Declaration of Dr. Thomas F. La Porta in Support of Petitioners’ Reply
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`
`
`
`
`
`
`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
`
`
`
`Case IPR2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`
`
`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`Bright House Networks – Ex. 1065, Page 1
`
`

`

`II. 
`
`TABLE OF CONTENTS
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A. 
`Engagement Overview ......................................................................... 1 
`B. 
`Summary of Opinions .......................................................................... 2 
`C.  Materials Considered ............................................................................ 3 
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 5 
`A. 
`Legal Standards for Obviousness ......................................................... 5 
`B. 
`Legal Standards for Claim Interpretation ........................................... 10 
`III.  THE CHALLENGED CLAIMS ARE OBVIOUS OVER ARCHER
`(GROUND 1) AND OVER ARCHER IN VIEW OF CHANG
`(GROUND 2) ................................................................................................ 11 
`A.  Archer Discloses a Gateway Interconnecting a “Web-enabled
`Processing System” on an IP Network to a Tandem Switch in
`the PSTN ............................................................................................ 12 
`A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch
`or PSTN Edge Switch and Without any Technical Differences ........ 16 
`C.  Archer in view of Chang (Ground 2) Discloses a Gateway
`Interconnecting a Controller on an IP Network to a Tandem
`Switch in the PSTN ............................................................................ 23 
`D.  Archer Discloses a Controller Establishing the Voice
`Communication Between the Calling Party and the Called Party
`After the Call is Completed ................................................................ 26 
`Conclusion - Grounds 1 and 2 Disclose All of the Limitations
`of the Challenged Claims Even Under Patent Owner’s
`Constructions ...................................................................................... 28 
`IV.  THE CHALLENGED CLAIMS ARE OBVIOUS OVER GROUND 1
`AND GROUND 2 UNDER THE BROADEST REASONABLE
`INTERPRETATION OF THE CLAIMS IN VIEW OF THE
`SPECIFICATION ......................................................................................... 29 
`A. 
`The Term “Switching Facility” Was Introduced for the First
`Time During Prosecution of the ‘777 Patent ...................................... 29 
`
`B. 
`
`E. 
`
`
`
`I. 
`
`
`
`Bright House Networks – Ex. 1065, Page 2
`
`

`

`D. 
`
`B.  Mr. Bates’s Alleged Evidence of Disclaimer in the
`Specification Refers to “Preferred” Embodiments or Systems
`Rather Than “the Invention” or the “Present Invention” ................... 30 
`C.  A POSA Would Understand that the Applicant Broadly
`Defined “Switching Facilities” During Prosecution and
`Explicitly Varied the Location and Function of “Switching
`Facilities” Between Different Claims ................................................ 33 
`The Broadest Reasonable Interpretation of “Switching Facility”
`/ “Tandem Switch” is Not “PSTN Tandem Switch” .......................... 38 
`The Broadest Reasonable Interpretation of “Coupled To” is Not
`“Connected to Without an Intervening Edge Switch” ....................... 39 
`The Broadest Reasonable Interpretation of “Tandem Access
`Controller” is Not “A Controller Connected to a PSTN Tandem
`Switch Without an Intervening Edge Switch” ................................... 40 
`CONCLUSION ............................................................................................. 41 
`
`E. 
`
`F. 
`
`
`
`V. 
`
`
`
`
`
`Bright House Networks – Ex. 1065, Page 3
`
`

