`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
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`Focal IP, LLC,
`Patent Owner
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`
`
`Case IPR2016-01261
`U.S. Patent No. 8,457,113
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
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`DM2\7304067.3
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`TABLE OF CONTENTS
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`PAGE
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`I.
`INTRODUCTION ........................................................................................ 1
`II. APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISAVOW THE CLAIM SCOPE ASSERTED BY PATENT
`OWNER ......................................................................................................... 2
`A.
`Patent Owner Must Show a Clear and Unmistakable Disclaimer ....... 2
`B.
`Applicant Introduced and Broadly Defined “Switching
`Facilities” During the Prosecution of the ’777 Patent .......................... 2
`Applicant Did Not Clearly and Unmistakably Disavow its
`Broadly Defined Scope of “Switching Facility” .................................. 5
`III. PATENT OWNER’S ARGUMENTS REGARDING ARCHER
`AND CHANG SIMILARLY FAIL ............................................................. 8
`A.
`Patent Owner’s Assertions that Archer’s Converters 126, 132
`are Edge Switches or Edge Devices are Misleading and
`Inaccurate ............................................................................................. 8
`Patent Owner Misstates Petitioners’ Reading of a Call
`Processing System Coupled to a Switching Facility of the
`PSTN or a Tandem Switch Onto a Combination of Archer and
`Chang .................................................................................................... 9
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`C.
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`B.
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`i
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`List of Exhibits Cited in this Reply
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`Exhibit Number
`1001
`1002
`1003
`1004
`1006
`1009
`1010
`1054
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`1055
`1056
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`Document
`U.S. Patent No. 8,457,113 (“the ’113 patent”)
`Expert Declaration of Dr. Thomas La Porta
`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. 7,764,777 (“the ’777 patent”)
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`Supplemental Expert Declaration of Dr. Thomas La Porta
`(“TLP”)
`U.S. Patent No. 6,574,328
`U.S. Patent No. 7,324,635
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`ii
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`I.
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`INTRODUCTION
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`Pursuant to the Board’s order of November 1, 2016, Petitioners respectfully
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`submit this Reply to address Patent Owner’s arguments concerning disclaimer of
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`claim scope in its Preliminary Response.
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`Patent Owner’s Preliminary Response
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`is an
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`improper
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` attempt
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`to
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`retroactively narrow the scope of a claim term (“switching facility”) that Applicant
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`introduced three years after it filed the related ’777 patent and ten years after it
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`filed the earliest patent to which the ’777 patent claims priority. However,
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`Applicant clearly intended this term to be interpreted broadly when it introduced
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`this new claim term in an amendment and concurrently provided a definition with
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`enumerated examples. Now, more than six years later, Patent Owner asks the
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`Board to ignore the previously provided definition and enumerated examples and
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`instead rely on a specification (presented years earlier) and arguments (presented
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`months before the claim term was introduced by amendment) to find that
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`Applicant disclaimed the broad scope that would otherwise be given to this claim
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`term. Even if the Board considers Applicant’s “disclaimer” evidence, which it
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`should not, it does not contain the requisite clear and unmistakable disavowal of
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`claim scope asserted by Patent Owner. As a result, the Board should accept the
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`definition of the term “switching facility” that the Applicant provided during
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`1
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`prosecution when it introduced this term—“any point in the switching fabric of
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`converging networks.”
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`II. APPLICANT DID NOT CLEARLY AND UNMISTAKABLY DISAVOW THE
`CLAIM SCOPE ASSERTED BY PATENT OWNER
`A.
`The Federal Circuit has explained that the standard for finding a disclaimer
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`Patent Owner Must Show a Clear and Unmistakable Disclaimer
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`of claim scope is “exacting.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750
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`F.3d 1304, 1309 (Fed. Cir. 2014). Disavowal does not arise merely by
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`criticizing a particular embodiment that is encompassed in the plain meaning
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`of a claim term. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321,
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`1335 (Fed. Cir. 2009). Nor is it enough that all the embodiments of the
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`invention disclosed in the specification contain a particular limitation. Thorner v.
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`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Rather,
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`a disclaimer of claim scope must be “clear and unmistakable.” Id. at 1366-67
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`(emphasis added); see also Openwave Systems, Inc. v. Apple Inc., 808 F.3d 509,
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`513 (Fed. Cir. 2015).
