Supplemental Brief in Response to Patent Owner’s Motion to Amend
`IPR 2016-01261
`U.S. Patent No. 8,457,113
`
`
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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’ SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`DM2\8273565.8
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`
`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’ SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`DM2\8273565.8
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`
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ............................................................................................... 1
`I.
`A. Preliminary Matters .......................................................................................... 1
`B. Petitioner’s Supplemental Briefing .................................................................. 2
`II. THE ’113 PATENT’S DESCRIPTION OF THE STATE OF THE ART AND
`THE ALLEGED INVENTION ................................................................................. 3
`III. CHALLENGES AND STATUTORY GROUNDS FOR CHALLENGES ........ 7
`A. Motivation to Combine Lewis or LaPier and AAPA. ...................................... 7
`B. Challenge 1: Lewis in View of AAPA ............................................................. 8
`1. Claim 183: “web enabled” ............................................................................ 8
`2. Claim 183: “intelligent interconnection between packet network and
`second network” ................................................................................................10
`3. Claim 183: “PSTN telecommunications network and switches” ................10
`4. Claim 183: “enabling voice across packet network and second network
`and subscriber called party” .............................................................................11
`C. Challenge 2: LaPier in View of the AAPA ....................................................12
`1. Claim 183: “web enabled” ..........................................................................12
`2. Claim 183: “intelligent interconnection between packet network and
`second network” .................................................................................................14
`3. Claim 183: “PSTN telecommunications network and switches” ...............14
`4. Claim 183: “enabling voice across packet network and second network
`and subscriber called party” .............................................................................15
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`PETITIONERS’ SUPPLEMENTAL BRIEF EXHIBIT LIST
`
` Exhibit Number
`1001
`1002
`1003
`1057
`1058
`1059
`1060
`1065
`
`1066
`
`2019
`
`2020
`
`2040
`
`2041
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`2062
`
`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. 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
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Reply to Patent Owner’s Response
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Opposition to Motion to Amend
`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.
`Expert Declaration of Regis “Bud” Bates in Support of Patent
`Owner’s Motion to Amend
`Section 112 Written Description Support for the Proposed
`Substitute Claim
`Clean and Redlined Versions of the Proposed Substitute Claim
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`INTRODUCTION
`I.
`Petitioners submit this supplemental brief pursuant to the Board’s October 19,
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`2017 order to address “the issue regarding the unpatentability of the proposed
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`substitute [Claim 183 of U.S. Pat. No. 8,457,113 (“the ’113 Patent”)]” and
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`specifically to “address[] original claim limitations not previously addressed by
`
`Petitioners based on the prior art in the record.” Paper 65 (“Aqua Order”), 6.
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`
`Preliminary Matters
`A.
`Petitioners contend that the Board’s March 21, 2017 order (Paper 29, 4-6) was
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`correct that the burden of persuasion on the Motion to Amend (Paper 31) is
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`properly on the Patent Owner to show patentability of Claim 183. In Aqua Prods.,
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`Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed. Cir. Oct. 4, 2017), the
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`Federal Circuit shifted this burden onto Petitioners to show unpatentability.
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`Petitioners object to and reserve their rights to challenge the Aqua decision, and
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`any reliance on that decision by the Board.
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`In order to preserve this right, Petitioners object to the Aqua Order (Paper 65,
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`at 6-7) on the ground that: (1) in view of the absence of rules issued by the PTO
`
`addressing this burden, it is improper for the Board in the first instance to engage
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`in rulemaking in the Order, and (2) it violates Petitioners’ due process rights. The
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`Aqua Order does not account for the difference between the burden of showing
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`patentability and unpatentability. In order to meet its burden of patentability,
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`Patent Owner needed only to identify a single limitation that is missing from the
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`prior art. Under 37 C.F.R. §§ 42.20, 42.24 and 42.121, Patent Owner had 25 pages
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`to argue that either of two alleged limitations in Claim 183 were missing from the
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`prior art, and the Board authorized Patent Owner to submit its §112 support in a
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`separate chart. Paper 29, 2-7; Paper 31, 12-13, 22. On the other hand, for a
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`petitioner to meet its burden of unpatentability, it needs to show where every
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`limitation of a claim is found in the prior art. In light of these different burdens, it
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`is improper and unduly prejudicial for the Board to issue a rule limiting Petitioners
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`to only 15 pages for this Supplemental Briefing, especially while prohibiting them
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`from: (1) using expert testimony, including in support of any Graham analysis, and
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`(2) incorporating by reference arguments from prior briefing. Aqua Order, 5-7.
