Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 21
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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.,
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`Petitioners
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
`
`________________
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`Case IPR2016-01261
`Patent Number: 8,457,113
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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`Patent 8,457,113
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`Paper No. 21
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`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
`Patent Number: 8,457,113
`________________
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
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` I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`Case IPR2016-01261
`Patent 8,457,113
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`Paper No. 21
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`TABLE OF CONTENTS
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`INTRODUCTION .................................................................................. 1
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`RELIEF REQUESTED ........................................................................... 1
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`LEGAL STANDARD ............................................................................. 1
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`BECAUSE THE BOARD MISAPPREHENDED OR OVERLOOKED
`PATENT OWNER’S ARGUMENTS AS TO WHY ARCHER
`CANNOT BE PROPERLY COMBINED WITH CHANG, THE
`DECISION WAS CLEARLY ERRONEOUS ....................................... 2
`
`BECAUSE THE BOARD MISAPPREHENDED OR OVERLOOKED
`PATENT OWNER’S ARGUMENTS AS TO THE PROPER
`CONSTRUCTION OF THE TERM TANDEM SWITCH, THE
`DECISION WAS ERRONEOUS ........................................................... 5
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`CONCLUSION ....................................................................................... 8
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`TABLE OF AUTHORITIES
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`Cases:
`Arnold P’ship v. Duda,
`362 F.3d 1338 (Fed. Cir. 2004) ............................................................................. 2
`
`
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000) ............................................................................. 2
`
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`Phillips v. AWH Corp.,
`415 F.3d 1303 ........................................................................................................ 7
`
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) ............................................................................. 2
`
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`TD Ameritrade v. Trading Techs. Int’l, Inc.,
`Case No. CBM2014-00137, Paper No. 34 (P.T.A.B. Feb. 2, 2015)..................... 2
`
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) (emphasis added) ................................................. 7
`
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`Regulations:
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`37 C.F.R. § 42.71 (c) .............................................................................................. 1-2
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`37 C.F.R. § 42.71 (d) ................................................................................................ 1
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`I.
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`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71 (c)-(d), Patent Owner FOCAL IP, LLC requests
`a rehearing of the Board’s Decision granting institution of inter partes review
`entered January 3, 2017 (Paper No. 19) (“Decision”) regarding Claims 1, 2, 8, 11,
`15–19, 94, 95, 102, 109–13, 128, 163, 164, 166–68, 175, and 179–81 of the ’113
`Patent (collectively, the “Challenged Claims”) 1) based on the combination of
`Archer and Chang, and 2) the construction of “tandem switch.” The Decision was
`based upon an erroneous reading of the relevant functionality of these two references
`and the construction of “tandem switch.”
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`II. RELIEF REQUESTED
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`The Board misapprehended or overlooked Patent Owner’s argument as to 1)
`why Archer cannot be combined with Chang to render obvious the Challenged
`Claims and, 2) the construction of “tandem switch.” Accordingly, pursuant to 37
`C.F.R. § 42.71 (c)-(d), Patent Owner requests that the Board reconsider its Decision
`of the Challenged Claims and deny instituting inter partes review of the Challenged
`Claims of the ’113 Patent in light of 1) the ground involving Archer and Chang, and
`the proper construction of “tandem switch.”
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`III.
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` LEGAL STANDARD
`A request for rehearing is appropriate when the requesting party believes “the
`Board misapprehended or overlooked” a matter that was previously addressed in the
`record. See 37 C.F.R. § 42.71(d). The request “must specifically identify all matters
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`the party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.” Id. In
`reviewing such a request, the “panel will review the decision for an abuse of
`discretion.” 37 C.F.R. § 42.71 (c). An abuse of discretion occurs where the decision
`is based on an erroneous interpretation of the law, or on erroneous facts. See Star
`Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship
`v. Duda, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 13-
`15-16 (Fed. Cir. 2000). Abuse also occurs “if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment in
`weighing relevant factors.” TD Ameritrade v. Trading Techs. Int’l, Inc., CBM2014-
`00137, Paper No. 34 at 3 (Feb. 2, 2015).
