Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC,
`
`
`
`
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`
`
`Patent Owner
`
`________________
`
`
`Case IPR2016-01261
`Patent Number: 8,457,113
`________________
`
`
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT
`OF PATENT OWNER’S CONTINGENT MOTION TO AMEND
`CLAIM 1 OF U.S. PATENT NO. 8,457,113
`
`
`
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC,
`
`
`
`
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`
`
`Patent Owner
`
`________________
`
`
`Case IPR2016-01261
`Patent Number: 8,457,113
`________________
`
`
`
`
`PATENT OWNER FOCAL IP, LLC’S REPLY IN SUPPORT
`OF PATENT OWNER’S CONTINGENT MOTION TO AMEND
`CLAIM 1 OF U.S. PATENT NO. 8,457,113
`
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`
`
`TABLE OF CONTENTS
`
`Paper No. 43
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE SUBSTITUTE CLAIM IS PATENTABLE OVER ARCHER .............. 1
`
`III. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LEWIS .................. 6
`
`IV. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LAPIER ................ 9
`
`V.
`
`THE SUBSTITUTE CLAIM IS PATENTABLE AND NOT OBVIOUS ... 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`UPDATED LIST OF EXHIBITS
`
`2001
`
`2002
`2003
`2004
`
`2005
`
`2006
`2007
`
`2008
`
`2009
`
`2010
`2011
`
`2019
`
`2020
`
`2021
`
`2022
`2023
`2024
`2025
`2026
`
`
`
`
`
`7,764,777
`
`of U.S. Patent No.
`
`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed. 2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district court
`litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-2, filed
`08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for
`IPR2016-01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for
`IPR2016-01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Deposition Transcript of Mr. Willis, Mar. 1, 2017, for IPR2016-
`01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Declaration of Dr. La Porta in support of the Petition, Ex. 1002 of
`IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
`
`iii
`
`
`
`
`
`Paper No. 43
`
`2028
`
`2029
`
`2030
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`
`Case IPR2016-01261
`Patent 8,457,113
`2027
`Declaration of Mr. Willis in support of the Petition, Ex. 1002 of
`IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Deposition Transcript of Dr. Lavian, March 29, 2017, for
`IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Declaration of Dr. Lavian in support of the Petition, Ex. 1002 of
`IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated with
`line numbers)
`U.S. Pat. No. 4,646,296 (filed on July 9, 1984)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924
`to Shtivelman
`(“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi, and
`Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
`
`2045
`2046
`2047
`2048
`2049
`2050
`2051
`2052
`
`2053
`2054
`2055
`
`2056
`2057
`2058
`2059
`2060
`
`
`
`iv
`
`
`
`
`
`Paper No. 43
`
`
`Case IPR2016-01261
`Patent 8,457,113
`2061
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Declaration of Thomas La Porta in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,457,113, June 23, 2016,
`submitted in support of IPR2016-01261
`Declaration of Dr. Tal Lavian in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,764,777, June 23, 2016,
`submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
`Declaration of Regis J. “Bud” Bates in Support of Reply in
`Support of Motion to Amend (“ReplyDec”)
`
`2062
`
`2063
`
`2064
`
`2065
`
`2066
`2070
`
`
`
`v
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`I.
`
`INTRODUCTION
`Substitute Claim 183 is patentable over each of the references identified in
`
`Petitioner’s response. ReplyDec, ⁋ 32. Notably, Petitioner failed to map numerous
`
`limitations of the Substitute Claim to each of the references, but rather focused on
`
`certain features without any context as to how it would read on the claimed invention
`
`as a whole. As explained below, each of the references fails to teach, suggest, or
`
`disclose several limitations of the Substitute Claim. Id. Indeed, Petitioner failed to
`
`provide any reasons supporting an obviousness argument. PO believes Petitioner
`
`bears the burden of proving that the Substitute Claim is not patentable.