`

`
`
`1.
`
`2.
`
`I, Thomas F. La Porta, declare as follows:
`
`I have personal knowledge of the facts stated in this declaration, and
`
`could and would testify to these facts under oath if called upon to do so.
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Bright House Networks, LLC,
`
`WideOpenWest Finance, LLC, Knology of Florida,
`
`Inc., and Birch
`
`Communications, Inc. (“Petitioners”) in this case as an expert in the relevant art. I
`
`previously provided a declaration in this case in support of the Petition setting forth
`
`my opinions regarding the state of the art and invalidity of the challenged claims. I
`
`am being compensated for my work at the rate of $550 per hour. No part of my
`
`compensation is contingent upon the outcome of this petition.
`
`4.
`
`I was asked to study the Patent Owner’s April 3, 2017 Response to
`
`Petitioners’ Petition for Inter Partes Review of U.S. Patent No. 8,457,113 (“the ‘113
`
`patent”), and its exhibits including the declaration of Regis J. “Bud” Bates dated
`
`April 1, 2017 (Ex. 2022), and to render opinions based on the testimony of Mr. Bates
`
`contained in his declaration (Id.) and in the transcripts of Mr. Bates’s deposition
`
`taken on May 8-9, 2017 (Ex. 1059; Ex. 1060).
`
`5.
`
`After studying the Response, its exhibits including the declaration of
`
`Mr. Bates (Ex. 2022), the transcripts of his deposition (Ex. 2059; Ex. 2060), the ‘113
`
`
`
`
`1
`
`Bright House Networks – Ex. 1065, Page 4
`
`

`

`
`
`patent (Ex. 1001), its file history (Ex. 1009) and the file history of related U.S. Patent
`
`No. 7,764,777 (“the ‘777 patent”) (Ex. 1010), the prior art, and considering the
`
`subject matter of the claims of the ‘113 patent in light of the state of technical
`
`advancement in the area of telephony in circuit-switched and packet-switched
`
`networks in May 2000, I reached the conclusions discussed herein.
`
`6.
`
`This declaration, and the conclusions and opinions herein, provide
`
`support for the Reply to Patent Owner’s Response filed by Petitioners in this case. I
`
`have reviewed the Reply in its entirety as well as its corresponding exhibits.
`
`B.
`7.
`
`Summary of Opinions
`As set forth in my June 24, 2016 Declaration in this case, it is my
`
`opinion that claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, 163, 164, 166-168,
`
`175, 179, 180, 181 of the ‘113 patent are obvious over Ground 1 (Archer in view of
`
`the knowledge of a POSA). As also set forth in my June 24, 2016 Declaration, it is
`
`also my opinion that claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, and 168 of
`
`the ‘113 patent are obvious over Ground 2 (Archer in view of Chang and the
`
`knowledge of a POSA)1. My opinions are unchanged.
`
`
`
` 1
`
` In my declaration, I collectively refer to the claims challenged in the Petition as
`
`the “Challenged Claims”.
`
`
`
`
`2
`
`Bright House Networks – Ex. 1065, Page 5
`
`

`

`
`
`8.
`
` A POSA in May 2000 understood that an IP network converging with
`
`the PSTN could be connected to either a PSTN tandem switch or PSTN edge switch
`
`and without any technical differences and understood the advantages of connecting
`
`to a PSTN tandem switch instead of a PSTN edge switch.
`
`9.
`
`Claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, 163, 164, 166-168,
`
`175, 179, 180, 181 of the ‘113 patent are obvious over Ground 1 under the broadest
`
`reasonable
`
`interpretation of
`
`the claims and under Mr. Bates’s proposed
`
`constructions.
`
`10. Claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, and 168 of the
`
`‘113 patent are obvious over Ground 2 under the broadest reasonable interpretation
`
`of the claims and under Mr. Bates’s proposed constructions.
`
`C. Materials Considered
`11. My analysis is based on my education and experience as set out in my
`
`June 24, 2016 declaration in this case (Ex. 1002) and in my curriculum vitae (Ex.
`
`1053), including the documents I have read and authored and systems I have
`
`developed and used since then.
`
`12.
`
`In addition to the materials set forth in my June 24, 2016 Declaration
`
`in this case (Ex. 1002), I have reviewed the following:
`
`Exhibit
`No.
`
`
`
`
`
`Description of Document
`
`Decision Granting Institution of Inter Partes Review No. IPR2016-
`3
`
`Bright House Networks – Ex. 1065, Page 6
`
`