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`IV. BECAUSE THE BOARD MISAPPREHENDED OR OVERLOOKED
`PATENT OWNER’S ARGUMENTS AS TO WHY ARCHER CANNOT BE
`PROPERLY COMBINED WITH CHANG, THE DECISION WAS
`CLEARLY ERRONEOUS
`In its Patent Owner Preliminary Response (POPR, Paper No. 11), Patent
`Owner argued that Archer’s alleged call processing system (including converters
`126, 132, packet-switched network 130, server processor 128, and database 138 in
`Archer, see Petition at 33) could not be combined with Chang’s Secure Access
`Platform 25/525. See id. at 36. Patent Owner’s position is that Chang’s Secure
`Access Platform 25/525 is nothing more than a web server that functions to receive
`user inputs and pass them along to SCPs 19 (databases of subscriber information).
`POPR at 59. Patent Owner quoted the portion of Chang which stated that Secure
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`Access Platform 25/525 received HTTP requests and provided HTML web pages in
`response, just as any web server would. Id. and Chang, 11:30-5.
`On the other hand, Petitioner characterized Chang’s Secure Access Platform
`25/525 as being able to provide SS7 signaling to tandem switching offices and
`control switching to the IP signaling and voice channels in Chang. Petition at 36-
`37. Both statements are demonstrably false. To “support” these claims, Petitioner
`points to red lines it drew on Chang’s Fig. 1. These lines are meaningless and not at
`all supported by Chang’s textual disclosure. POPR at 60. The same lines could also
`be drawn to support the same false proposition that an analog pay phone could also
`provide SS7 signaling to tandem switching offices and control switching to the IP
`signaling and voice channels. Such would be possible because the phone is also
`connected to the PSTN and the same lines could be drawn. The point being that
`merely because something is connected to a particular network, it doesn’t mean that
`it can communicate in some particular protocol with another device.
`To support its claim that Secure Access Platform 25/525 can provide SS7
`signaling, Petitioner cites to Chang, 18:66-19:12. Petition at 36. This portion of
`Chang doesn’t mention signaling of any kind. Instead, it supports Patent Owner’s
`contention that Chang’s Platform 25/525 is merely a web server. See, e.g., Chang
`18:67-19:3 (“The web server 525 provides static web pages to users via the proxy
`server 523 and the Internet 27, in response to web browser based requests from the
`users.”).
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`To support its belief that Secure Access Platform 25/525 can provide control
`switching to the IP signaling and voice channels, Petitioner cites to Chang 9:38-58.
`Petition at 37. This section of Chang doesn’t mention once Secure Access Platform
`25/525, let alone support the proposition that it provides control signaling.
`Finally, Petitioner cites to paragraph 165 of the declaration of its expert,
`Thomas La Porta. Much like Petitioner’s quotes to Chang discussed in the previous
`two paragraphs, this paragraph doesn’t mention Chang’s Secure Access Platform
`25/525, let alone support the proposition that it can understand SS7 signaling or can
`provide control signals. In sum, Petitioner presented no evidence that Secure Access
`Platform is anything other than what Chang describes it as – a web server.
`Based on the fact that Chang’s Secure Access Platform is nothing more than
`a web server, Patent Owner argued that a POSA would not look to substitute
`Archer’s call processing system in place of Chang’s Platform. POPR at 61-63.
`Patent Owner’s primary argument is that there is no reason why a POSA would even
`attempt to substitute a call processing system in place of a web server. Id. Indeed,
`this is akin to substituting a car’s engine in place of its touch screen infotainment
`system. Chang’s Secure Access Platform interacts with users to present and collect
`user information, whereas Archer’s call processing system purports to route calls.
`These functions are entirely different and serve different purposes.
`The Board’s response to these arguments was that it was permissible to
`combine Chang with Archer because “Archer and Chang are in the same field of
`endeavor because they both involve user selection of call features involving PSTN
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`and packet switched networks.” Decision at 21. Assuming arguendo that these two
`references are in the “same field”, Patent Owner respectfully asserts that merely
`because two references are in the same “field” doesn’t mean that one can arbitrarily
`mix and match dissimilar components within a set of references. For example, a
`POSA, considering two references dealing with telephone networks, would not be
`inclined to substitute an analog POTS phone for a cellular base station, for the
`obvious reason that this is the proverbial mixing of apples and oranges. The same
`principle holds true here – just because two references are in the same field of
`endeavor doesn’t mean that any and all combinations of specific elements of those
`references all allowable in putting together an obviousness case against a patent in
`question.
