Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`
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`IN THE 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 No. IPR2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`IN THE 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 No. IPR2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`
`TABLE OF CONTENTS
`
`Page
`
`A. Archer Discloses a Gateway Interconnecting a Controller (e.g.
`“web-enabled processing system”) on an IP Network to a
`Tandem Switch in the PSTN ................................................................. 4
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch
`or PSTN Edge Switch and Without any Technical Differences ........... 8
`C. Archer in view of Chang (Ground 2) Discloses a Gateway
`Interconnecting a Controller on an IP Network to a Tandem
`Switch in the PSTN ............................................................................. 13
`D. Archer Discloses a Controller Establishing the Voice
`Communication Between the Calling Party and the Called Party
`After the Call is Completed ................................................................. 15
`Conclusion: Grounds 1 and 2 Disclose All of the Limitations of
`the Challenged Claims Even Under Patent Owner’s
`Constructions ....................................................................................... 17
`
`E.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by Patent
`Owner .................................................................................................. 18
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`U.S. Patent No. 8,457,113
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`
`B.
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification is Inapposite as it Refers to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention” ............................................................................. 20
`C. Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the
`Scope of “Switching Facilities” is Not Limited to the Preferred
`Embodiment of a PSTN Tandem Switch ............................................ 22
`Patent Owner’s Disclaimer Arguments Do Not Limit the
`Recited Claim Terms ........................................................................... 26
`Conclusion: Archer (Ground 1) and Archer in View of Chang
`(Ground 2) Disclose All of the Limitations of the Challenged
`Claims Under the Broadest Reasonable Interpretation of the
`Claims or Patent Owner’s Constructions ............................................ 28
`
`D.
`
`E.
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`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`
`PETITIONERS’ REPLY EXHIBIT LIST
`
` Exhibit Number
`1001
`1002
`1003
`1004
`1006
`1007
`1009
`1010
`1055
`1056
`1057
`1058
`1059
`1060
`1061
`
`1062
`1063
`1064
`1065
`
`2019
`
`2020
`
`2022
`
`Document
`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`Expert Declaration of Dr. Thomas F. 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”)
`U.S. Patent No. 8,115,298 (“the ’298 Patent”)
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,574,328
`U.S. Patent No. 7,324,635
`U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`U.S. Patent No. 5,164,879 (Honeywell v. ITT)
`U.S. Patent No. 6,618,707 (Chi. Bd. Options)
`U.S. Patent No. 4,893,306 (Telcordia Techs.)
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Reply
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Declaration of Regis J. “Bud” Bates in Support of Patent
`Owner’s Response in IPR2016-01261
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`
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`iii
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`
` Exhibit Number
`2042
`
`Document
`U.S. Pat. App. No. 11/948, 965, filed on November 20, 2007
`(annotations added by Patent Owner)
`U.S. Pat. App. No. 10/426,279, filed on April 30, 2003
`(annotations added by Patent Owner)
`U.S. Pat. App. No. 09/565,565, filed on May 4, 2000
`(annotations added by Patent Owner)
`
`2043
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`2044
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`I.
`
`INTRODUCTION
`Nothing in Patent Owner’s Response refutes the strong grounds for
`
`obviousness that led this Board to institute this Inter Partes review (“IPR”) on
`
`Ground 1 (Archer (EX1003) in view of the knowledge of a person of ordinary skill
`
`in the art (“POSA”)) as to claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, 163,
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`164, 166-168, 175, 179, 180, 181 of U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`
`and on Ground 2 (Archer in view of Chang (EX1004)) as to claims 1, 2, 8, 11, 15-
`
`19, 94, 95, 102, 109-113, 128, and 168 of the ’113 Patent. Patent Owner’s arguments
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`in response to these Grounds include that:
`
`
`
`(1) a POSA understood in May 2000 that the only way to connect to the
`
`PSTN was through a PSTN edge switch and therefore a POSA would
`
`understand that Archer fails to disclose connecting a call processing system
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`to the PSTN through a PSTN tandem switch; and
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`
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`(2) Archer does not disclose a “web-enabled processing system” that
`
`performs the step of “establishing the voice communication” nor how this
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`step is performed.