`

`
`
`
`
`
`Exhibit
`No.
`
`Description of Document
`01261, January 3, 2017 (“Institution Decision”)
`Patent Owner’s Response in IPR2016-01261
`
`1001 U.S. Patent No. 8,457,113 (“the ‘113 patent”)
`1003 U.S. Patent No. 6,683,870 to Archer (“Archer”)
`1004 U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`1006 U.S. Patent No. 7,764,777 (“the ‘777 patent”)
`1007 U.S. Patent No. 8,115,298 (“the ‘298 patent”)
`1009
`File history of U.S. Patent No. 8,457,113
`1010
`File history of U.S. Patent No. 7,764,777
`1055 U.S. Patent No. 6,574,328
`1056 U.S. Patent No. 7,324,635
`1057 U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`1058 U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`1059 May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`1060 May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`1061 March 1, 2017 Transcript of Deposition of Mr. Willis in IPR2016-
`01254, IPR2016-01257
`2001 Declaration of Regis J. “Bud” Bates filed with Preliminary Response
`2002 Ray Horak, Communications Systems and Networks (2nd ed. 2000)
`2003 Ray Horak, Webster’s New World Telecom Dictionary (2008)
`2004 Ray Horak, Telecommunications and Data Communications (2007)
`2005
`Prosecution History of U.S. Patent No. 7,764,777
`2006 Harry Newton, Newton’s Telecom Dictionary (23rd ed. 2007)
`2019 Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR 2016-
`01259, -01261, -01262, and -01263.
`
`4
`
`Bright House Networks – Ex. 1065, Page 7
`
`

`

`
`
`Description of Document
`
`Exhibit
`No.
`2020 Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR 2016-
`01259, -01261, -01262, and -01263.
`2022 Declaration of Regis J. “Bud” Bates in Support of Patent Owner’s
`Response
`2042 U.S. Pat. App. No. 11/948, 965, filed on November 20, 2007
`(annotations added by Patent Owner)
`2043 U.S. Pat. App. No. 10/426,279, filed on April 30, 2003 (annotations
`added by Patent Owner)
`2044 U.S. Pat. App. No. 09/565,565, filed on May 4, 2000 (annotations
`added by Patent Owner)
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`13.
`In addition to the legal principles set forth in my June 24, 2016
`
`Declaration in this case (Ex. 1002, ¶¶25-38), attorneys for the Petitioners explained
`
`additional legal principles to me that I have relied upon in forming my opinions set
`
`forth in this report.
`
`A. Legal Standards for Obviousness
`14. As set forth in my June 24, 2016 Declaration in this case, I have been
`
`provided the following instructions from the Federal Circuit Bar Association Model
`
`Instructions regarding obviousness, which is reproduced in part below. I apply this
`
`understanding in my analysis, with the caveat that I have been informed that the
`
`Patent Office will find a patent claim invalid in an Inter Partes review if it concludes
`
`that it is more likely than not that the challenged claim is invalid (i.e., a
`5
`
`
`
`
`Bright House Networks – Ex. 1065, Page 8
`
`

`

`
`
`preponderance-of-the- evidence standard), which is a lower burden of proof than the
`
`“clear-and- convincing” standard that is applied in United States district court (and
`
`described in the jury instruction below):
`
`4.3c OBVIOUSNESS
`
`Even though an invention may not have been identically disclosed or
`described before it was made by an inventor, in order to be patentable,
`the invention must also not have been obvious to a person of ordinary
`skill in the field of technology of the patent at the time the invention
`was made.
`
`[Alleged infringer] may establish that a patent claim is invalid by
`showing, by clear and convincing evidence, that the claimed invention
`would have been obvious to persons having ordinary skill in the art at
`the time the invention was made in the field of [insert the field of the
`invention].
`
`In determining whether a claimed invention is obvious, you must
`consider the level of ordinary skill in the field [of the invention] that
`someone would have had at the time the [invention was made] or
`[patent was filed], the scope and content of the prior art, and any
`differences between the prior art and the claimed invention.
`
`Keep in mind that the existence of each and every element of the
`claimed invention in the prior art does not necessarily prove
`obviousness. Most, if not all, inventions rely on building blocks of
`prior art. In considering whether a claimed invention is obvious, you
`
`
`
`
`6
`
`Bright House Networks – Ex. 1065, Page 9
`
`