`For these reasons, Patent Owner believes the Board misapprehended or
`overlooked the lack of evidence put forward by Petitioner as to the propriety of
`combining Archer with Chang, specifically as it relates to Archer’s call processing
`system and Chang’s Secure Access Platform, as well as Patent Owner’s arguments
`regarding this same combination, in deciding to institute inter partes review of the
`Challenged Claims in light of the combination of Archer and Chang.
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`V. BECAUSE THE BOARD MISAPPREHENDED OR OVERLOOKED
`PATENT OWNER’S ARGUMENTS AS TO THE PROPER
`CONSTRUCTION OF THE TERM TANDEM SWITCH, THE DECISION
`WAS ERRONEOUS
`The Board declined to adopt a construction of “tandem switch” that prohibits
`the performance of class 5 functions. Decision at 12. Apparently, the Board based
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`its decision, at least in part, on a dictionary definition of the term “tandem switch.”
`Id. at 11. This decision is at odds with the entirety of the intrinsic record and is
`therefore not reasonable and should be reconsidered.
`A fair reading of the ’113 Patent’s specification makes clear that a central
`point of novelty is connecting a call controller (e.g., a tandem access controller) to a
`tandem switch, as opposed to an edge switch, as was known in the art. See generally
`the ’113 Patent. In fact, it is Patent Owner’s position that connecting the controller
`to an edge switch was affirmatively disclaimed in the specification of the ’113
`Patent. See POPR at 22-34.
`In Institution Decisions relating to this and other related Petitions1, there has
`been a great deal of discussion regarding the term “switching facility” and a
`particular footnote in the prosecution history. The Board noted that the term
`“switching facility” was not used in the specification. But, the term “tandem switch”
`is found throughout the specification and there is no question from a review of the
`specification that a tandem switch is not an edge switch or possess the functionality
`of an edge switch.
`In but one example in the specification, the term “tandem switch” is described
`as follows:
`The Public Switched Telephone Network (PSTN) consists of a plurality of
`edge switches connected to telephones on one side and to a network of tandem
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`1 IPR Docket Nos. IPR2016-01254, IPR2016-01257, IPR2016-01260, IPR2016-01263,
`IPR2016-01256, IPR2016-01259, IPR2016-01258, and IPR2016-01262.
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`switches on the other. The tandem switch network allows connectivity
`between all of the edge switches, and a signaling system is used by the PSTN
`to allow calling and to transmit both calling and called party identity.
`’113 Patent, 1:45-51, cited to in the POPR at 6. The tandem switches of the ’113
`Patent are never described in the intrinsic record as connecting directly to end users
`or otherwise having the functionality of a Class 5 switch (i.e., an edge switch or
`central office).
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`Yet, the Board, in relying on an item of extrinsic evidence, has chosen to
`modify the meaning of this term, as used in the intrinsic record, to include class 5
`functions. This construction is not reasonable. As stated by the Federal Circuit in
`its oft cited en banc Phillips decision, “[J]udges are free to consult dictionaries and
`technical treatises ‘at any time in order to better understand the underlying
`technology and may also rely on dictionary definitions when construing claim
`terms, so long as the dictionary definition does not contradict any definition found
`in or ascertained by a reading of the patent documents. Phillips v. AWH Corp. 415
`F.3d 1303, 1322-3, citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584
`n. 6 (Fed. Cir. 1996) (emphasis added). Patent Owner believes the Board has run
`afoul of Phillips by, in essence, collapsing the term “tandem switch” to have the
`same meaning as an “edge switch” (or at least include the same functionality).
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`In light of the foregoing, Patent Owner respectfully submits that the Board
`misapprehended or overlooked the ’113 Patents intrinsic record which clearly
`describes tandem switches and edge switches as different devices which perform
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`different functions, and, instead based its decision on an item of extrinsic evidence
`which is at odds with the intrinsic record. Based on this error, Claim 94 of the ’113
`Patent (as well as its dependent claims), which contains the term “tandem switch” is
`patentable over the cited references.
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`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
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`VI. CONCLUSION
`For the foregoing reasons, the Decision to Institute should be modified to
`acknowledge that Archer and Chang are not properly combined as proposed by
`Petitioner and to reflect the proper construction of “tandem switch.”
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`Dated: January 17, 2017
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of January 2017, a copy of Patent Owner
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`FOCAL IP, LLC’s Request for Rehearing has been served in its entirety via email
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`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
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`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
`
`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
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`Dated: January 1, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`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
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