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`B. Applicant Introduced and Broadly Defined “Switching Facilities”
`During the Prosecution of the ’777 Patent
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`The first time “switching facilities” appears anywhere in the intrinsic record
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`of the ’113 patent, or of any of the patents in its family, is February 16, 2010, when
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`Applicant introduced it in response to a Final Office Action during prosecution of
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`the related ’777 patent. EX. 1010, 66, 68-80, 84-88; TLP, ¶14; Prelim Resp., 36;
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`2
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`EX. 2001, ¶70. Specifically, in this response, Applicant amended several existing
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`claims to include this term for the first time, and added new claims reciting it. EX.
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`1010, 68-80; TLP, ¶15. Applicant introduced this term into the intrinsic record of
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`the ’113 patent more than a year after it filed this response, and after the ’777
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`patent had issued, on March 7, 2011. EX. 1009, 211-234; TLP, ¶15.
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`A Person of Ordinary Skill in the Art (“POSA”), reading this Feb. 16, 2010
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`response and Applicant’s concurrently filed Substance of Personal Interview with
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`the Examiner (the “Interview Summary”), understood that Applicant intended
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`“switching facilities” to be interpreted broadly. EX. 1010, 65-66, 68-80; TLP, ¶16.
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`For example, Applicant first states that “switching facilities” in the PSTN included
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`both end office switches and interconnected tandem switches:
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`Consistent with Newton’s definition, on which the Examiner relies,
`Schwab’s “end office switch” could arguably be considered to be
`“within” the PSTN. The PSTN is a configuration of switching
`facilities for routing calls from calling parties to called parties,
`comprising a plurality of end office switches (also referred to as
`central office switches or edge switches (e.g., a class 5 switch)) and a
`plurality of interconnected switching facilities (also referred to as
`tandem switches). EX. 1010, 86-87; TLP, ¶17.
`Next, Applicant broadly defined “tandem switching facilities” as “any point
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`in the switching fabric of converging networks” and enumerated several examples
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`of such “switching facilities”, namely “a signal transfer point (STP), signal control
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`3
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`point (SCP), session border controller (SBC), gateway, access tandem, class 4
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`switch, wire center, toll office, toll center, PSTN switching center, intercarrier
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`connection point, trunk gateway, hybrid switch, etc.” EX. 1010, 87, 87n.1; TLP,
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`¶18. A POSA would understand that Applicant identified that it is this location—
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`in the switching fabric of converging networks (e.g. at the convergence of a circuit
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`switched network and a packet switched network)—that avoids a call having to
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`reach the local edge switch of a particular subscriber before services for such
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`subscriber (e.g. call forwarding) are invoked. EX. 1010, 86-88, 87n.1; TLP, ¶19.
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`In this vein, it is noteworthy that Applicant’s enumerated examples of
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`“tandem switching facilities” include a hybrid switch, which is a well-known
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`combined class 4/class 5 switch (i.e. combined tandem/edge switch), and devices
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`that were well-known to receive call signaling but not voice (e.g. STP, SCP). EX.
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`1010, 87n.1; EX. 2002, 4; TLP, ¶¶20-21. Thus, Applicant expressly included a
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`combination tandem/edge switch, and devices that only receive call signaling, in its
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`definition of “switching facilities.” Id.
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`Furthermore, Applicant expressly references its broad of definition of
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`“switching facilities”, including its expressly enumerated examples, in its
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`concurrently filed Interview Summary:
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`The major difference lies in that Applicants’ architecture permits
`subscribers to apply features via web access to a controlling device
`that connects to a switching facility (tandem access switch also
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`4
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`referred by other terminology in the industry) so that the features are
`not limited to a local geographic area. EX. 1010, 66; TLP, ¶22.
`Applicant’s intended broad interpretation of “switching facility” is also
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`evident from its concurrently filed claim amendments. EX. 1010, 68-80, 84-88;
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`TLP, ¶23. For example, Applicant broadened Claim 1 such that, instead of “web-
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`enabled processing system” having to be “connected within the PSTN”, it merely
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`had to be “connected to operate . . . with a communications network comprising”
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`“edge switches” and “switching facilities for routing calls to other edge switches”:
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`Id., 68; see also id., 71 (amendments to Claim 19); TLP, ¶23. Applicant also
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`amended dependent Claim 7 to specify that only for this dependent claim is the
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`“communication network” of Claim 1 limited to the PSTN and the “switching
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`facility” of Claim 1 limited to “a PSTN tandem switch within the [PSTN].” Id., 69;
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`TLP, ¶24. In contrast, when Applicant wanted narrow independent claims, it used
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`“tandem switch” instead of “switching facility.” Id., 72 (Claim 20); TLP, ¶25.
