Under Grounds 1–2 ...................... 63 
`F. 
`Dependent Claim 175 is Obvious Under Ground 1 ........................... 66 
`G.  Dependent Claim 179 is Obvious Under Ground 1 ........................... 67 
`H.  Dependent Claim 180 is Obvious Under Ground 1 ........................... 68 
`I. 
`Dependent Claim 181 is Obvious Under Ground 1 ........................... 69 
`X.  DISCLOSED STRUCTURES ................................................................... 69 
`
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`
`
`Exhibit Number
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`
`1030
`1031
`
`1032
`
`List of Exhibits Cited in this Petition
`
`Document
`U.S. Patent No. 8,457,113 (“the ’113 patent”)
`Expert Declaration of Dr. Thomas F. La Porta (“TLP”)
`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. 6,445,694 to Swartz (“Swartz”)
`U.S. Patent No. 7,764,777 (“the ’777 patent”)
`U.S. Patent No. 8,115,298 (“the ’298 patent”)
`File history of U.S. Patent No. 8,115,298
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`WO 97/23899 to Harris (“Harris”)
`U.S. Patent No. 5,802,160 to Kugell
`U.S. Patent No. 5,206,901 to Harlow
`U.S. Patent No. 6,353,660 to Burger
`WO 98/54913 to Arkko
`U.S. Patent No. 5,434,852 to La Porta
`U.S. Patent No. 6,463,145 to O’Neal
`ITU-T Recommendation H.323 (“H.323”) (02/98)
`ITU-T Recommendation H.225 (“H.225”) (09/99)
`ITU-T Recommendation Q.1211 (“Q.1211”) (03/93)
`ITU-T Recommendation Q.1215 (“Q.1215”) (10/95)
`ITU-T Recommendation Q.1221 (“Q.1221”) (09/97)
`ITU-T Recommendation H.245 (“H.245”) (09/98)
`Request for Comments - SIP: Session Initiation Protocol
`(March 1999) (“SIP”)
`Tech Report CUCS-002-99 Implementing Intelligent
`Network Services with the Session Initiation Protocol
`Low, The Internet Telephony Red Herring (1996)
`Modarressi, An Overview of Signaling System No. 7 (1992)
`Crumlish, The ABCs of the Internet
`Helmstetter, Increasing Hits and Selling More on your Web
`Site (1997)
`Comer, Internetworking with TCP/IP 2d, Vol. I (1991)
`Judson, netmarketing – How Your Business Can Profit from
`the Online Revolution (1996)
`Newton’s Telecom Dictionary 15th ed. (Aug. 1999)
`iv
`
`

`
`Exhibit Number
`1033
`
`1034
`1035
`
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`1048
`
`1049
`1050
`1051
`
`1052
`1053
`
`Document
`Random House Webster’s Computer & Internet Dictionary
`3rd ed. (1999)
`Request for Comments – The TLS Protocol (Jan. 1999)
`Request for Comments – Hypertext Transfer Protocol –
`HTTP/1.1 (June 1999)
`ITU-T Recommendation Q.931 (“Q.931”) (05/98)
`Engineering and Operations in the Bell System (1984)
`Thӧrner, Intelligent Networks (1994)
`U.S. Patent No. 5,473,679 to La Porta
`U.S. Patent No. 5,509,010 to La Porta
`U.S. Patent No. 5,563,939 to La Porta
`U.S. Patent No. 5,659,544 to La Porta
`U.S. Patent No.5,943,408 to Chen
`U.S. Patent No. 6,081,715 to La Porta
`U.S. Patent No. 6,298,039 to Buskens
`SEC Form S-1, Net2Phone, Inc. (May 1999)
`Terplan, The Telecommunications Handbook (1999)
`Lakshmi-Ratan, The Lucent Technologies Softswitch—
`Realizing the Promise of Convergence (April-June 1999)
`Tanenbaum, Computer Networks 3rd ed. (1996)
`IBM PCjr The easy one for everyone (1983)
`PacketCable™ 1.0 Architecture Framework Technical
`Report (1999)
`Table of applications and patents in the ’113 patent’s family
`Curriculum vitae (CV) of Dr. Thomas F. La Porta
`
`
`
`v
`
`
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`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`I.