`
`II. THE SUBSTITUTE CLAIM IS PATENTABLE OVER ARCHER
`Archer fails to teach, suggest, or disclose numerous limitations of the
`
`Substitute Claim. ReplyDec, ⁋ 33. For example, Archer fails to disclose that
`
`“communications between the tandem access controller and the particular PSTN
`
`tandem switch occur without passing through any edge switches,” as recited in the
`
`Substitute Claim. Archer does not use the term “tandem,” “class 4,” or any other
`
`term that refers to the claimed PSTN tandem switch. Mot. at 16. Rather, Archer
`
`teaches that data to and from the purported TAC and the PSTN tandem switch must
`
`first pass through an edge switch of the PSTN. Mot. at 16-19; ReplyDec, ⁋ 33.
`
`Petitioner’s position that converter 126 receives digital signals in a PCM
`
`format directly from a PSTN tandem switch is wrong. As an initial matter,
`
`
`
`1
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`Petitioner’s use of the phrase “gateway 126” throughout its response and expert
`
`declaration is misleading. Archer consistently uses the terminology “converter 126”
`
`(at least 7 times). Archer never uses the terminology “gateway 126.” Although
`
`Archer states that “converter 126 can also be referred to as a gateway, a digitizer or
`
`an encoder,” there can be no legitimate dispute that “converter 126” is an edge device
`
`that receives analog voice signals from an edge switch of the PSTN where the
`
`converter then converts the analog signals to a digital format. ReplyDec, ¶ 34.
`
`In Fig. 2, telephone 114 is connected to circuit switched network 118, which
`
`may be the PSTN. Archer at 4:66-5:9. Archer explicitly notes that, while the core
`
`of the PSTN is digital, the lines connecting homes and business to COs are still
`
`predominantly analog. Id. at 5:25-32. These analog lines are what connect Archer’s
`
`circuit switched network 118 to converter 126. Id. at Fig. 2; ReplyDec, ⁋ 35.
`
`Figure 3 and its related disclosure remove any doubt that converter 126
`
`receives analog voice signals and converts them to a digital format. As shown in
`
`Fig. 3, converter 126 receives signals from PSTN 118. Id. at Fig. 3, 5:47-58.
`
`Converter 126 is comprised of modem bank 70, control circuitry 72, and router 74.
`
`Archer’s inclusion of modem bank 70 in the converter is particularly telling. Archer
`
`describes that modem 70 “translates the signals into digital signals which can be
`
`handled by router 74.” Id. This means that Archer’s modem receives analog signals
`
`via the PSTN and translates them to digital signals. ReplyDec, ⁋ 36.
`
`
`
`2
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`Petitioner contends that converter 126 “communicates on the PSTN using SS7
`
`signaling and digital voice protocol used by PSTN tandem switches.” Resp. at 7.
`
`Petitioner further contends that converter 126 “passes information (e.g., voice and
`
`signaling) through it, and sends and receives such information in digital formats
`
`(e.g., PCM voice and IP voice packets).” Resp. at 7. This position does not square
`
`with the actual teachings of Archer. ReplyDec, ⁋ 37.
`
`First, PCM stands for pulse coded modulation and simply assigns a digital
`
`value to the amplitude of an analog signal at regular intervals, and is used in
`
`everything from .wav files to DVDs to HDMI to VoIP signaling – it is hardly unique
`
`to telephony products. ReplyDec, ⁋ 38. Because PCM is a digital representation of
`
`an analog signal, there would be no reason for converter 126 to include modem bank
`
`70 if it received information from the PSTN in a digital format. Indeed, the whole
`
`point of a modem (modulator / demodulator) is to convert an analog signal (e.g.,
`
`from a telephone line) to a digital format or vice versa. Id. A person of ordinary
`
`skill (POSA) would know that modem bank 70 that is external to the PSTN would
`
`be coupled to an edge switch, not to a PSTN tandem switch. Id.