`
`Underlying these two arguments is Patent Owner’s third argument –
`
`essentially rehashing its disclaimer arguments in support of narrowing certain claim
`
`terms. However, as described below, Archer and Chang disclose each of the
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`1
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`IPR 2016-01261
`U.S. Patent No. 8,457,113
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`limitations in the Challenged Claims even if the claims are narrowed as urged by
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`Patent Owner.
`
`Patent Owner’s first argument—that the only way to interconnect a packet
`
`network to the PSTN was through an edge switch—lacks any factual support and is
`
`simply inaccurate. For example, during his deposition, Patent Owner’s expert (Mr.
`
`Bates) acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Additionally, in May 2000, a POSA understood
`
`that PSTN and IP networks could be interconnected at the tandem level and doing
`
`so posed no technical challenges over interconnecting such networks at a different
`
`switch such as a PSTN end office switch. For example, as illustrated in LaPier
`
`(EX1058) and Lewis (EX1057), from two of the major industry players in
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`converging networks (Cisco and Level 3, respectively), a POSA understood that
`
`interconnecting the PSTN to a packet switched network through a tandem switch, or
`
`an edge switch, provided maximum flexibility.
`
`Patent Owner’s second argument—Archer does not disclose that web-enabled
`
`server processor 128 performs the step of “establishing the voice communication”
`
`or sufficient details of how this step is performed—is also factually inaccurate. For
`
`example, Archer expressly discloses that “FIG. 4 is a flowchart of the software which
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`U.S. Patent No. 8,457,113
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`will execute on server processor 128” and FIG. 4 expressly describes such software
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`executing the step of:
`
`
`Moreover, Archer’s description of how software executing on server processor 128
`
`performs this step is at least as detailed as the description in the Shared Specification
`
`and Mr. Bates’ testified that further details were well-known to a POSA and not
`
`required to be described in a patent.
`
`Because Patent Owner’s first two arguments are unsupported and inaccurate,
`
`Archer and Archer in view of Chang disclose all of the limitations of the Challenged
`
`Claims even under Patent Owner’s proposed claim constructions of “switching
`
`facility”, “tandem switch”, “coupled to”, and “tandem access controller.”
`
`However, the Challenged Claims are also obvious under both Grounds
`
`because Patent Owner’s third argument—that the specification of the ’113 Patent,
`
`and prosecution history of related U.S. Patent No. 7,764,777 (“the ’777 Patent”),
`
`clearly and unmistakably narrow the scope of these claim terms—is also
`
`unsupported and inaccurate. Indeed, this third argument is simply a rehash of its
`
`disclaimer arguments that are without any legal or factual support and for which the
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`Board has already twice rejected (see Papers 19, 23).
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`Accordingly, the Board should find that the instituted claims are obvious.
`
`II. ARCHER (GROUND 1), AND ARCHER IN VIEW OF CHANG
`(GROUND 2) DISCLOSE EACH LIMITATION OF THE
`CHALLENGED CLAIMS
`A. Archer Discloses a Gateway Interconnecting a Controller (e.g.
`“web-enabled processing system”) on an IP Network to a Tandem
`Switch in the PSTN
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`As set forth in the Petition, Archer discloses that gateway 1261, that is coupled
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`to server processor 1282, passes information (e.g. voice and signaling) between the
`
`
`1 Patent Owner’s position that Archer doesn’t use the term “gateway” with respect
`
`to component 126 (or 132) is simply false. See EX1003, 5:34-35 (“Converter 126
`
`can also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
`
`gateway (i.e. converter 126) . . .”). Moreover, Patent Owner’s reliance on Archer’s
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`other nomenclature for the same component (“converter”) as indicating that
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`gateway 126 only converts signals between analog and digital formats is also false
`
`as Archer explicitly discloses that gateway 126 may “convert” or “translate”
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`circuit-switched digital voice (PCM) into multiple encoding schemes and digital
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`packets suitable for packet networks (e.g. IP packets). See id., 5:27-28; 5:59-62;
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`6:7-9; 8:18-21; 9:14-15; 11:23-25; EX1065, ¶25, n.2.
`
`2 Mr. Bates acknowledged that there is no such thing as an “edge switch” in IP
`
`networks. EX1059, 110:9-13; 114:17-20; 178:21-24. Thus, Patent Owner’s
`
`argument (Resp. 64-65, EX2022, ¶¶103-105) that Archer’s server processor 128
`
`(which is clearly on an IP network) is an edge switch is nonsensical. EX1065, ¶25,
`
`n.3; EX1003, FIGS. 2, 6; 6:6-9; 6:51-53.
