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