Declaration of Dr. Thomas F. La Porta in Support of Petitioners’ Opposition to
`Patent Owner’s Contingent Motion to Amend
`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’ OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
`
`

`

`
`
`I. 
`
`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 Anticipation and Obviousness ............................. 5 
`B. 
`Legal Standards for Claim Interpretation ........................................... 14 
`C. 
`Legal Standards for a Motion to Amend ............................................ 14 
`III.  SUMMARY OF THE INSTITUTED GROUNDS AND MR.
`BATES’S OPINIONS .................................................................................. 14 
`IV.  SUMMARY OF SUBSTITUTE CLAIM 183 ............................................. 16 
`V.  MR. BATES’S OPINIONS REGARDING THE PATENTABILITY
`OF SUBSTITUTE CLAIM 183 ................................................................... 17 
`VI.  ARCHER DISCLOSES THE FIRST AND SECOND ADDED
`FEATURES .................................................................................................. 19 
`A.  Archer Discloses the First Added Feature ......................................... 20 
`B. 
`Archer Discloses the Second Added Feature ..................................... 25 
`VII.  THE NEWLY CITED ART DISCLOSES THE FIRST AND
`SECOND ADDED FEATURES .................................................................. 28 
`A. 
`Lewis Discloses the First and Second Added Features ...................... 29 
`1. 
`Lewis Discloses the First Added Feature ................................ 29 
`2. 
`Lewis Discloses the Second Added Feature ............................ 33 
`3. 
`Conclusion - Lewis Discloses the First and Second
`Added Features ........................................................................ 35 
`LaPier Discloses the First and Second Added Features ..................... 36 
`1. 
`LaPier Discloses the First Added Feature ................................ 36 
`2. 
`LaPier Discloses the Second Added Feature ........................... 39 
`3. 
`Conclusion - LaPier Discloses the First and Second
`Added Features ........................................................................ 41 
`
`A. 
`
`
`
`

`

`
`
`VIII.  MR. BATES TESTIFIED THAT HIS ANALYSIS DID NOT
`CHANGE BETWEEN ORIGINAL CLAIM 1 AND SUBSTITUTE
`CLAIM 183 .................................................................................................. 42 
`IX.  CONCLUSION ............................................................................................. 44 
`
`
`
`
`
`

`

`
`
`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 Contingent
`
`Motion to Amend in 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 2, 2017 (Ex. 2040), the clean and redlined versions of the proposed substitute
`
`claim (Ex. 2062), and the listing of Section 112 written description support for the
`
`proposed substitute claim (Ex. 2041), and to render opinions based on the testimony
`
`of Mr. Bates contained in his declaration (Id.) and in the transcripts of Mr. Bates’s
`
`
`
`
`
`1
`
`

`

`
`
`deposition taken on May 8-9, 2017 (Ex. 1059; Ex. 1060).
`
`5.
`
`After studying the Contingent Motion to Amend, its exhibits including
`
`the declaration of Mr. Bates (Ex. 2040), the transcripts of his deposition (Ex. 2059;
`
`Ex. 2060), the ‘113 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 Opposition to Patent Owner’s Contingent Motion to Amend filed by
`
`Petitioners in this case. I have reviewed the Opposition 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 Archer in view of the
`
`knowledge of a person of ordinary skill in the art (“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
`
`
`
`
`
`2
`
`

`

`
`
`of Chang and the knowledge of a POSA. My opinions are unchanged.
`
`8.
`
`As set forth herein, it is my opinion that Patent Owner has not made the
`
`required showing that Substitute Claim 183 is patentable over the cited art in the
`
`Petition and my June 24, 2016 Declaration.
`
`9.
`
`As set forth herein, it is my opinion that Patent Owner cannot show that
`
`Substitute Claim 183 is patentable over newly cited U.S. Patent No. 6,442,169 to
`
`Lewis (“Lewis”) (Ex. 1057) and U.S. Patent No. 6,333,931 to LaPier (“LaPier”) (Ex.
`
`1058).
`
`C. Materials Considered
`10. 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.
`
`11.
`
`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-
`01261, January 3, 2017 (“Institution Decision”)
`
`Patent Owner’s Contingent Motion to Amend
`
`1001 U.S. Patent No. 8,457,113 (“the ‘113 patent”)
`
`
`
`
`
`3
`
`