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`5
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`PSTN 118 (136) and a packet network 130 (e.g. IP network)3. Pet., 26-36, 39-40,
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`43-44; EX1002, ¶¶133-165, 174-178, 189-192; EX1065, ¶25. Specifically, Archer
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`discloses that PSTN-to-IP network gateway 126 would be connected to a tandem
`
`switch in the PSTN 118 (136) because it receives voice from the PSTN as pulse
`
`coded modulation (PCM) which is used by a tandem switch but not an edge switch.
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`Id.; EX1003, 5:59-62 (“PSTN-to-IP network gateway (i.e. converter 126) should be
`
`able to support the translation of PCM to multiple encoding schemes to interwork
`
`with software from various vendors.”)4; see 5:10-11 (“Circuit-switched network 118
`
`can be . . . a digital network”); 5:23-27 (“[T]he heart of most telephone networks
`
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`3 Mr. Bates defined a “tandem switch” as a “switch that passes some form of
`
`information through it” and stated that he used this definition in his analysis for
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`this proceeding. EX1060, 356:9-357:8. Thus, Archer’s gateway (126) cannot be
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`an “edge switch” because it meets this definition and has an IP address such that it
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`is on an IP network. See n.3 supra.
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`4 Patent Owner ignores the explicit disclosure in Archer when it incorrectly asserts
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`that Archer discloses that PSTN-to-IP network gateway 126 only receives analog
`
`signals over analog lines. Resp., 43-44, 54-58; EX2022, ¶¶73-75, 86-89, 91-92;
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`EX1065, ¶¶24-26, n.4.
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`today is digital.”); 5:33-35; 5:42-46; EX1065, ¶26. Mr. Bates confirmed that digital
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`PCM protocol is used by a tandem switch and would overcome the transmission loss
`
`and impairment problems identified in the Shared Specification associated with
`
`analog signals (’113 Patent, 1:59-65). EX1059, 22:23-23:8; 26:7-15; EX2022, ¶45.
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`Thus, Patent Owner’s arguments that Archer’s gateway 126 interconnecting the
`
`PSTN 118 (136) to a packet network 130 must be connected to an edge switch,
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`ignores the express teaching of Archer and its own expert’s testimony. Id., Resp.,
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`43-44, 53-57; EX2019, 267:19-268:4; 271:2-273:12; EX1065, ¶¶24-28.
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`Rather, a POSA would understand that, as set forth in the Petition, Archer
`
`discloses that server processor 128 is coupled to a PSTN tandem switch in PSTN
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`118 (136) via PSTN-to-IP network gateway 126. Pet., 26-29, 33-35; EX1002,
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`¶¶135-142, 157, 159-162; EX2019, 267:19-268:4; 271:2-273:12; EX1059, 22:23-
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`23:8; 26:7-15; EX2022, ¶45; EX1065, ¶29.
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`Moreover, even if the claims are narrowed as urged by Patent Owner such that
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`“switching facility” can only be a PSTN tandem switch, and not a gateway, and that
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`“call processing system” must be directly connected to such a PSTN tandem switch,
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`Archer discloses this architecture. EX1065, ¶¶30-31. Archer discloses a tandem
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`access controller (“TAC”) (gateway 126 and server processor 128 and database 138
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`purple) interconnecting an IP network (blue) to the PSTN (green) through a PSTN
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`U.S. Patent No. 8,457,113
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`tandem switch (annotated in green below and as set forth supra)) as shown in
`
`annotated Figure 2:
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`EX1003, FIGS. 2 (annotated above), 6; Pet. 33-34, 50-53; EX1002, ¶¶155-163, 212-
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`PSTN
`PSTN tandem
`switch
`PCM
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`TAC
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`SS7
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`IP network
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`213, 217–20, 224; EX2019, 267:19-268:4; 271:2-273:12; EX1059, 22:23-23:8;
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`26:7-15; EX2022, ¶45; EX1065, ¶31.