`

`
`
`
`
`
`may but are not required to find obviousness if you find that at the
`time of the claimed invention [or the patent’s filing date] there was a
`reason that would have prompted a person having ordinary skill in the
`field of [the invention] to combine the known elements in a way the
`claimed invention does, taking into account such factors as (1) whether
`the claimed invention was merely the predictable result of using
`prior art elements according to their known function(s); (2) whether the
`claimed invention provides an obvious solution to a known problem in
`the relevant field; (3) whether the prior art teaches or suggests the
`desirability of combining elements claimed in
`the invention; (4)
`whether the prior art teaches away from combining elements in the
`claimed invention; (5) whether it would have been obvious to try the
`combinations of elements, such as when there is a design need or
`market pressure to solve a problem and there are a finite number of
`identified, predictable solutions; and (6) whether the change resulted
`more from design incentives or other market forces. To find it
`rendered the invention obvious, you must find that the prior art
`provided a reasonable expectation of success. Obvious to try is not
`sufficient in unpredictable technologies.
`
`In determining whether the claimed invention was obvious, consider
`each claim separately. Do not use hindsight, i.e., consider only what
`was known at the time of the invention [or the patent’s filing date].
`
`In making these assessments, you should take into account any
`objective evidence (sometimes called “secondary considerations”) that
`may shed light on the obviousness or not of the claimed invention,
`
`7
`
`Bright House Networks – Ex. 1065, Page 10
`
`

`

`
`
`such as:
`
`(a) Whether the invention was commercially successful as a result of
`the merits of the claimed invention (rather than the result of design
`needs or market-pressure advertising or similar activities);
`
`(b) Whether the invention satisfied a long-felt need;
`
`(c) Whether others had tried and failed to make the invention;
`
`(d) Whether others invented the invention at roughly the same time;
`
`(e) Whether others copied the invention;
`
`(f) Whether there were changes or related technologies or market
`needs contemporaneous with the invention;
`
`(g) Whether the invention achieved unexpected results;
`
`(h) Whether others in the field praised the invention;
`
`(i) Whether persons having ordinary skill in the art of the
`invention expressed surprise or disbelief regarding the invention;
`
`(j) Whether others sought or obtained rights to the patent from
`the patent holder; and
`
`(k) Whether the inventor proceeded contrary to accepted wisdom
`in the field.
`
`Federal Circuit Bar Association Model Jury Instructions §4.3c (2014); Ex. 1002,
`
`¶37.
`
`
`
`
`8
`
`Bright House Networks – Ex. 1065, Page 11
`
`

`

`
`
`15.
`
`I am also informed that the United States Patent Office supplies its
`
`examining corps with a Manual of Patent Examining Procedure that provides
`
`exemplary rationales that may support a conclusion of obviousness and I apply
`
`these principles in my analysis below, including:
`
`(a) Combining prior art elements according to known methods to yield
`predictable results;
`
`(b) Simple substitution of one known element for another to obtain
`predictable results;
`
`(c) Use of known technique to improve similar devices (methods, or
`products) in the same way;
`
`(d) Applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`
`(e) “Obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`
`(f) Known work in one field of endeavor may prompt variations of it
`for use in either the same field or a different one based on design
`incentives or other market forces if the variations are predictable to
`one of ordinary skill in the art; or
`
`(g) Some teaching, suggestion, or motivation in the prior art that
`would have led one of ordinary skill to modify the prior art reference
`or to combine prior art reference teachings to arrive at the claimed
`invention.
`
`9
`
`
`
`
`Bright House Networks – Ex. 1065, Page 12
`
`