`

`Exhibit
`Description of Document
`No.
`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
`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
`1067 Claim Chart of Lewis Against Proposed Substitute Claim 183
`1068 Claim Chart of LaPier Against Proposed Substitute Claim 183
`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.
`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
`2040 Declaration of Regis “Bud” Bates in Support of Patent Owner’s
`Contingent Motion to Amend
`4
`
`
`
`
`
`
`
`

`

`
`
`Exhibit
`No.
`2041
`
`Description of Document
`Section 112 Written Description Support for the Proposed Substitute
`Claim
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`2057
`2061 Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`2062 Clean and Redlined Versions of the Proposed Substitute Claim
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`12.
`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 declaration.
`
`A. Legal Standards for Anticipation and Obviousness
`13. As set forth in my June 24, 2016 Declaration in this case, I have been
`
`provided the following instruction from the Model Patent Jury Instructions for the
`
`Northern District of California (July 16, 2014) for anticipation, and the Federal
`
`Circuit Bar Association Model Instructions regarding obviousness, which are
`
`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
`
`Inter Partes Review if it concludes that it is more likely than not that the claim is
`
`invalid (i.e., a preponderance-of-the- evidence standard), which is a lower burden of
`
`
`
`
`
`5
`
`

`

`
`
`proof than the “clear-and- convincing” standard that is applied in United States
`
`district court (and described in the jury instruction below):
`
`4.3a1 ANTICIPATION
`
`A patent claim is invalid if the claimed invention is not new. For the
`claim to be invalid because it is not new, all of its requirements must
`have existed in a single device or method that predates the claimed
`invention, or must have been described in a single previous publication
`or patent that predates the claimed invention. In patent law, these
`previous devices, methods, publications or patents are called “prior art
`references.” If a patent claim is not new we say it is “anticipated” by
`a prior art reference.
`
`The description in the written reference does not have to be in the
`same words as the claim, but all of the requirements of the claim must
`be there, either stated or necessarily implied, so that someone of
`ordinary skill in the field of [identify field] looking at that one reference
`would be able to make and use the claimed invention.
`
`Here is a list of the ways that [alleged infringer] can show that a
`patent claim was not new [use those that apply to this case]:
`
`[– if the claimed invention was already publicly known or publicly
`used by others in the United States before [insert date of conception
`unless at issue];]
`
`[– if the claimed invention was already patented or described in a
`
`6
`
`
`
`
`
`

`

`printed publication anywhere in the world before [insert date of
`conception unless at issue]. [A reference is a “printed publication” if it
`is accessible to those interested in the field, even if it is difficult to
`find.];]
`
`[– if the claimed invention was already made by someone else in the
`United States before [insert date of conception unless in issue], if that
`other person had not abandoned the invention or kept it secret;]
`
`[– if the claimed invention was already described in another issued
`
`U.S. patent or published U.S. patent application that was based on a
`patent application filed before [insert date of the patent holder’s
`application filing date] [or] [insert date of conception unless at issue];]
`
`[– if [named inventor] did not invent the claimed invention but instead
`learned of the claimed invention from someone else;]
`
`[– if the [patent holder] and [alleged infringer] dispute who is a first
`inventor, the person who first conceived of the claimed invention and
`first reduced it to practice is the first inventor. If one person conceived
`of the claimed invention first, but reduced to practice second, that
`person is the first inventor only if that person (a) began to reduce the
`claimed invention to practice before the other party conceived of it and
`(b) continued to work diligently to reduce it to practice. [A claimed
`invention
`is “reduced
`to practice” when
`it has been
`tested
`sufficiently to show that it will work for its intended purpose or when
`it is fully described in a patent application filed with the PTO].]
`
`7
`
`
`
`
`
`
`
`