`
`Introduction
`Petitioners request inter partes review of claims 1, 2, 8, 11, 15–19, 94, 95,
`
`102, 109–13, 128, 163, 164, 166–168, 175, 179, 180–181 (Challenged Claims) of
`
`U.S. Patent No. 8,457,113 (EX1001) (’113 patent), assigned to Focal IP, LLC.
`
`Petitioners respectfully submit that the Challenged Claims are unpatentable as
`
`obvious over the prior art references discussed herein. This Petition demonstrates
`
`by a preponderance of the evidence that there is a reasonable likelihood that
`
`Petitioners will prevail with respect to at least one of these claims. Accordingly, it
`
`is respectfully requested that the Board institute an inter partes review of the
`
`Challenged Claims pursuant to 37 C.F.R. § 42.108.
`
`The ’113 patent relates to user-selected call features in telephone
`
`communications, such as call forwarding or call blocking. The Challenged Claims
`
`disclose methods to allow users to set call features using a web server. During
`
`prosecution of the ’113 patent’s parent, applicants distinguished over prior art
`
`references that disclosed implementing the call features using a web server in a
`
`user’s local telephone office, rather than at a central location in the telephone
`
`network. EX1010, 84–88.
`
`Years prior to the ’113 patent’s earliest filing date, web-based systems that
`
`allowed users to set call features outside of the user’s local edge switch were
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`known. EX1003, EX1004, EX1005. These same systems also implemented the
`
`control of these user-set call features outside of the user’s local edge switch. Id.
`
`II. Mandatory Notices Under 37 C.F.R. § 42.8(a)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Petitioner Bright House Networks, LLC identifies Bright House Networks,
`
`LLC and Charter Communications, Inc. as real parties-in-interest. Additionally,
`
`Bright House Networks, out of an abundance of caution based on certain decisions
`
`from the PTAB describing the test for real parties-in-interest, identifies Cisco
`
`Systems, Inc., Broadsoft, Inc., Siemens Communications, Inc. (Petitioner Bright
`
`House is aware of a number of related entities, including predecessor, and
`
`successor entities: Nokia Solutions and Networks US, LLC, Nokia Siemens
`
`Networks US, LLC, Nokia Corp., Nokia Solutions and Networks Holdings USA,
`
`NS Networks, LLC, Nokia Networks Inc., Nokia USA Inc., Nokia, Inc., Alcatel-
`
`Lucent USA Inc., Alcatel-Lucent Holdings Inc., Alcatel USA Holdings Corp.), and
`
`Sonus Networks, Inc. as potential real parties-in-interest to Petitioner Bright House
`
`Networks, LLC. However, none of these companies have participated in any way
`
`in the preparation of, the funding of, or the evaluation of the present Petition; nor
`
`have any of these companies attempted to exercise control over the related
`
`litigation nor the present Petition nor contributed funding to the present Petition. It
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`should also be noted that none of these companies have agreed to be listed as a real
`
`party-in-interest for this Petition.
`
`Petitioners WideOpenWest Finance, LLC (“WOW”) and Knology of
`
`Florida, Inc. (“KOF”) identify WideOpenWest Finance, LLC, Knology of Florida,
`
`Inc., and Metaswitch Networks Ltd. as real parties-in-interest. Additionally,
`
`WOW and KOF, out of an abundance of caution based on certain decisions from
`
`the PTAB describing the test for real-parties-in-interest, identify WOW’s parent
`
`company Racecar Holdings, LLC and majority equity holders Avista Capital
`
`Partners and Crestview Partners, and KOF’s parent companies Knology, Inc. and
`
`Kite Parent Corp., as potential
`
`real parties-in-interest
`
`to WOW and
`
`KOF. However, none of these companies have participated in any way in the
`
`preparation of, the funding of, or the evaluation of the present Petition; nor have
`
`any of these companies attempted to exercise control over the related litigation nor
`
`the present Petition nor contributed funding to the present Petition. It should also
`
`be noted that none of these companies have agreed to be listed as a real party-in-
`
`interest for this Petition.
`
`Petitioner Birch Communications, Inc. identifies Birch Communications,
`
`Inc. and Birch Communications Holdings, Inc. as real parties-in-interest.
`
`Additionally, Birch Communications, Inc., out of an abundance of caution based
`
`on certain decisions from the PTAB describing the test for real parties-in-interest,
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`identifies Broadsoft, Inc., Sonus Networks, Inc., Metaswitch Networks Ltd., Acme
`
`Packet, Inc. (Petitioner Birch Communications is aware of successor Oracle Corp.