`
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch and Without any Technical Differences
`Patent Owner’s assertions that (1) Archer discloses gateway must be
`
`connected to the PSTN through a PSTN edge switch and therefore the gateway is an
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`“edge device” (Resp., 53-57); (2) Archer does not inherently disclose that its
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`gateway is connected to a tandem switch (Resp., 57); and (3) it would not be obvious
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`U.S. Patent No. 8,457,113
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`to connect Archer’s gateways to a tandem switch (Resp., 58-59), all stem from its
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`expert’s misrepresentation of the state of the art. In May 2000, it was well-
`
`understood to a POSA to interconnect an IP network to the PSTN through an edge
`
`switch or a tandem switch to provide flexibility. EX1065, ¶¶32-35. For example,
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`Level 3’s patent to Lewis (EX1057) discloses a TAC (open architecture switch 502
`
`annotated in purple) interconnecting an IP network (blue) to the PSTN (green)
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`through a PSTN tandem switch (AT 106) (and separately also through an edge
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`switch (EO 104)) as shown in annotated Figures 4 and 5. EX1059, FIGS. 4-5
`
`(annotated below), 9A, 10A, 10C, 18A-18B, 12:50-56, 15:7-23, 19:24-28, 19:54-61;
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`20:60-63, 25:10-13, 25:16-21, 26:9-14, 29:44-51, 30:4-35; EX1065, ¶¶34-36.
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`
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`
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`SS7
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`PSTN
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`PSTN tandem
`switch 106
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`PSTN edge
`switch 104
`PCM
`
`SS7
`
`PCM
`
`TAC 502
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`IP network
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`PSTN
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`PCM
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`SS7
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`TAC 502
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`IP network
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`SS7
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`SS7
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` Likewise, Cisco’s patent to LaPier (EX1058) discloses a TAC (Network
`
`Access Server (NAS) 118a and Signaling Access Server 112 annotated in purple)
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`interconnecting an IP network (blue) to the PSTN (green) through a PSTN tandem
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`switch 114 (and separately also through an edge switch 116) as shown in annotated
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`FIG. 1B. EX1058, FIGS. 1B (annotated below), 1C, 7A, 7B, 4:58-5:4, 6:55-62,
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`9:18-22, 8:61-9:7, 9:26-29, 14:3-11, 35:13-16, 35:54-62, 38:13-40, 38:51-62;
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`EX1065, ¶¶34-35, 37.
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`
`PSTN
`
`PSTN tandem
`switch 114
`PSTN edge
`switch 116
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`SS7
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`PCM
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`TAC
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`SS7
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`IP network
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` Mr. Bates’s contrary opinion—a POSA in May 2000 would understand that
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`the state of the art taught that devices external to the PSTN must receive or send call
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`requests via the PSTN through an edge switch first, not a tandem switch—is simply
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`inaccurate. Id., Resp., 41; EX2022, ¶68; EX1065, ¶¶38-43. Notably, Mr. Bates
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`acknowledged that, in preparing his declarations, he did not actively research the
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`state of the art with respect to converging IP and PSTN networks (as recited in the
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`Challenged Claims). EX1059, 192:11-14. It is also noteworthy that Mr. Bates cited
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`no factual support for his own opinion (EX2022, ¶68), and his citations to the
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`testimony of Petitioners’ expert, and the experts of other Petitioners in different
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`IPRs, were taken out of context. Indeed, both Dr. La Porta (Petitioners’ expert) and
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`Mr. Willis (expert in other IPRs) testified that Mr. Bates’s opinion that devices
`
`external to the PSTN must connect to the PSTN through an edge switch first is
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`inaccurate with respect to converging PSTN and IP networks. See, e.g., EX2019,
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`350:4-24; EX1061, 80:9-20. When presented with this conflicting testimony, Mr.
`
`Bates acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Id.; EX1059, 201:22-202:11, 205:15-206:16,
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`211:21-213:14.