`

`
`
`MPEP § 2143; Ex. 1002, ¶38.
`
`B.
`Legal Standards for Claim Interpretation
`16. As set forth in my June 24, 2016 Declaration in this case, I understand
`
`that, in Inter Partes Review, the claim terms are to be given their broadest reasonable
`
`interpretation (BRI) in light of the specification. Ex. 1002, ¶36.
`
`17.
`
`I have been informed and understand that the plain meaning of a claim
`
`term can be disclaimed or disavowed by the prosecution history or the specification
`
`of the patent. Counsel has advised me that a disclaimer must be “clear and
`
`unmistakable” to a person of ordinary skill in the art (“POSA”) in order to take
`
`effect. I understand that such disavowal must be, among other things, so
`
`unmistakable as to be unambiguous evidence of disclaimer.
`
`18.
`
`I have been informed and understand that such disavowal does not arise
`
`merely by criticizing a particular embodiment that is encompassed in the plain
`
`meaning of a claim term. I also have been informed and understand that such
`
`disavowal also does not arise merely because all the embodiments of the invention
`
`disclosed in the specification contain a particular limitation.
`
`19.
`
`I further have been informed and understand that the fact that a patent
`
`indicates that a preferred embodiment improves upon various identified problems in
`
`prior art systems, or can achieve several objectives, does not, without a clear and
`
`unmistakable disclaimer, require that each of the claims be limited to systems that
`10
`
`
`
`
`Bright House Networks – Ex. 1065, Page 13
`
`

`

`
`
`improve upon each of these problems or achieve all of these objectives.
`
`20.
`
`I also have been informed and understand that a patentee may define a
`
`claim term either in the written description of the patent or in the prosecution history.
`
`I further have been informed and understand that a patentee’s definition (whether
`
`part of a narrowing or broadening amendment and whether narrower or broader than
`
`the common meaning) is always relevant to claim interpretation because it indicates
`
`the meaning that the inventor ascribed to the term.
`
`21.
`
`I have additionally been informed and understand that the Patent Owner
`
`bears the burden of establishing the existence of a disclaimer.
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS OVER ARCHER (GROUND 1) AND
`OVER ARCHER IN VIEW OF CHANG (GROUND 2)
`I understand that the Patent Trial and Appeal Board (“Board”) instituted
`
`22.
`
`this Inter Partes review (“IPR”) on Ground 1 (Archer (Ex. 1003) in view of the
`
`knowledge of a POSA) as to claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128,
`
`163, 164, 166-168, 175, 179, 180, 181 of the ‘113 patent. Institution Decision, Paper
`
`19, January 3, 2017. I also understand that the Board instituted this IPR on Ground
`
`2 (Archer in view of Chang (Ex. 1004)) as to claims 1, 2, 8, 11, 15-19, 94, 95, 102,
`
`109-113, 128, and 168 of the ‘113 patent. Id.
`
`23. As set forth in my June 24, 2016 Declaration in this case, it is my
`
`opinion that claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, 163, 164, 166-168,
`
`
`
`
`11
`
`Bright House Networks – Ex. 1065, Page 14
`
`

`

`
`
`175, 179, 180, 181 of the ‘113 patent are obvious over Archer in view of the
`
`knowledge of a POSA. As also set forth in my June 24, 2016 Declaration, it is also
`
`my opinion that claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, and 168 of the
`
`‘113 patent are obvious over Archer in view of Chang and the knowledge of a POSA.
`
`My opinions are unchanged.
`
`A. Archer Discloses a Gateway Interconnecting a “Web-enabled
`Processing System” on an IP Network to a Tandem Switch in the
`PSTN
`In his declaration, Mr. Bates opines that Archer’s gateway 126
`
`24.
`
`interconnecting the PSTN 118 (136) to a packet network 130 must be connected to
`
`an edge switch. Ex. 2022, ¶¶73-75, 86-89. I disagree with his opinion.
`
`25. As outlined in my June 24, 2016 Declaration, Archer discloses that
`
`
`
`
`12
`
`Bright House Networks – Ex. 1065, Page 15
`
`