`

`
`
`[Since it is in dispute, you must determine a date of conception for the
`[claimed invention] [and/or] [prior invention]. Conception is the
`mental part of an inventive act and is proven when the invention is
`shown in its complete form by drawings, disclosure to another or other
`forms of evidence presented at trial.]
`
`Model Patent Jury Instructions for the Northern District of California at 30-31, §
`
`4.3a1 (July 16, 2015); Ex. 1002, ¶37.
`
`4.3a2 STATUTORY BARS
`
`A patent claim is invalid if the patent application was not filed within
`the time required by law. This is called a “statutory bar.” For a patent
`claim to be invalid by a statutory bar, all of its requirements must have
`been present in one prior art reference dated more than one year before
`the patent application was filed. Here is a list of ways [alleged infringer]
`can show that the patent application was not timely filed: [choose
`those that apply]
`
`[– if the claimed invention was already patented or described in a
`printed publication anywhere in the world before [insert date that is one
`year before effective filing date of patent application]. [A reference is
`a “printed publication” if it is accessible to those interested in the field,
`even if it is difficult to find.];]
`
`[– if the claimed invention was already being openly used in the United
`States before [insert date that is one year before application filing
`date] and that use was not primarily an experimental use (a)
`8
`
`
`
`
`
`

`

`controlled by the inventor, and (b) to test whether the invention worked
`for its intended purpose;]
`
`[– if a device or method using the claimed invention was sold or
`offered for sale in the United States, and that claimed invention was
`ready for patenting, before [insert date that is one year before
`application filing date]. [The claimed invention is not being [sold] [or]
`[offered for sale] if the [patent holder] shows that the [sale] [or] [offer
`for sale] was primarily experimental.] [The claimed invention is ready
`for patenting if it was actually built, or if the inventor had prepared
`
`drawings or other descriptions of the claimed invention that were
`sufficiently detailed to enable a person of ordinary skill in the field to
`make and use the invention based on them.];]
`
`[– if the [patent holder] had already obtained a patent on the claimed
`invention in a foreign country before filing the original U.S.
`application, and the foreign application was filed at least one year
`before the U.S. application.]
`
`For a claim to be invalid because of a statutory bar, all of the claimed
`requirements must have been either (1) disclosed in a single prior art
`reference, (2) implicitly disclosed in a reference to one skilled in the
`field, or (3) must have been present in the reference, whether or not
`that was understood at the time. The disclosure in a reference does not
`have to be in the same words as the claim, but all the requirements
`must be there, either described in enough detail or necessarily implied,
`
`9
`
`
`
`
`
`
`
`

`

`
`
`to enable someone of ordinary skill in the field of [identify field]
`looking at the reference to make and use the claimed invention.
`
`Model Patent Jury Instructions for the Northern District of California at 32, § 4.3a2
`
`(July 16, 2015); Ex. 1002, ¶37
`
`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
`
`10
`
`
`
`
`
`

`

`obviousness. Most, if not all, inventions rely on building blocks of
`prior art. In considering whether a claimed invention is obvious, you
`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].
`
`11
`
`
`
`
`
`
`
`

`

`
`
`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,
`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,
`
`14.
`
`I am also informed that the United States Patent Office supplies its
`
`12
`
`¶37.
`
`
`
`
`
`

`

`
`
`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.
`
`MPEP § 2143; Ex. 1002, ¶38.
`
`
`
`
`
`13
`
`

`

`
`
`B.
`Legal Standards for Claim Interpretation
`15. As set forth in my June 24, 2016 Declaration in this case, I have been
`
`informed and 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.
`
`C. Legal Standards for a Motion to Amend
`16.
`I have been informed and understand that, in Inter Partes Review, the
`
`patent owner has the burden to show its entitlement to the proposed claim
`
`amendments, including written description support in the original disclosure and
`
`patentability over the prior art.
`
`III. SUMMARY OF THE INSTITUTED GROUNDS AND MR. BATES’S OPINIONS
`17.
`I understand that the Patent Trial and Appeal Board (“Board”) instituted
`
`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.
`
`18.
`
`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.
`
`19. With respect to Ground 1, in his declaration in support of Patent
`14
`
`
`
`
`
`