`
`through acquisition), Holcombe T. Green, Jr., and R. Kirby Godsey as potential
`
`real parties-in-interest to Birch Communications, Inc. However, none of these
`
`companies have participated in any way in the preparation of, the funding of, or the
`
`evaluation of the present Petition; nor have any of these companies attempted to
`
`exercise control over the related litigation nor the present Petition nor contributed
`
`funding to the present Petition. It should also be noted that none of these
`
`companies have agreed to be listed as a real party-in-interest for this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`(Patent Asset Licensing LLC v.) Opposing Party
`Case
`3:15-cv-00742 (M.D. Fla.) Bright House Networks, LLC
`3:15-cv-00744 (M.D. Fla.) YMAX Corp.
`3:15-cv-00747 (M.D. Fla.) T3 Communications, Inc.
`3:15-cv-00743 (M.D. Fla.) WideOpenWest Finance, LLC et al.
`3:15-cv-00746 (M.D. Fla.) Birch Communications, Inc.
`IPR2016-1254
`IPR Petition of ‘113 patent by Cisco Systems, Inc.
`IPR2016-1257
`IPR Petition of ‘113 patent by Cisco Systems, Inc
`IPR2016-1252
`IPR Petition of related U.S. 8,155,298 patent by
`Petitioners
`IPR Petition of related U.S. 8,155,298 patent by
`Petitioners
`IPR Petition of related U.S. 7,764,777 patent by
`Petitioners
`
`Unassigned
`(Filed concurrently)
`
`IPR2016-1259
`
`Also related is the pending prosecution of U.S. App. No. 14/737,243, filed
`
`June 11, 2015 (EX1052).
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel:
`Patrick McPherson (Reg. No. 46,255)
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`PDMcPherson@duanemorris.com
`
`
`Back-up Counsel:
`Christopher Tyson (Reg. No. 63,850)
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
`
`Wayne O. Stacy (Reg. No. 45,125)
`Cooley LLP
`380 Interlocken Crescent, Ste. 900
`Broomfield, CO 80021
`Tel: 720-566-4125
`Fax: 720-566-4099
`wstacy@cooley.com
`zBrightHousePatentAsset@cooley.com
`
`Britton F. Davis (pro hac vice to be
`filed)
`Cooley LLP
`380 Interlocken Crescent, Ste. 900
`Broomfield, CO 80021
`Tel: 720-566-4125
`Fax: 720-566-4099
`bdavis@cooley.com
`
`Kyle Lynn Elliott (Reg. No. 39,485)
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
`
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Please direct all correspondence to lead and back-up counsel at the above
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`addresses. Petitioners consent to electronic service at the email addresses above.
`
`III. Payment of Fees - 37 C.F.R. § 42.103
`This Petition requests inter partes review of 27 claims of the ’113 patent and
`
`is accompanied by a request fee payment of $29,200. 37 C.F.R. §42.15. This
`
`petition meets the fee requirements. 35 U.S.C. §312(a)(1). Payment is authorized
`
`for any additional fees to be charged to Deposit Account 04-1679.
`
`IV. Grounds for Standing under 37 C.F.R. §42.104(a)
`Petitioners certify the ’113 patent is eligible for inter partes review and that
`
`each Petitioner is not barred or estopped from requesting inter partes review on the
`
`grounds identified within this Petition.
`
`V. Reasons for Requested Relief (37 C.F.R. §§42.22, 42.104(b))
`As explained in §§VI–IX below and in the attached Declaration of
`
`Petitioners’ Expert, Dr. Thomas La Porta (“La Porta”) (EX1002, “TLP”), the
`
`methods claimed in the Challenged Claims are obvious over the prior art.
`
`Specifically, this Petition and La Porta explain where each element is found in the
`
`prior art and why each claim would have been obvious to a person of ordinary skill
`
`in the art (“POSA”) at the time of the invention. §§VIII–IX. This Petition and La
`
`Porta also describe additional prior art references to provide background as of the
`
`earliest possible filing date of the ’113 patent, explanation as to why a POSA
`
`would combine the teachings of the cited references, and support for why a POSA
`
`would have a reasonable expectation of success.
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`Summary of the ’113 Patent
`
`A.
`The ’113 patent is a continuation of application 11/948,965, filed November
`
`30, 2007, which is a division of 10/426,279, which is a continuation-in-part of
`
`10/565,565, filed May 4, 2000, the ’113 patent’s earliest possible filing date.1
`
`EX1001.