`
`Second, Archer does not use the word “tandem” anywhere it its disclosure.
`
`Nor does Archer use the term “SS7 signaling” in its disclosure. Petitioner’s attempts
`
`to convince the Board that Archer’s modem receives digital voice directly from a
`
`PSTN tandem switch along with SS7 signaling is simply made up. ReplyDec, ⁋ 39.
`
`
`
`3
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`Third, the only commercially available product Archer describes as
`
`performing the functionality of converter 126 is the Netspeak Webphone Gateway
`
`Exchange. Archer at 5:63-67. A POSA would know that the Netspeak product
`
`connects to the PSTN through an edge switch and is designed to receive analog
`
`signals from a PSTN edge switch, not a tandem switch. ReplyDec, ⁋ 40. Finally,
`
`the terms used to describe to converter 126 – “converter,” “gateway,” and “digitizer”
`
`– make clear that converter 126 is responsible for converting voice signals received
`
`in a first format (analog) to a second format (digital), or vice versa. Id.; Archer at
`
`5:33-36. It makes no sense to interpret Archer’s converter 126 as receiving digital
`
`signals and simply passing them along in digital format over the IP network. Id. In
`
`such a scenario, a modem would not be used. Id.
`
`Petitioner’s Response mischaracterizes the testimony of Patent Owner’s
`
`expert, Mr. Bates. Petitioner asserts that “Mr. Bates testified that the digital format
`
`used by Archer’s gateway 126 to communicate voice information with PSTN 118
`
`(136)— [is] PCM….” Resp. at 8. This assertion is false. ReplyDec, ⁋ 41. Mr.
`
`Bates never testified that converter 126 communicated voice signals with PSTN 118
`
`in a PCM format. Id. The citations in support of this statement contain no such
`
`testimony. Id. Nor did “Mr. Bates acknowledge[] that Archer’s gateway 126 would
`
`typically be connected to a PSTN tandem switch, not an edge switch, in PSTN 118
`
`(136).” Resp. at 8; ReplyDec, ⁋ 41. Again, the testimony pointed to by Petitioner
`
`
`
`4
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`contains no such statement, acknowledgement, or suggestion by Mr. Bates. To the
`
`contrary, Mr. Bates acknowledged that PCM is a digital format that could be used
`
`by a PSTN tandem switch. ReplyDec, ⁋ 41. Archer only discusses PCM as being
`
`used by the IP network 130. Id. Indeed, as previously discussed, Archer expressly
`
`contemplates that the PSTN voice signals are sent to converter 126 connection is an
`
`analog format, thus requiring the use of a modem in order to convert the analog
`
`signal into a digital format (i.e., PCM) that can be used by IP network 130. Id. These
`
`analog signals could only come from an edge switch, which typically convey data in
`
`an analog format to external devices. Id. Archer does not disclose the limitation
`
`“wherein communications between the tandem access controller and the particular
`
`PSTN tandem switch occur without passing through any edge switches.” Id.
`
`Further, Archer fails to disclose a TAC that processes the calls in a manner
`
`required by the Substitute Claim of receiving a first call without answering it until a
`
`second call is answered, then completing “the call.” Mot. at 3-4, 25; ReplyDec, ⁋
`
`42. The Substitute Claim is directed to “a call” for enabling voice communication
`
`across two networks (a packet network and a second network) where the TAC
`
`receives a “first call request … associated with a first call” and “process[es] a second
`
`call request associated with a second call” across the packet network to complete
`
`“the call.” Thus, the Substitute Claim requires that the first call not be answered by
`
`the TAC until the second call is answered in order for “the call” to be completed.
`
`
`
`5
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`ReplyDec,⁋ 42. Archer, however, teaches that a first call request is answered (e.g.,
`
`to collect information from the caller used to make the second call), prior to
`
`processing a second call request across the packet network. Mot. at 18, 25; Archer
`
`at 8:54-56; ReplyDec, ⁋ 42.