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`Therefore, Mr. Bates’s factually inaccurate and unsupported opinion should
`
`be entitled to little weight. Indeed, the state of the art prior to May 2000 included
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`systems in which devices external to the PSTN (e.g. on an IP network) sent and
`
`received call requests via the PSTN through (1) controllers on IP networks connected
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`to PSTN tandem switches (and not PSTN edge switches) via gateways (e.g. Archer)
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`or (2) controllers connected to PSTN tandem switches (and not PSTN edge switches)
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`(e.g. Lewis, LaPier). EX1065, ¶¶32-42. Moreover, as demonstrated by LaPier
`
`(EX1058) and Lewis (EX1057), interconnecting PSTN and IP networks at the
`
`tandem
`
`level was well known and posed no
`
`technical challenges over
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`interconnecting such networks at a different switch such as a PSTN end office
`
`switch. EX1057, FIGS. 4, 5, 15:7-23, 19:24-28, 19:54-61; EX1058, 1B, 1C, 6:55-
`
`62; EX1065, ¶43. Moreover, a POSA understood the advantages of connecting a
`
`controller to a tandem switch as taught in LaPier and Lewis including that doing so
`
`allows efficient control of the routing of calls using standard switching protocols and
`
`equipment and achieves Archer’s stated goal of reducing switching traffic of the
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`PSTN. EX1065, ¶¶43-47.
`
`C. Archer in view of Chang (Ground 2) Discloses a Gateway
`Interconnecting a Controller on an IP Network to a Tandem Switch
`in the PSTN
`As set forth in the Petition, Chang discloses that PSTN tandem switch (11T),
`
`that is coupled to service control point (SCP) 19, passes information (e.g. voice and
`
`signaling) through it, is a digital switch and sends and receives such information in
`
`a digital format. Pet., 16, 36-39; EX1002, ¶¶106, 166-173; EX1004, Fig. 1; 8:2-6;
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`8:29-33; 8:37-40; 8:66-9:3, 9:8-13; 9:31-34 (“The SSP tandem 11T then
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`communicates with the SCP via an SS7 type CCIS link . . . The SSP capable tandem
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`switches are digital switches.”); EX1065, ¶48. Mr. Bates’s testimony is that
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`“handling calls at the tandem level”, as Chang does, “maintains the quality of the
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`call as it is processed within the PSTN where the signal will most likely be in digital
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`form.” EX2022, ¶45.
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`As also set forth in the Petition, Petitioners detailed how Chang discloses a
`
`web-enabled processing system coupled to PSTN switching facilities including
`
`tandem switches (11T). Pet., 16, 22-26, 36-39; EX1002, ¶¶106, 119-132, 166-173.
`
`Petitioners further detailed the motivation for a POSA to modify Archer’s server
`
`processor 128 and database 138 with the teaching of Chang to include a web server
`
`525, and to connect the call processing system to a tandem switch (11T) in the PSTN.
`
`Pet., 16, 24-26, 38-39; EX1002, ¶¶106, 123-132, 168-173; EX1065, ¶50.
`
`As further set forth in the Petition, a POSA would be motivated to combine
`
`the teachings of Archer and Chang to connect Archer’s gateway 126 to a tandem
`
`switch to allow Archer to efficiently control routing of calls using standard switching
`
`protocols and equipment and achieve Archer’s stated goal of reducing switching
`
`traffic of the PSTN. Pet., 36-39; EX1002, 167–172; EX1065, ¶¶51-52. Moreover,
`
`motivation to connect Archer’s gateway 126 to a tandem switch in the PSTN is found
`
`expressly in Archer which states that gateway 126 preferably receives PCM voice
`
`from PSTN 118 (136) which a POSA understood as a protocol used by a tandem
`
`switch but not an edge switch. §II.A supra. Furthermore, a POSA would understand
`
`that the specific transmission loss and impairment problems identified in the Shared
`
`
`
`14
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`Specification (for ’113 Patent at EX1001, 1:59-655) could be solved using the system
`
`disclosed in Archer (Ground 1), or Archer in view of Chang (Ground 2). EX2022,
`
`¶45; EX1059, 16:6-20; 21:25-22:7, 26:7-15; 30:17-31:6; EX1060, 355:4-12;
`
`356:16-22; EX1065, ¶¶51-53.
`
`D. Archer Discloses a Controller Establishing
`the Voice
`Communication Between the Calling Party and the Called Party
`After the Call is Completed
`As set forth in the Petition, a POSA reading Archer would understand that the
`
`reference discloses a controller (web-enabled server processor 128 and database
`
`138) establishing the voice communication between the calling party and the called
`
`party after the call is completed. Pet., 40; see id. at 18-20, 26-28, 39-40; EX1002,
`
`¶¶102, 111-116, 133-135, 144, 174-177; EX1065, ¶54. For example, as identified in
`
`the Petition, Archer expressly discloses that “FIG. 4 is a flowchart of the software
`
`which will execute on server processor 128” and Figure 4 expressly describes such
`
`server processor software executing the step of:
`
`
`5 Mr. Bates testified that a POSA would understand that these identified
`
`transmission losses and impairments were from certain prior art PSTN switches
`
`that used analog end lines and connected two analog end lines together. EX2040,
`
`¶44 (“Running an analog voice signal from an edge switch to an edge device over
`
`copper wire degrades the quality of the signal.”); EX1059, 15:23-16:5.