`
`The ’113 patent relates to allowing telephone service subscribers to select
`
`call features using the Internet and for providing connections between the PSTN
`
`and VOIP networks. EX1001, 1:23-26; TLP ¶¶89–93. The ’113 patent
`
`acknowledges that well-known prior art systems allowed telephone service
`
`subscribers to add, modify, and/or control telephony features using the Internet.
`
`EX1001, 1:30-40, 1:59-61, 2:4-19, 2:23-26, 2:40-43, 3:26-27, 4:47-54, 5:26-32,
`
`6:39-40, 6:52-55. It acknowledges that emerging VOIP products “provide better
`
`user interfaces and control.” EX1001, 2:51-53; TLP ¶89.
`
`The ’113 patent states that problems with these prior art systems related to
`
`either the location of where the call features were applied—in the terminating
`
`1 The priority date for the Challenged Claims is not put in issue by the references
`
`relied upon in this Petition, and is therefore assumed to be May 4, 2000, for
`
`purposes of this proceeding only. TLP ¶35. However, Patent Owner has alleged it
`
`may be entitled to a priority date as early as June 1, 1999. The invalidity analysis
`
`and opinions presented in this Petition are the same under either date. Id.
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`central office edge switches of telephone service providers or through subscriber
`
`edge devices—(id., 1:63-66, 2:4-11, 2:40-51, also 2:16-23, 3:37-40)—or the type
`
`of providers that offered the services—web-based toll systems. Id., 1:41-44, 2:26-
`
`32, 3:44-48; TLP ¶90.
`
`The ’113 patent’s solution was to provide web-based call feature selection,
`
`and implementation of such selected call features, through a controller connected
`
`to a tandem switch rather than an edge switch. EX1001, 1:63-65, 3:35-40; 3:58-
`
`62, 3:48-49, 4:43-49, 5:4-26; TLP ¶91. The ’113 patent discloses that its controller
`
`and system uses known technologies and conventional equipment. EX1001, 1:32-
`
`37, 1:41-51, 2:51-54, 3:43-44, 3:66-4:8, 4:41-54, 5:10-24, 6:26-33, 6:38-39, 5:61,
`
`6:48-55; TLP ¶92.
`
`However, under their broadest reasonable interpretation (“BRI”), none of the
`
`independent Challenged Claims include the asserted solution of providing web-
`
`based call feature selection, and implementation of such selected call features,
`
`through a controller connected to a tandem switch. For example, under their BRI,
`
`none of the independent Challenged Claims recite call features and independent
`
`Challenged Claim 163 does not even recite a web interface. Nevertheless,as set
`
`out in §§VII–IX below, the concept of providing web-based call feature selection,
`
`and implementation of such selected call features, via controllers connected to
`
`tandem switches was well known more than a year before the earliest priority date
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,113 B2
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`of the ’113 patent. TLP ¶¶61–69.
`
`Prosecution History
`
`B.
`During prosecution of U.S. Patent No. 7,764,777, the ’113 patent’s parent,
`
`(EX1010), applicant distinguished over prior art rejections by amending the claims
`
`to include “switching facilities,” which were “any point in the switching fabric of
`
`converging networks, also referred to in industry as a signal transfer point (STP),
`
`signal control point (SCP)…gateway, access tandem, class 4 switch…trunk
`
`gateway, hybrid switch, etc.” EX1010, 87 n.1. Applicant also amended the claims
`
`to specify that the “controller,” “controlling device,” or “web-enabled processing
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`system” was “coupled to” or “in communication with” such a “switching facility”,
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`rather than an “edge switch.” Id., 75, 80, 84, 86-87, 93-94. Applicant argued that
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`its claimed switching facility architecture was an improvement over the edge-
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`switch connected prior art because its architecture could apply call features
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`anywhere in the PSTN, while the prior art architecture could only apply call
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`features to a local geographic area. Id., 75, 80, 84, 86-87, 93-94.
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`In response to applicant’s amendments and arguments, the ’777 patent
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`issued on July 27, 2010. Id., 33, 51. A year and a half later, applicant made similar
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`“switching facility” amendments to the claims in the ’113 patent application.