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`Petitioner’s Supplemental Briefing
`B.
`In their Opposition (Paper 35), Petitioners addressed the two features that
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`Patent Owner asserted were not found in the prior art. Per the Board’s Aqua Order,
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`this Supplemental Briefing is directed to the remaining four limitations:
`
`Proposed Substitute Claim 183 Limitation
`“A method performed by a web enabled processing system
`including one or more web servers coupled to a tandem
`access controller”
`“[TAC] serving as an intelligent interconnection between at
`least one packet network and a second network coupled to
`a particular PSTN tandem switch of a PSTN
`telecommunications network, wherein the second network
`is a network of PSTN tandem switches”
`
`Abbreviation
`“web enabled”
`
`“intelligent
`interconnection
`between packet
`network and second
`network”
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`“PSTN
`telecommunications
`network and
`switches”
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`“the PSTN telecommunications network comprising a
`plurality of edge switches connected to telephones on one
`side and PSTN tandem switches on the other side, wherein
`the PSTN tandem switches includes the particular PSTN
`tandem switch, wherein the edge switches route calls from
`and to subscribers within a local geographic area and the
`PSTN tandem switches route calls to the edge switches or
`the PSTN tandem switches local or in other geographic
`areas, wherein the PSTN tandem switches are not the edge
`switches, wherein the PSTN tandem switches are not
`directly connected to any of the telephones”
`“the method for enabling voice communication of a call
`from a calling party to a called party across both the packet
`network and the second network, wherein the called party
`is a subscriber”
`
`“enabling voice
`across packet
`network and second
`network and
`subscriber called
`party”
`II. THE ’113 PATENT’S DESCRIPTION OF THE STATE OF THE ART
`AND THE ALLEGED INVENTION
`Based on the admissions in the specification and by Patent Owner’s expert
`
`described below, Petitioners have annotated Figure 2 to show the state of the art:
`Conventional PSTN
`Conventional PSTN
`Conventional PSTN signaling (SS7) and voice
`tandem switch 16
`tandem switch 16
`
`Well-known
`central office
`17
`
`Well-known
`central office
`18
`
`Conventional VoIP
`signaling and voice
`
`Conventional
`Web /
`Internet
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`Subscriber 12
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`Conventional phones (14, at 20),
`computers, VoIP-capable phone
`21
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`3
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`Calling party 20
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`The specification acknowledges that the alleged invention uses conventional
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`edge and tandem switches in the existing PSTN (shaded green); conventional SS7
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`signaling that is communicated within the PSTN; and conventional calling devices:
`
`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 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. (EX1001, 1:49-51, 4:47-54.)
`At the time of the invention, the PSTN utilized the Signaling System 7
`(“SS7”) protocol to set up calls. ‘Setting up’ calls refers to the exchange of
`control signaling that causes the establishment of a path over which voice
`data can flow. (EX2022, ¶40; EX2040, ¶39.)
`The specification also acknowledges that it uses the conventional Web (e.g. the
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`Internet) (shaded blue); conventional equipment within the Web (e.g. servers); and
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`conventional devices (e.g. computers, VoIP-capable phones)–in conventional ways
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`(e.g. using a web portal to enter or change call control information, VoIP):
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`Today, there are web-based companies managing 3rd-party call control, via
`the toll-switch network, which allow users to enter call control information
`through a web portal. (EX1001, 1:34-37, 5:13-15; EX1060, 271:8-18.
`Patent Owner’s expert also confirmed that the use of a web-enabled processing
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`system to enter call control information was known:
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`Q: “[I]t's your testimony that entering . . . call control information for
`telephone features through a web portal was known; is that right?” A: “It
`was disclosed as those things known in the industry.” EX1060, 271:12-18.
`Q: “A web portal would include a web server; correct?” A: “Typically, it
`would, yes.”); EX1060, 272:18-20; EX1059, 54:14-21, 55:6-15, 55:23-25.
`The specification also acknowledges that signaling and voice between
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`converging networks (e.g. PSTN and the Internet) was done in a conventional
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`manner—indeed, the only disclosure of communications between convergent
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`networks is the bi-directional arrow labeled “VoIP” in Figure 2.