`
`III. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LEWIS
`
`Petitioner’s characterization of Lewis is contrary to the reference’s actual
`
`disclosure. As set forth below, Lewis does not teach, suggest, or disclose (1) a
`
`tandem access controller, (2) the call processing steps, including processing a second
`
`call request associated with a second call, and (3) establishing voice communication
`
`for voice calls in the manner required by the Substitute Claim. ReplyDec, ⁋ 43.
`
`On the first point, the descriptive language of the term “tandem access
`
`controller” indicates that it is a controller associated with a tandem switch, not an
`
`edge switch. Mot. at 3. Petitioner points to open architecture switch 502 as
`
`satisfying the claimed tandem access controller. Resp. at 13-18. However, open
`
`architecture switch 502 is associated with an edge switch 506, not a tandem switch.
`
`Lewis at Fig. 5, 20:30-58, 27:3-18; ReplyDec, ⁋ 44. As the name implies, an open
`
`architecture switch is simply a switch that determines whether a particular call is a
`
`voice call or a data call, where voice calls are terminated at the edge switch 506 and
`
`data calls (non-voice calls) are terminated at a modem 514, which routes the data to
`
`an ISP or private data network. Id. There is no disclosure that open architecture
`
`
`
`6
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`switch 502 has any capabilities to apply call features. Nor is there any disclosure
`
`that open architecture switch is coupled to a “web enabled processing system
`
`including one or more web servers” that would allow a subscriber to set call control
`
`features. Id. Petitioner did not even attempt to show that Lewis discloses a “web
`
`enabled processing system including one or more web servers coupled to a tandem
`
`access controller.” Id.
`
`On the second point, Lewis does not teach, suggest, or disclose a TAC that
`
`processes the calls in a manner required by the Substitute Claim of receiving a first
`
`call without answering it until a second call is answered, then completing “the call.”
`
`Mot. at 3-4, 25; ReplyDec, ⁋ 45. Lewis discloses handling a data call from telephone
`
`102 to ISP 112. Lewis at 20:44-58, 25:35-44, 27:22-25, 30:48-50, Figs. 4, 5.
`
`“Specifically, an outbound data call will be sent to modem NAS bay 514, then to
`
`routers (not shown), and then to ISP 112.” Lewis at 20:50-53. Petitioner
`
`acknowledges that a data call is answered at modem NAS bay 514. Resp. at 16-17;
`
`Lewis at 30:36-43. For at least these reasons, Lewis fails to meet this requirement
`
`of the Subsitute Claim. ReplyDec, ⁋ 45.
`
`Further, the data call embodiment in Lewis is devoid of any a “second call
`
`request associated with a second call.” ReplyDec, ⁋ 46. Rather, after a first call
`
`request is answered at modem NAS bay 514, modem NAS bay 514 simply routes
`
`the received data to the particular ISP. Lewis at 20:50-53, 30:15-19, ReplyDec, ⁋
`
`
`
`7
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`46. No second call request associated with a second call ever emanates from modem
`
`NAS bay 514. ReplyDec, ⁋ 46. Rather, a POSA would understand that all modem
`
`NAS bay 514 can do is route the received data to the ISP to which they are attached.
`
`Id. Voice calls are handled by an edge switch in the conventional manner, which
`
`does not support a first call/second call type of concept. Id.; Lewis at 30:51-60.
`
`On the third point, Lewis does not disclose a “method for enabling voice
`
`communication of a call … across both the packet network and the second network,”
`
`“first call request for the purpose of initiating voice communication to the
`
`subscriber,” and “establishing the voice communication … by the tandem access
`
`controller.” The entire invention of Lewis is directed to separating data calls from
`
`voice calls, and Petitioner relies exclusively on the data call embodiment (i.e., non-
`
`voice calls). ReplyDec, ⁋ 47. The data call embodiment relied upon exclusively by
`
`Petitioner actually teaches away from the ability to provide voice communications
`
`because Lewis teaches that voice calls are diverted to the voice switch 506, which is
`
`an edge switch, not a tandem access controller. See, e.g., Lewis at 20:30-58, 27:3-
`
`18, Fig. 5, Fig. 10A (step 1008 “distinguish between data calls and voice calls”), Fig.