`

`
`
`Owner’s Response, Mr. Bates opined that Archer does not disclose a “web-enabled
`
`processing system” for several reasons:
`
`(a) There is no disclosure that server processor 128 performs the step
`
`of establishing voice communications between two networks nor how this step is
`
`performed; and
`
`(b)
`
` There is no disclosure of a call processing system coupled to a
`
`switching facility/tandem switch because Archer’s gateways are edge devices not
`
`switching facilities (and thus are necessarily connected to a PSTN edge switch).
`
`20. With respect to Ground 2, in his declaration in support of Patent
`
`Owner’s Response, Mr. Bates opined that Chang fails to disclose a call processing
`
`system coupled to a switching facility/tandem switch because Chang’s secure access
`
`platform 25 cannot deal with call data or receive, originate, or process a call or call
`
`request.
`
`21.
`
`In his declaration in support of Patent Owner’s Contingent Motion to
`
`Amend, Patent Owner, Mr. Bates’s opinions overlap with his opinions in his
`
`declaration in support of Patent Owner’s Response regarding Archer and Chang with
`
`respect to substitute Claim 183. In his declaration in support of Patent Owner’s
`
`Contingent Motion to Amend, Mr. Bates opines that Claim 183 is patentable over
`
`all cited art (including Archer and Chang) because the cited art either discloses a
`
`
`
`
`
`15
`
`

`

`
`
`tandem access controller or “TAC” (call processing system) external to the PSTN
`
`and thus necessarily connected to an edge switch of the PSTN, or (2) discloses a
`
`TAC (call processing system) internal to the PSTN that does not receive call requests
`
`or initiate call requests to establish a call.
`
`22. Thus, Mr. Bates’s opinions regarding the patentability of Claim 1 of the
`
`‘113 patent and substitute Claim 183 largely overlap.
`
`IV. SUMMARY OF SUBSTITUTE CLAIM 183
`23.
`In its Motion to Amend, Patent Owner proposes to amend current Claim
`
`1 of the ‘113 patent by making the following amendments:
`
`(a)
`
` Changing “a telecommunications network” to “a PSTN
`
`telecommunications network” and clarifying that the second network is “a network
`
`of PSTN tandem switches.”
`
`(b) Changing the “called party” to “a subscriber.”
`
`(c) Changing “call processing system”
`
`to “tandem access
`
`controller.”
`
`(d) Adding the limitations that the PSTN telecommunications
`
`network includes “a plurality of edge switches connected to telephones on one side
`
`and PSTN tandem switches on the other side”, “wherein the PSTN tandem switches
`
`includes the particular PSTN tandem switch”, “wherein the PSTN tandem switches
`
`
`
`
`
`16
`
`