`

`
`
`gateway 1262, that is coupled to server processor 1283, passes information (e.g. voice
`
`and signaling) between the PSTN 118 (136) and a packet network 130 (e.g. IP
`
`network). Ex. 1002, ¶¶133-165, 174-178, 189-192; Pet., 26-36, 39-40, 43-44.
`
`
`
` 2
`
` Mr. Bates incorrectly states that Archer doesn’t use the term “gateway” with
`
`respect to component 126 (or 132) is inaccurate. See Ex. 1003, 5:34-35
`
`(“Converter 126 can also be referred to as a gateway.”), 5:59-60 (“In general
`
`PSTN-to-IP network gateway (i.e. converter 126) . . .”). Moreover, Mr. Bates’s
`
`reliance on Archer’s other nomenclature for the same component (“converter”) as
`
`indicating that gateway 126 only converts signals between analog and digital
`
`formats is also incorrect as Archer explicitly discloses that gateway 126 may
`
`“convert” or “translate” circuit-switched digital voice (PCM) into multiple
`
`encoding schemes and digital packets suitable for packet networks (e.g. IP
`
`packets). See id., 5:27-28; 5:59-62; 6:7-9; 8:18-21; 9:14-15; 11:23-25.
`
`3 During his deposition, which I attended, Mr. Bates acknowledged that there is no
`
`such thing as an “edge switch” in IP networks. Ex. 1059, 110:9-13; 114:17-20;
`
`178:21-24. Thus, his opinion (Ex. 2022, ¶¶103-105) that Archer’s server processor
`
`128 (which is clearly on an IP network) is an edge switch is nonsensical. Ex. 1003,
`
`FIGS. 2, 6; 6:6-9; 6:51-53.
`
`
`
`
`13
`
`Bright House Networks – Ex. 1065, Page 16
`
`

`

`
`
`26. Specifically, in my opinion, Archer discloses that PSTN-to-IP network
`
`gateway 126 would be connected to a tandem switch in the PSTN 118 (136) because
`
`it receives voice from the PSTN as pulse coded modulation (PCM) which is used by
`
`a tandem switch but not an edge switch. Ex. 1002, ¶¶133-165, 174-178, 189-192;
`
`Pet., 26-36, 39-40, 43-44; Ex. 1003, 5:59-62 (“PSTN-to-IP network gateway (i.e.
`
`converter 126) should be able to support the translation of PCM to multiple encoding
`
`schemes to interwork with software from various vendors.”)4; see 5:10-11 (“Circuit-
`
`switched network 118 can be . . . a digital network”), 5:23-27 (“[T]he heart of most
`
`telephone networks today is digital.”), 5:33-35, 5:42-46.
`
`27.
`
`In his declaration and during his deposition, Mr. Bates confirmed that
`
`digital PCM protocol is used by a tandem switch and would overcome the
`
`transmission loss and impairment problems identified in the specification of the ‘113
`
`patent at col. 1, lines 59-65. Ex. 1059, 22:23-23:8; 26:7-15; Ex. 2022, ¶45.
`
`28. Therefore, Mr. Bates’s opinion expressed in his declaration (Ex. 2022,
`
`
`
` 4
`
` In my opinion, Mr. Bates ignores the explicit disclosure in Archer when he
`
`incorrectly asserts that Archer discloses that PSTN-to-IP network gateway 126
`
`only receives analog signals over analog lines. Ex. 2022, ¶¶73-75, 86-89, 91-92;
`
`Ex. 1003, 5:59-62, 5:33-35, 5:42-46.
`
`
`
`
`14
`
`Bright House Networks – Ex. 1065, Page 17
`
`