`
`
`
`15
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
`
`Id.; EX1003, 6:47-48, Figure 4 (68), see id. at 7:14–21. Archer also expressly
`
`discloses that software executing on server processor 128 performs this step after
`
`receiving signaling that the called party has answered (e.g. “response”, “pick-up
`
`notification”), which Mr. Bates acknowledged is when the “call is completed.” Id.;
`
`see EX1003, Figure 4 (64), 6:30-32, 8:43-45, 9:31-36; EX1065, ¶¶55-57; EX1059,
`
`250:23-251:17; EX1060, 331:17-332:20.
`
`Patent Owner’s additional arguments (Resp., 52, 53) that Archer does not
`
`describe sufficient details regarding how software executing on sever processor 128
`
`performs this “establishing” step are also misplaced as Mr. Bates acknowledged that
`
`no details of how the recited “establish the voice communication” claim step is
`
`performed need be disclosed in a patent specification because such details were well-
`
`known to a POSA prior to May 2000. EX1059, 155:13-158:11; see also, e.g.,
`
`EX1001, 4:65-5:3 (“[T]he TAC 10 . . . connects the two calls.”); 6:13 (“The TAC
`
`10 links the two calls.”); 9:58-60 (“When the subscriber answers the phone, TAC 10
`
`completes the connection between the two parties.”); 11:8-10 (“When a party
`
`answers one of the ringing lines, the answering party is connected to the calling
`
`party, and the other calls are abandoned.”). Thus, a POSA would understand that
`
`
`
`16
`
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`Archer discloses a controller (web-enabled server processor 128 and database 138)
`
`establishing the voice communication between the calling party and the called party
`
`after the call is completed. EX1065, ¶¶58-60.
`
`E. Conclusion: Grounds 1 and 2 Disclose All of the Limitations of the
`Challenged Claims Even Under Patent Owner’s Constructions
`As set forth in the Petition and supra, a POSA would understand that Archer
`
`(Ground 1), and Archer in view of Chang (Ground 2), each disclose a gateway (126)
`
`interconnecting a web-enabled server processor 128 and database 138 on a packet
`
`network (IP network 130) to a tandem switch in the PSTN (tandem switch (e.g. 11T)
`
`in PSTN 118 (136)). §§II.A-C.
`
`Thus, even if the Board adopts Patent Owner’s constructions of a “switching
`
`facility” and a “tandem switch” as a PSTN tandem switch (Resp., 30-35), of
`
`“coupled to” as being connected to without an intervening edge switch (Resp., 35-
`
`38), and of “tandem access controller” as a controller connected to a PSTN tandem
`
`switch without an intervening edge switch (Resp., 63), the Challenged Claims are
`
`obvious over Archer, and Archer in view of Chang because a POSA would
`
`understand both Grounds disclose a web-enabled processing system connected to a
`
`PSTN tandem switch without an intervening edge switch. Id.; see EX1060, 303:15-
`
`304:4; 325:10-15; 326:11-327:12; 356:16-357:8; 365:25-366:6; 367:25-368:11;
`
`369:5-370:17; 380:4-381:17; EX1065, ¶¶61-62. Furthermore, the Challenged
`
`
`
`17
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`Claims are obvious over both Grounds because all of the limitations of the
`
`Challenged Claims are disclosed. §§II.A-D; EX1065, ¶63.
`
`III. THE CHALLENGED CLAIMS ARE ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY” AS
`ASSERTED BY PATENT OWNER
`The Challenged Claims are also obvious over both grounds because Patent
`
`Owner’s disclaimer arguments regarding “switching facility” are factually and
`
`legally unsupported.