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`C. Applicant Did Not Clearly and Unmistakably Disavow its Broadly
`Defined Scope of “Switching Facility”
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`In its Preliminary Response, Patent Owner asserts:
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`[A]ccording to the intrinsic record, a “switching facility” (1) is a
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`5
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`switch for routing calls to edge switches or other “switching facilities”
`local or in other geographic areas; and (2) is not an edge switch or an
`edge device. Prelim Resp., 34-35 citing EX. 2001, ¶68.
`However, this assertion is unsupported for several reasons. TLP, ¶¶27-35.
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`First, Patent Owner relies on portions of the ’113 patent specification as
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`purportedly disclaiming Applicant’s broad definition of “switching facility.”
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`Prelim Resp., 22-27, 33; EX. 2001, ¶¶51-57, 65. However, neither the ’113 patent
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`specification (filed June 22, 2010), nor the specification of any of the patents to
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`which it claims priority (filed Nov. 30, 2007, Apr. 30, 2003, and May 4, 2000)
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`include the term “switching facility”; thus there can be no clear and unmistakable
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`disclaimer of this term that was introduced and defined years later. EX. 1001; EX.
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`1006; EX. 1055; EX. 1056; EX. 1010, 66, 68-80, 84-88; TLP, ¶28, 31.
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`Second, Patent Owner attempts to retroactively define this claim term by
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`identifying specific architectures in a “preferred embodiment”, “preferred
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`system”, or “one embodiment”, as opposed to “the invention” or all embodiments
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`of the invention. Prelim Resp., 24-26; EX. 1001, 2:1-35, 3:14-27, 3:66-4:3, FIG. 1,
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`3:28-40; TLP, ¶29. Such description of a preferred or particular embodiment does
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`not provide a clear and unmistakable disclaimer to a POSA. Epistar, 566 F.3d at
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`1335; Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d 1317, 1326 (Fed. Cir.
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`2002); TLP, ¶¶29-30.
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`Third, in the portions of the Feb. 16, 2010 response relied upon by Patent
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`Owner, Applicant always conditionally describes “switching facilities” to illustrate
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`a specific function or a specific location. Prelim. Resp., 30-33, 35-37, 39-40; EX.
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`2001, ¶¶63-64, 69-70, 78; TLP, ¶32. Indeed, Applicant’s arguments demonstrate
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`that “switching facilities” can have varying functions and locations:
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` PSTN end office switches that connect calling parties to called parties
`only within a local geographic area
` PSTN tandem switching facilities that route calls received via end
`office switches or other tandem switching facilities to called parties
`within other geographic areas
` interconnect end office switches to other geographic areas that are not
`local to an end office switch. EX. 1010, 87; TLP, ¶32.
`Moreover, because the function and location of a “switching facility” can
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`vary broadly (as shown by the enumerated examples), Applicant recited specific
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`additional limitations to claim the function/location of the “switching facility” in
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`its Feb. 16, 2010 amendments:
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` for routing calls to other edge switches or other switching facilities
`local or in other geographic areas (Claim 1, 19) (emphasis added)
` for routing calls to edge switches or other switching facilities local or
`in other geographic areas (Claim 22) (emphasis added)
` allowing access to local and other geographic areas within the PSTN
`(Claim 21) (emphasis added)
` for routing calls to other geographic areas (Claim 41, 46, 49, 50)
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`EX. 1010, 68, 71, 73, 77-80; TLP, ¶33.
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`If the location and function of a “switching facility” was unambiguously
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`disavowed as Patent Owner asserts, then the varying claim language identifying
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`the particular location and function of “switching facilities” in each claim would be
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`superfluous. Prelim Resp., 34-41, EX. 2001, ¶¶68-70, 75, 80; EX. 1010, 68, 71,
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`73, 77-80; TLP, ¶34. Rather, for each particular claim, “any point in the switching
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`fabric of converging networks” (whether it be an edge switch, tandem switch,
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`hybrid switch, gateway, STP, etc.) is a “switching facility” for such claim if it
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`performs the recited function, and is in the recited location. TLP, ¶35.
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`III. PATENT OWNER’S ARGUMENTS REGARDING ARCHER AND CHANG
`SIMILARLY FAIL
`A.
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`Patent Owner’s Assertions that Archer’s Converters 126, 132 are
`Edge Switches or Edge Devices are Misleading and Inaccurate
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`Patent Owner asserts that Archer’s converters 126 and 132 are both edge
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`switches or edge devices, and not “switching facilities”, because (1) each only
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`connects to circuit-switched network 118/PSTN 136 via analog lines, (2) neither
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`routes information on circuit-switched network 118/PSTN 136, and (3) a POSA
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`would not connect either to a tandem switch because of (1) and because neither
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`sends or receives call signaling. Prelim Resp., 43-44, 48-57; EX. 2001, ¶¶86-89,
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`97-111. These assertions are misleading and/or inaccurate. TLP, ¶¶36-44.