`

`
`
`¶¶73-75, 86-89) that Archer’s gateway 126 interconnecting the PSTN 118 (136) to
`
`a packet network 130 must be connected to an edge switch, ignores the express
`
`teachings of Archer and is inconsistent with his own testimony during his deposition.
`
`Supra ¶¶22-24; Ex. 2019, 267:19-268:4; 271:2-273:12.
`
`29. Rather, as outlined in my June 24, 2016 declaration, a POSA would
`
`understand that Archer discloses that server processor 128 is coupled to a PSTN
`
`tandem switch in PSTN 118 (136) via PSTN-to-IP network gateway 126. Ex. 1002,
`
`¶¶135-142, 157, 159-162; Pet., 26-29, 33-35; Ex. 2019, 267:19-268:4; 271:2-
`
`273:12; Ex. 1059, 22:23-23:8; 26:7-15; Ex. 2022, ¶45.
`
`30. Additionally, even if the claims are narrowed as urged by Patent Owner
`
`such that “switching facility” can only be a PSTN tandem switch, and not a gateway,
`
`and that “call processing system” must be directly connected to such a PSTN tandem
`
`switch, it is my opinion that Archer discloses this architecture.
`
`31. As shown in annotated Figure 2 below, in my opinion, Archer discloses
`
`a tandem access controller (gateway 126 and server processor 128 and database 138
`
`(annotated in purple)) interconnecting an IP network (annotated in blue below) to
`
`the PSTN (annotated in green) through a PSTN tandem switch (annotated in green
`
`
`
`
`15
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`Bright House Networks – Ex. 1065, Page 18
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`and as set forth supra)):
`
`Ex. 1003, Figures 2 (annotated above), 6; Ex. 1002, ¶¶155-163, 212-213, 217–20,
`PSTN
`PSTN tandem
`switch
`PCM
`
`TAC
`
`PCM
`SS7
`
`SS7
`
`IP network
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`224; Pet. 33-34, 50-53; Ex. 2019, 267:19-268:4; 271:2-273:12; Ex. 1059, 22:23-
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`23:8; 26:7-15; Ex. 2022, ¶45.
`
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch and Without any Technical Differences
`In his declaration, Mr. Bates opines that (1) Archer discloses gateway
`
`32.
`
`must be connected to the PSTN through a PSTN edge switch and therefore the
`
`gateway is an “edge device”; (2) Archer does not inherently disclose that its gateway
`
`is connected to a tandem switch; and (3) it would not be obvious to connect Archer’s
`
`gateways to a tandem switch. Ex. 2022, ¶¶84-89.
`
`33. Each of Mr. Bates’s opinions regarding Archer stem from his opinion
`
`
`
`
`16
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`that the state of the art taught that devices external to the PSTN must receive or send
`
`call requests via the PSTN through an edge switch first, not a tandem switch. Ex.
`
`2022, ¶68. In my opinion, Mr. Bates inaccurately represents the state of the art in
`
`May 2000. I also disagree with each of his opinions regarding Archer.
`
`34.
`
`It is my opinion that a POSA in May 2000 understood that PSTN and
`
`IP networks could be interconnected at the tandem level and doing so posed no
`
`technical challenges over interconnecting such networks at a different switch such
`
`as a PSTN end office switch.
`
`35. For example, as illustrated in U.S. Patent No. 6,442,169 to Lewis
`
`(“Lewis”) (Ex. 1057) and U.S. Patent No. 6,333,931 (“LaPier”) (Ex. 1058)5, a POSA
`
`understood that interconnecting the PSTN to a packet switched network through a
`
`tandem switch, or an edge switch, provided maximum flexibility.
`
`36.
`
`For example, as illustrated in Figures 4 and 5 (annotations added
`
`below), it is my opinion that Level 3’s patent to Lewis (Ex. 1057) discloses a tandem
`
`access controller (open architecture switch 502 annotated in purple) interconnecting
`
`
`
` 5
`
` The assignee of Lewis is Level 3 Communications, Inc. (“Level 3”) and the
`
`assignee of LaPier is Cisco Technology, Inc. (“Cisco”). In May 2000, Cisco and
`
`Level 3 were two of the major industry players in converging networks.
`
`
`
`
`17
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`
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`an IP network (blue) to the PSTN (annotated in green) through a PSTN tandem
`
`switch (AT 106) (annotated in green) and separately also through an edge switch
`
`(EO 104) (annotated in green)).
`
`
`
`PSTN
`PSTN tandem
`switch 106
`
`PSTN edge
`switch 104
`
`SS7
`
`PCM
`
`TAC 502
`
`IP network
`
`
`
`
`
`
`18
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`Bright House Networks – Ex. 1065, Page 21
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`

`

`
`
`PSTN
`
`SS7
`
`PCM
`
`TAC 502
`
`IP network
`
`Ex. 1057, Figures 4-5 (annotated above), 9A, 10A, 10C, 18A-18B, 12:50-56, 15:7-
`
`23, 19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21, 26:9-14, 29:44-51, 30:4-35.
`
`37. Likewise, in my opinion, Cisco’s patent to LaPier (Ex. 1058) discloses
`
`a tandem access controller (Network Access Server (NAS) 118a and Signaling
`
`Access Server 112 annotated in purple) interconnecting an IP network (blue) to the
`
`PSTN (green) through a PSTN tandem switch 114 (and separately also through an
`
`edge switch 116) as shown in Figure 1B (annotations added below).
`
`
`
`
`19
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`