`

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`are not the edge switches”, and “wherein the PSTN tandem switches are not directly
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`connected to any of the telephones.”
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`(e) Adding the limitation “wherein communications between the
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`tandem access controller and the particular PSTN tandem switch occur without
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`passing through any edge switches.”
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`(f) Adding the limitation of completing and processing “a call”
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`across both the network of PSTN tandem switches and the packet network by the
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`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.”
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`Mot. To Amend, Paper 31, 2-4.
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`V. MR. BATES’S OPINIONS REGARDING THE PATENTABILITY OF SUBSTITUTE
`CLAIM 183
`In Patent Owner’s Motion to Amend, Mr. Bates opined that the prior
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`24.
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`art of record and prior art known to him and the Patent Owner should be grouped
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`into two categories, external art (EXT Art) and internal art (INT Art). Ex. 2040,
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`¶¶63-64.
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`25.
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`In his declaration in support of the Motion to Amend, Mr. Bates opined
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`that EXT Art teaches “devices external to the PSTN must send or receive call
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`requests via the PSTN through an edge switch first, not a tandem switch.” Ex. 2040,
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`¶117. Mr. Bates also opined that INT Art teaches “a closed system, such that its
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`tandem switches and SCPs are not even capable of processing a call that is sent over
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`a network other than the PSTN.” Ex. 2040, ¶¶141-142.
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`26.
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`In his declaration in support of the Motion to Amend, Mr. Bates stated
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`that he “did not believe Petitioners have come forward with a single document that
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`shows something akin to a TAC connected to a tandem switch that does not
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`communicate call requests through an edge switch.” Ex. 2040, ¶145. Mr. Bates also
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`stated that he was “not aware of any such system.” Id.
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`27.
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`In his declaration, Mr. Bates also provides testimony regarding the state
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`of the art in May 2000 and what third parties were developing, including the “Baby
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`Bells”, but does not provide factual support for any of this testimony. Id.., ¶¶146-
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`149. Mr. Bates’s opinion that Substitute Claim 183 is patentable over the prior art
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`is focused on the following two features that Mr. Bates opines are not known or
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`suggested in any known prior art:
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`(a) The TAC communicates, including communication related to
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`call requests, with the tandem switch without passing through an edge switch (the
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`“First Added Feature”). Ex. 2040, ¶152.
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`(b) The TAC performs the steps of receiving a first call request
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`18
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`associated with a first call, processing a second call associated with a second call
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`request, and establishing voice communications across both a packet network and a
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`network of tandems after the second call is answered (the “Second Added Feature”).
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`Id.
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`28. However, in my opinion, these two features are present in the prior art
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`already of record in the Petition in this IPR, as well as newly cited art that I discuss
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`below. Specifically, it is my opinion that Archer, which serves as the basis for
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`Grounds 1 and 2 includes both of these features. Likewise, it is my opinion that the
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`newly cited art of U.S. Patent No. 6,442,169 to Lewis (“Lewis”) (Ex. 1058) and U.S.
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`Patent No. 6,333,931 (“LaPier”) (Ex. 1057) both disclose these two features.
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`VI. ARCHER DISCLOSES THE FIRST AND SECOND ADDED FEATURES
`29.
`In his declaration, Mr. Bates opines that Archer’s gateway 126
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`interconnecting the PSTN 118 (136) to a packet network 130 must be connected to
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`an edge switch. Ex. 2040, ¶¶84-86, 120. I disagree with his opinion.
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`30.
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`In my June 24, 2016 Declaration, I identified server processor 128 in
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`conjunction with database 138 and gateway 1261 coupled to a tandem switch in
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` 1
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` Mr. Bates incorrectly states that Archer does not use the term “gateway” with
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`respect to component 126 (or 132). See Ex. 1003, 5:34-35 (“Converter 126 can
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`19
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`PSTN 118 (136) as described in Archer as the claimed “call processing system
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`coupled to a switching facility.” Ex. 1002, ¶¶213-214, 158-164; Pet., 50, 34-35. It
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`is my opinion that these same components also correspond to the newly claimed
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`“tandem access controller (TAC) coupled to the particular PSTN tandem switch”
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`that includes the two newly added features identified above.
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`A. Archer Discloses the First Added Feature
`31.
`In my opinion, a POSA would understand that Archer discloses the
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`First Added Feature as server processor 128 communicates with the tandem switch
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`in PSTN 118 (136) via gateway 126 and without passing through an edge switch.
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`As I outline below, a POSA would understand that Archer’s gateway 126 is not an
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`
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`also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
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`gateway (i.e. converter 126) . . .”). Moreover, Mr. Bates’s reliance on Archer’s
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`other nomenclature for the same component (“converter”) as indicating that
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`gateway 126 only converts signals between analog and digital formats is also
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`incorrect as Archer explicitly discloses that gateway 126 may “convert” or
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`“translate” circuit-switched digital voice (PCM) into multiple encoding schemes
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`and digital packets suitable for packet networks (e.g. IP packets). See id., 5:27-28;
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`5:59-62; 6:7-9; 8:18-21; 9:14-15; 11:23-25.
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`edge device or an edge switch and communicates on the PSTN using SS7 signaling
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`and a digital voice protocol used by PSTN tandem switches.
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`32.
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`In my opinion, Archer discloses that gateway 1262, passes information
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`(e.g. voice and signaling) through it, and sends and receives such information in
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`digital formats3 (e.g. PCM voice and IP voice packets). Ex. 1003, 5:10-11 (“Circuit-
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`switched network 118 can be . . . a digital network”); 5:23-27 (“[T]he heart of most
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`telephone networks today is digital.”); 5:33-35; 5:42-46; 5:59-62 (“PSTN-to-IP
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`network gateway (i.e. converter 126) should be able to support the translation of
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` 2
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` During his deposition, which I attended, Mr. Bates acknowledged that there is no
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`such thing as an “edge switch” in IP networks. Ex. 1059, 110:9-13; 114:17-20;
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`178:21-24. T