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`EX1009, 212–233. However, none of the independent Challenged Claims are
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`limited to the implementation of call features in a switching facility as they do not
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`even recite call features. A year later, that application was allowed and the ’113
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`patent issued on June 4, 2013. Id., 15.
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`However, it was well-known and standard practice to implement subscriber-
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`selected call features using intelligent servers located within, or coupled to
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`centralized “switching facility[ies]” in the PSTN. §V.E; TLP ¶¶77–78.
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Claim terms construed during inter partes review are given their broadest
`
`reasonable interpretation (BRI). 37 C.F.R. §42.100(b). Claim terms that are not
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`construed are to be given their plain and ordinary meaning to a POSA at the time
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`of the claimed invention when read in light of the specification and file history.
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`Petitioners believe the terms in the challenged claims are readily understood by a
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`POSA in light of the specification and file history and have applied them in
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`accordance with their plain and ordinary meaning. Petitioners provide additional
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`explanation of a POSA’s understanding where relevant.
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`D. A POSA’s Level of Skill in the Art
`A POSA is a hypothetical person of ordinary creativity presumed to be
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`aware of all pertinent prior art and thinking along conventional wisdom. For the
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`’113 patent, a POSA would have been an engineer or computer scientist with at
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`least a bachelor’s degree, or equivalent experience in electrical engineering, or a
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`related field, and at least three years of industry experience in the fields of analog
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`and digital communications,
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`inclusive of exposure
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`to
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`telecommunications
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`standards as applied in wired and wireless broadband networks. TLP ¶¶26–33.
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`State of the Art
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`E.
`As of the late 1990s and early 2000, the state of the art pertinent to the ’113
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`patent included web-based provisioning of user-selected call features across
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`circuit- and packet-switched networks. TLP ¶¶61–69.
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`Circuit- and Packet-Switched Networks
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`1.
`Circuit-switched networks are traditional networks for carrying voice data in
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`the form of telephone calls and operate to transfer information using dedicated
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`paths or circuits. TLP ¶50; EX1049, 58-63; EX1030, 15. A common circuit-
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`switched network is the Public Switched Telephone Network (PSTN). TLP ¶53;
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`EX1030, 15.
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`Packet-switched networks do not use dedicated paths for the transmission of
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`information. TLP ¶51–52; EX1030, 15; EX1037, 146-49. In packet-switched
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`networks, information is broken into pieces, known as packets, which are routed
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`through the network. Id.; EX1049, 58-63. A common packet-switched network is
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`the Internet. TLP ¶51; EX1049, 70-96.
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`PSTN Architecture
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`2.
`In the mid-1990s and 2000, voice-based telephone calls were traditionally
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`provided over the PSTN. TLP ¶53; EX1037, 81-92, 95-102. The PSTN has existed
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`since the 1970s and comprises a global network of circuit switches arranged in a
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`geographical hierarchy, where tandem switches serve to interconnect geographical
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`regions and edge switches connect between tandem switches and end-user devices,
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`like telephones, within a local area. TLP ¶53; EX1037, 64-69, 106-13, 119-22,
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`137-38, Fig. 4-4, 111; EX1001, 1:42-51.
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`In the traditional Bell telephone system of the 1980s, edge switches were
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`operated by local telephone service providers. TLP ¶54; EX1037, 59-62, 90-92,
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`97-100, 106-13. Calls that were required to be routed to tandem switches for
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`connection to other edge switches were known as long-distance calls and generally
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`incurred a toll. TLP ¶55; EX1037, 64, 106-13.
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`Call Components—Signaling and Media
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`3.
`Traditional telephone calls consisted of two distinct parts—signaling and
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`media. TLP ¶56; EX1037, 131-36, Fig. 8-1, 133. The signaling portion was used
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`for call setup and feature selection, and the media portion consisted of the actual
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`voice traffic. Id.; TLP ¶57; EX1051, 9-12, 22-25. Once a telephone was answered,
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`the call accept signal was used to finalize the path, or circuit, over which the voice
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`traffic (i.e. media) of the call traveled. TLP ¶57; EX1037, 95-102, Fig. 3-8, 101,
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`131-35; EX1027, 9-10. Signaling protocols, such as Signaling System 7 (SS7),
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`were used in parallel to notify the switches of a completed call. TLP ¶58–59;
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`EX1027, 1.
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`4.