`
`
`TAC
`
`SS7
`
`PSTN
`
`PSTN tandem
`switch 114
`PSTN edge
`switch 116
`
`SS7
`
`PCM
`
`IP network
`
`Ex. 1058, Figures 1B (annotated above), 1C, 7A, 7B, 4:58-5:4, 6:55-62, 9:18-22,
`
`8:61-9:7, 9:26-29, 14:3-11, 35:13-16, 35:54-62, 38:13-40, 38:51-62.
`
`38. Mr. Bates’s contrary opinion—a POSA in May 2000 would understand
`
`that the state of the art taught that devices external to the PSTN must receive or send
`
`call requests via the PSTN through an edge switch first, not a tandem switch—is
`
`simply inaccurate. Ex. 2022, ¶68. During his deposition, Mr. Bates acknowledged
`
`that, in preparing his declarations, he did not actively research the state of the art
`
`
`
`
`20
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`
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`with respect to converging IP and PSTN networks (as recited in the Challenged
`
`Claims). Ex. 1059, 192:11-14.
`
`39. Mr. Bates cited no factual support for his own opinion. Ex. 2022, ¶68.
`
`Additionally, his citations to my testimony during my deposition, and to the
`
`deposition testimony of experts of other Petitioners in different Inter Partes
`
`Reviews, were taken out of context. Ex. 2022, ¶68.
`
`40. During my deposition, I testified that Mr. Bates’s opinion—that devices
`
`external to the PSTN in May 2000 could only connect to the PSTN through an edge
`
`switch first—is inaccurate with respect to converging PSTN and IP networks. See,
`
`e.g., Ex. 2019, 350:4-24. Mr. Willis’s (expert in other Inter Partes Reviews)
`
`deposition testimony was consistent with my testimony and contrary to Mr. Bates’s
`
`opinion. See, e.g., Ex. 1061, 80:9-20.
`
`41. When presented with this conflicting testimony during his deposition,
`
`Mr. Bates acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Ex. 1059, 201:22-202:11, 205:15-206:16, 211:21-
`
`213:14.
`
`42. As shown in the examples above, it is my opinion that the state of the
`
`art prior to May 2000 included systems in which devices external to the PSTN (e.g.
`
`on an IP network) sent and received call requests via the PSTN through controllers
`
`on IP networks connected to PSTN tandem switches (and not PSTN edge switches)
`21
`
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`
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`Bright House Networks – Ex. 1065, Page 24
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`
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`via gateways (e.g. Archer). It is my opinion that the state of the art prior to May
`
`2000 also included systems in which controllers connected to PSTN tandem
`
`switches (and not PSTN edge switches) (e.g. Lewis, LaPier).
`
`43. Moreover, as demonstrated by LaPier (Ex. 1058) and Lewis (Ex. 1057),
`
`it is my opinion that interconnecting PSTN and IP networks at the tandem level was
`
`well known and posed no technical challenges over interconnecting such networks
`
`at a different switch such as a PSTN end office switch. Ex. 1057, Figures 4, 5, 15:7-
`
`23, 19:24-28, 19:54-61; Ex. 1058, 1B, 1C, 6:55-62.
`
`44.
`
`In my opinion, both LaPier (Fig 1B) and Lewis (Fig 4, Fig. 5) show a
`
`web-enabled processing system or controller that performs call processing
`
`connecting to a tandem switch. A POSA understood in May 2000 that this
`
`architecture allows these systems to direct routing services (e.g. call completion,
`
`screening, specialized forwarding, blocking, etc.) directly from the tandem, as
`
`opposed to requiring the call to reach an edge switch or edge device for
`
`forwarding. This architecture provides several advantages that were known to a
`
`POSA in May 2000. Ex. 1002, ¶¶164-165, 169-173.
`
`45. For example, a POSA understood that if edge devices connected to the
`
`PSTN via analog lines are used to forward calls, the quality of the voice will be
`
`degraded by traversing the analog lines twice and having to be re-coded. Id.
`
`Additionall