`
`10C (step 1030 and 1042 where if the initial determination is whether the call is a
`
`data call or a voice call); ReplyDec, ⁋ 47. Other than a generic definition of VoIP
`
`provided by Lewis at 2:50-55, the only other disclosure of VoIP in Lewis is at 26:9-
`
`13, which corresponds to Fig. 9A. This disclosure is clear that Lewis is simply
`
`
`
`8
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`teaching that there are many ways to originate the initial call, such as the “calling
`
`party 914” being able to initiate a call using VoIP. After a VoIP call request is
`
`received, the invention in Lewis still operates in the same manner—where voice
`
`calls are diverted to voice switch 506 (edge switch) without ever being received by
`
`the modem NAS bay 514. ReplyDec, ⁋ 47. Additionally, a VoIP call from one VoIP
`
`caller to another VoIP caller would never even traverse through a PSTN tandem
`
`switch. Id. Petitioner mischaracterizes the teachings of Lewis in a futile attempt to
`
`change the invention disclosed in Lewis. See, for example, block quote at page 17
`
`of the Response where Petitioner intentionally omits the disclosure that “the
`
`technique distinguishes between data calls and voice calls” where the method
`
`transmits voice calls to voice switch 506. Lewis is devoid of any teaching that voice
`
`can ever be converted to a VoIP call by the modem NAS bay 514. Rather, Lewis is
`
`clear that voice calls are never received at modem NAS bay 514. ReplyDec, ⁋ 48.
`
`IV. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LAPIER
`As set forth below, LaPier does not teach, suggest, or disclose a tandem access
`
`controller or the call processing steps, including processing a second call request
`
`associated with a second call, as required by the Substitute Claim. ReplyDec, ⁋ 49.
`
`On the first point, the descriptive language of the term “tandem access
`
`controller” indicates that it is a controller associated with a tandem switch. Mot. at
`
`3. The purported TAC in LaPier has no association with a tandem switch, but, rather,
`
`
`
`9
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`its function is to simply act as a protocol converter between protocols of any type of
`
`PSTN switch, including edge switches, and Internet protocols. LaPier at 4:56-67,
`
`Figs. 1B, 1C; ReplyDec, ⁋ 50. Further, there is no disclosure that LaPier’s purported
`
`TAC has any capabilities to apply call features associated with a subscriber. Nor is
`
`there any disclosure that the purported TAC is coupled to a “web enabled processing
`
`system including one or more web servers” that would allow a subscriber to set call
`
`control features. ReplyDec, ⁋ 50. Petitioner did not even attempt to satisfy these
`
`limitations of the Substitute Claim. Resp. at 18-23.
`
`On the second point, LaPier does not teach, suggest, or disclose processing
`
`the first and second calls by the TAC in a manner required by the Substitute Claim.
`
`Petitioner argues that a PSTN call is terminated at SAS 112 of LaPier’s purported
`
`TAC. Resp. at 21-22. LaPier does not teach a PSTN call is ever terminated or
`
`answered at SAS 112. ReplyDec, ⁋ 51. Should the Board find that LaPier discloses
`
`that the PSTN call is terminated at the purported TAC, then LaPier fails to disclose
`
`a TAC that processes the calls in a manner required by the Substitute Claim of
`
`receiving a first call without answering it until a second call is answered, then
`
`completing “the call.” Mot. at 3-4, 25; ReplyDec, ⁋ 51.