`
`The term “switching facility” does not appear in the specification of any of
`
`the claimed priority documents6, but was instead introduced for the first time during
`
`prosecution of the application leading to the ’777 Patent in February 2010. EX1010,
`
`66, 68-80, 84-88. Specifically, Applicant amended several existing claims to include
`
`“switching facility” and added new claims reciting the term. EX1010, 68-80. Four
`
`months later, on June 22, 2010, Applicant filed the application leading to the ’113
`
`Patent, as a continuation of the ’777 Patent, which included “switching facility” only
`
`in the claims and again not in the specification. EX1009, 211-234.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this Case
`
`
`6 The ‘777 Patent application (EX2042), App. No. 09/565,565 (EX2044; EX1055),
`
`and App. No. 10/426,279 (EX2043; EX1056). EX1001, 1.
`
`
`
`18
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`
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
`from All but One of the Cases Relied Upon by Patent Owner
`As a threshold matter, the undisputed fact that “switching facilities” was not
`
`used in the Shared Specification distinguishes this case from all but one7 of the cases
`
`relied upon by Patent Owner for its disclaimer arguments. EX1006; Resp., 11-15,
`
`26-28. In each of these cases, the claim terms at issue were used throughout the
`
`specification to provide evidence as to their meaning. In re Man Mach. Interface
`
`Techs. LLC, 822 F.3d 1282, 1286-1287 (Fed. Cir. 2016); OpenWave Systems, Inc.
`
`v. Apple Inc., 808 F.3d 509, 511-516 (Fed. Cir. 2015); Chi. Bd. Options Exch., Inc.
`
`v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1363-1365, 1371-1373 (Fed. Cir. 2014);
`
`Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1367-1370, 1374-1375 (Fed.
`
`Cir. 2010); Akamai Techs. Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1323-
`
`1328 (Fed. Cir. 2010); Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1132-1137
`
`(Fed. Cir. 2003); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`
`F.3d 1337, 1339-1340, 1342-1343 (Fed. Cir. 2001).
`
`Notwithstanding the boundaries of its own cited cases, Patent Owner argues
`
`that the Shared Specification, despite Applicant not using “switching facility”
`
`therein, retroactively limits the meaning of this term because it identified (1) various
`
`
`7 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006); §III.B
`
`infra.
`
`
`
`19
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`problems in prior art systems and (2) directly connecting the controller to a PSTN
`
`tandem switch as the preferred embodiment. Resp., 9, 14-16, 20, 32; EX2022, ¶¶42-
`
`52, 62, 66. However, such retroactive narrowing is only permitted if the Shared
`
`Specification clearly and unmistakably identified “the invention” or “the present
`
`invention” as: (1) directly connecting the controller to a PSTN tandem switch (which
`
`it does not), or (2) solving all of identified prior art problems (which it does not).
`
`See Honeywell Int’l, 452 F.3d at 1315-1316, 1318; Honeywell Inc. v. Victor Co. of
`
`Japan, LTD., 298 F.3d 1317, 1323-1326 (Fed. Cir. 2002).
`
`B.
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification
`is
`Inapposite as
`it Refers
`to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention”
`In the only case relied upon by Patent Owner in which a claim term was
`
`introduced for the first time during prosecution (Honeywell Int’l, Inc.), the
`
`specification characterized, on several occasions, the “invention” or “the present
`
`invention” as the narrower meaning adopted by the Federal Circuit for the newly
`
`introduced term. 452 F.3d at 1315-1316, 1318; EX1062 at 1:8-9; 1:40-43; 1:43-49;
`
`3:41-43. In contrast, here, the identified solutions to prior art problems in the Shared
`
`Specification explicitly refer to a “preferred”, “one”, or “another” embodiment or
`
`system:
`
`
`
`20
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`Reply to Patent Owner’s Response
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
`A preferred embodiment of the inventive system described herein
`connects at the tandem, thereby eliminating these problems. EX1001,
`2:1-3;
`In one embodiment, the system includes a processor (referred to
`herein as a tandem access controller) connected to the PSTN which
`would allow anyone to directly provision, that is to say set-up and
`make immediate changes to, the configuration of his or her phone
`line. In another embodiment, a tandem access controller (TAC)
`subsystem is connected internally to the PSTN in a local service area.
`The TAC provides features, selected by the subscriber, to all edge
`switches connected to the PSTN tandem switch. Connecting directly
`to the PSTN tandem switch (or embedding the system into the tandem
`switch) eliminates the signal degradation problems previously
`described. Id., 3:28-40; see also id., 3:66-4:3, FIG. 1 (“in one
`embodiment
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