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`PSTN Call Features and Intelligent Networks
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`In the late 1960s–early 1970s, AT&T developed a suite of call features,
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`implemented by the local service provider in the edge switch, which users could
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`select by dialing codes from their telephones. TLP ¶61; EX1038, 13, 66-67, 75;
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`EX1037, 60-61, 114.
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`By the early 1990s, as part of an effort to streamline the deployment of
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`additional call features and network capacity, the Intelligent Network (IN) concept
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`was developed and standardized. TLP ¶62; EX1038, 89-90. The IN took many of
`
`the functions that had traditionally been located in terminating central offices or
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`edge switches, including these call features, and moved them into dedicated
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`functional blocks that could be located anywhere in the PSTN. TLP ¶¶63–64;
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`EX1038, 29-36, 46-48, 58-59, 90-92; EX1020.
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`VoIP and Internet Telephony
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`5.
`In the 1990s, voice data for real-time communication began being carried
`
`over the Internet as packet data using the Internet Protocol (IP). TLP ¶70; EX1026,
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`3-5; EX1018; EX1024. This became known colloquially as VoIP or voice over
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`Internet Protocol. By the late 1990s, the PSTN and VoIP networks were
`
`interconnected and a single call could traverse the PSTN and the Internet or
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`another packet network. TLP ¶71; EX1026, 3-5; EX1016, 1:16-3:10; EX1018;
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`EX1025; EX1018; EX1024.
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`VI.
`
`Identification of Challenges Under 37 C.F.R. §42.104(b)
`A. Challenged Claims and Statutory Grounds for Challenges
`
`Ground ’113 Patent Claims
`1, 2, 8, 11, 15–19, 94,
`95, 102, 109–13, 128,
`163, 164, 166–168, 175,
`179, 180, 181
`1, 2, 8, 11, 15–19, 94,
`95, 102, 109–13, 128,
`168
`
`1
`
`2
`
`Basis for Challenge
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`Obvious under §103(a) by Archer
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`Obvious under §103(a) by Archer, Chang.
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`
`
`Archer was filed June 25, 1998 and issued January 27, 2004. EX1003.
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`Archer depends through divisionals to application no. 08/798,350, filed February
`
`10, 1997. Archer issued from an application filed prior to the ’113 patent and is
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`prior art under at least 35 U.S.C. §102(e).
`
`Chang was filed July 13, 1997, and issued September 28, 1999. EX1004.
`
`Chang issued from an application filed prior to the ’113 patent and is prior art to
`
`the ’113 patent under at least 35 U.S.C. §102(e). On its face, Chang is also prior art
`
`to the ’113 patent under 35 U.S.C. §102(a) because it issued as a patent before the
`
`’113 patent’s earliest stated priority date, May 4, 2000.
`
`Archer was not cited, applied by, or disclosed to the Examiner during
`
`prosecution of the ’113 patent. Chang was identified by the applicant in
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`information disclosure statements (IDS) submitted during prosecution of the ’113
`
`patent. The Examiner did not apply Chang or cite to either reference, nor did the
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`Examiner consider the combination of the teachings of Chang with Archer.
`
`VII. How the Challenged Claims are Unpatentable (37 C.F.R. §42.104(b))
`A.
`Summary of Asserted References
`1.
`Archer is directed to telephone services involving both circuit-switched
`
`Archer
`
`networks (118, 136), like the PSTN, and VOIP-capable packet networks (130), like
`
`the Internet. EX1003, 2:26-51, Fig. 2; TLP ¶99. Archer discloses systems and
`
`methods that allow users to set call features for calls over the circuit- and packet-
`
`switched networks, including call forwarding and find-me-follow-me services.
`
`EX1003, 2:26-51, 3:45-62, 4:3-16, 6:31-39; TLP ¶100. Archer teaches that users
`
`can set call features by logging onto the Internet and changing settings in a call
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`feature database (138). EX1003, 7:30-50; TLP ¶100. When the user is called, the
`
`call request is received by the call feature server (128), which accesses the database
`
`(138) and then forwards the calls based on the settings in the database (138).
`
`EX1003, 2:45-51, 6:63-7:13, 8:57-9:55, Fig. 4, Fig. 5.
`
`Chang
`
`2.
`Chang is directed to the development of a system for web-based user control
`
`of call features that are implemented using the Intelligent Network features of the
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`PSTN. EX1004, 4:45-58, 7:9-16, Fig. 1; TLP ¶103. Chang shows that users access
`
`a webserver (25, 525) over the Internet to set ca