`
`Further, LaPier does not disclose a “second call request associated with a
`
`second call.” ReplyDec, ⁋ 52. LaPier simply teaches that a single call request is
`
`generated via the PSTN network, which then is converted from PSTN format (IAM
`
`
`
`10
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`Initial Address Message 704) to an IP format (Setup call message 706), and then the
`
`call request is answered at a terminating device that is conversant in the IP format.
`
`LaPier at Fig. 7A, 38:13-21; ReplyDec, ⁋ 52. Only after the call has been answered
`
`at the terminating IP device (i.e., the first time the call is answered), a single call
`
`answer message is generated from the IP terminating device, where LaPier’s
`
`purported TAC converts the answer message from IP format (Connect message 712)
`
`to PSTN format (ANM Answer message 714), and then the answer message is
`
`received by a PSTN device conversant in the PSTN format. LaPier at Fig. 7A,
`
`38:26-40; ReplyDec, ⁋ 52. For there to be a second call, a separate set of call
`
`requests, acknowledge messages, and answer messages would need to be generated.
`
`Id.
`
`Petitioner alleges that NAS 118a places a second call in a VoIP format, but
`
`this is simply not taught by LaPier or in any of the citations provided by Petitioner.
`
`See Resp. at 22 (citing to LaPier at Figs 1B, 7A, 8:61-67, 38:26-27, 35:54-62).
`
`Rather, LaPier teaches that NAS includes a router, which a POSA would understand
`
`is simply routing data associated with one call, not terminating a first call and
`
`originating a second call. See, e.g., LaPier at 8:61-67; ReplyDec,⁋ 53. For at least
`
`the aforementioned reasons, LaPier fails to teach the call processing features recited
`
`in the Substitute Claim. ReplyDec, ⁋ 53.
`
`V. THE SUBSTITUTE CLAIM IS PATENTABLE AND NOT OBVIOUS
`
`
`
`11
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`
`
` There is simply no evidence in the record that anyone, prior to the date of the
`
`invention, with all of the necessary tools in hand – PBXs, tandem switches,
`
`gateways, modem banks, IN equipment – had any reason to add call features and
`
`process calls in the manner recited in the Substitute Claim, or ever conceived of such
`
`a solution. ReplyDec, ¶ 54. Petitioner has not provided any reasons as to how or
`
`why any reference could be modified or combined to read on each of the limitations
`
`recited in the Substitute Claim. Further, Petitioner did not even attempt to address
`
`the majority of the claim limitations. Petitioner did not even attempt to show how
`
`any prior art reference could possibly render the Substitute Claim obvious. Indeed,
`
`to utilize these references in the manner required by the Substitute Claim would
`
`require extensive and unreasonable modifications to the existing PSTN architecture,
`
`such that a POSA would have no reason to modify the references in the manner
`
`required by the Substitute Claim. Id. To modify or combine any of the art to read
`
`on the Substitute Claim would require impermissible hindsight by using the claimed
`
`invention as a blueprint. Id. Thus, the invention recited in the Substitute Claim is
`
`patentable. Id.; see also ReplyDec, ⁋ 55.
`
`Dated: July 31, 2017
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`
`
`
`
`
`
`
`12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`
`Paper No. 43
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 31st day of July, 2017, a copy of Patent Owner
`
`FOCAL IP, LLC’s Reply in Support of Patent Owner’s Contingent Motion to
`
`Amend has been served in its entirety via email on the following:
`
`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
`
`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
`
`May Eaton
`BAKER BOTTS L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, CA 94304
`Phone: (650) 739-7520
`Facsimile: (650) 739-7620
`may.eaton@bakerbotts.com
`
`Patrick McPherson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`PDMcPherson@duanemorris.com
`
`
`
`13
`
`
`
`
`Case IPR2016-01261
`Patent 8,457,113
`
`
`Christopher Tyson
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
`
`Kyle Lynn Elliott
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
`
`
`Dated: July 31, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 43
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
`
`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
`
`
`
`14
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