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`First, there is no dispute that Archer’s converters 126 and 132 are respective
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`points in the switching fabric of converging circuit-switched network 118/PSTN
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`136 and packet-switched/IP network 130. TLP, ¶37; see Prelim. Resp.; EX. 2001;
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`supra §II.B. Second, Archer clearly discloses that the interconnect between
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`converters 126 and 132 and circuit-switched network 118/PSTN 136 can be either
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`analog or digital. EX. 1003, 5:10-11 (“Circuit-switched network 118 can be either
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`an analog network, a digital network, or a combination of both.”); 5:59-62 (“PSTN
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`to IP-network gateway (i.e., converter 126)” receives PCM, i.e., digital voice);
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`TLP, ¶38.
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`Third, a POSA understood that Archer discloses converters 126 and 132
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`both route call information, including both voice and call signaling, on both of
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`these converging networks and to/from multiple locations or geographic areas.
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`TLP, ¶¶39-43. For example, server processor 128 addresses IP packets to converter
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`126/132 which decodes multiple destination telephone numbers from IP packets,
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`causes multiple destination telephone numbers to ring, and routes call information
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`to responding destination number. 8:63-66, 9:7-19, 9:31-34, 9:51-55; EX. 1002,
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`¶¶56-60, 72-76; TLP, ¶40; cf. EX. 2001, 103, 105. Patent Owners arguments that
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`Archer’s converters 126 and 132 would not be considered “switching facilities” all
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`fail.
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`B.
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`Patent Owner Misstates Petitioners’ Reading of a Call Processing
`System Coupled to a Switching Facility of the PSTN or a Tandem
`Switch Onto a Combination of Archer and Chang
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`9
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`Patent Owner misstates Petitioners’ reading of the limitation “a call
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`processing system coupled
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`to at
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`least one switching
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`facility of
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`the
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`telecommunication network via the second network” onto Archer and a
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`combination of Archer and Chang. Prelim. Resp. 56-64; EX. 2001, ¶¶108-122;
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`TLP, ¶¶45-52. Rather, Petitioners detailed how a POSA understood that Archer’s
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`preferred embodiment in which server processor 128 is coupled to switching
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`facilities in the PSTN 118 (136) via converters 126/132, including well-known
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`tandem switch, SCP, and STP switching facilities, discloses, and renders obvious,
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`“a call processing system coupled to at least one switching facility of the
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`telecommunication network via the second network.” Pet., 28, 33-36; EX. 1002,
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`¶¶136-142, 156-165; TLP, ¶46; see supra §III.A. Indeed, this preferred server
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`processor 128 and converter 126/132 embodiment closely mimics the embodiment
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`in ’298 patent FIG. 2 in which TAC 10 interfaces with an IP network for VoIP
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`calls and the PSTN. TLP, ¶47; EX. 1001, FIG. 2. Archer discloses inherently, but
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`not explicitly, that PSTN 118 (136) includes tandem switches. Pet., 33-35; EX.
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`1002, ¶¶157-162; TLP, ¶48. Nevertheless, a POSA would understand that the
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`tandem switch of Chang (11T) could be used in the PSTN 118 (136) of Archer.
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`TLP, ¶¶48-51. Specifically, Petitioners detailed how Chang discloses a web-
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`enabled processing system coupled to PSTN switching facilities including tandem
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`switches (11T). Pet., 22-26, 36-39; EX. 1002, ¶¶119-132, 166-173; TLP, ¶49-50.
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`Petitioners further detailed the motivation for a POSA to modify Archer’s server
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`processor 128 and database 138 to include Chang’s web server 525, and modify
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`Archer’s PSTN 118(136) to include Chang’s tandem switches (11T). Pet., 24-26,
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`38-39; EX. 1002, ¶¶125-132, 168-173; TLP, ¶51.
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`Dated: November 11, 2016
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`DUANE MORRIS LLP
`ATTN: Patrick McPherson
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
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`By:
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`Respectfully submitted,
`DUANE MORRIS LLP
`
`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
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`11
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and 42.108(c), the undersigned certifies that on
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`November 11, 2016, a complete and entire electronic copy of this Reply to Patent
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`Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c), including
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`Exhibit Nos. 1054-1056 was served electronically via email on the following:
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`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`By: /s/ Patrick D. McPherson
`
`Patrick D. McPherson
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`Reg. No. 46,255
`
`Lead Counsel
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`1