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`Likewise, Patent Owner’s expert repeatedly confirmed that making a VoIP call
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`and the systems that allowed VoIP to PSTN calls were conventional and known:
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`“Q. Does the patent talk about how to connect a VoIP call to a circuit
`switch call? A. Not specifically in terms of how to do that . . . But once
`again, if a person of skill in the art knows that we're going to take a packet
`call and we're going to convert it into a PSTN or vice-versa, they would
`understand that.” EX1059, 137:6-11
`“Q. [N]one of the patents describe how to convert between IP signaling and
`circuit switch signaling, correct? A. Correct.” Id., 135:14-23
`“Q. [T]his conversion protocol, because the patent doesn't describe it, it
`would have to be well-known to a person of ordinary skill in the art; is that
`correct? A. [] [T]hese are all networks that have already been known, and
`one of skill in the art would understand it.” Id., 134:20-135:13.
`Against that background, the specification describes the “tandem access
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`controller” (TAC 10 in Figure 2, shaded purple) as the only allegedly new
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`component in this otherwise conventional architecture. However, the specification
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`twice acknowledges that the TAC does not include any new hardware, firmware,
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`or software, and that its software/firmware is programmed conventionally:
`
`The TAC 10 may use any combination of hardware, firmware, or software
`and, in one embodiment, is a conventional computer programmed to carry
`out the functions described herein. (EX1001, 4:39-42.)
`The TAC 10 may be implemented using conventional processor hardware. .
`. Devising the software/firmware used to control the TAC 10 is well within
`the capability of those skilled in the art since the various control features
`that can be made available are generally already known. (Id., 6:48-55.)
`Moreover, the programming was so well known that the TAC is described as
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`implementing well-known call processing using known software techniques:
`
`Examples of features that can be selected by the subscriber include:
`conditional call blocking, call forwarding, call altering, time of day
`conditions, day of week conditions, follow-me, caller recognition/
`password, caller ID, call screening/retrieval from voice mail, speed dialing,
`interactive voice response, and speech recognition. Any other feature could
`be added. These features can be implemented in the TAC 10 using known
`software techniques since such features are known. (Id., 5:26-32.)
`Indeed, according to Patent Owner’s expert, the invention of the ’113 Patent is
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`not the TAC’s hardware or software or programming, but the idea of controlling
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`conventional call processing from a more centralized network location than the
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`Class 5 switch serving the subscriber:
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`Handling calls at the tandem level maintains the quality of the call, as it is
`processed within the PSTN, where the signal may be in digital form and/or
`carried over high-quality lines (as opposed to the end lines that carry a call
`from a CO to a phone. (EX2040, ¶44; see also EX1059, 18:21-19:24.)
`But the hardware, software, programming, and architecture necessary for
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`implementing this control was known. Indeed, Patent Owner’s expert
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`acknowledged during his deposition that “the network as it existed” “prior to May
`
`4, 2000” included a “connecting node between an IP carrier [network] and the
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`PSTN . . . at a higher switch level, like a tandem switch” and that this “higher level
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`switch, like a tandem switch” would communicate with “PCM” or “TDM” on “the
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`PSTN side.” EX1059, 155:13-158:11; 250:23- 251:17. Similarly, during his
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`deposition, Petitioners’ expert confirmed that converging IP and PSTN telephone
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`networks typically connected at tandem (Class 4) switches and not edge (Class 5)
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`switches. EX2019, 350:4-24; EX1059, 202:3-11, 211:21-212:3.
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`We will refer to the foregoing as Applicant’s Admitted Prior Art (“AAPA”).
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`III. CHALLENGES AND STATUTORY GROUNDS FOR CHALLENGES
`Ground
`Basis for Challenge
`1
`Obvious under §103(a) by Lewis in view of AAPA
`2
`Obvious under §103(a) by LaPier in view of AAPA
`A. Motivation to Combine Lewis or LaPier and AAPA.
`Like proposed Claim 183, Lewis and LaPier are directed to telephony across
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`converging VoIP and PSTN networks. EX1057, FIGS. 4, 5, 12:50-56, 25:9-10,
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`26:4-14; EX1058, FIG. 1B, 35:13-16, 35:54-62; EX1066, ¶¶57, 74. Lewis and
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`LaPier show that it was well known to control call processing in a more centralized
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`network location than the Class 5 switch serving the subscriber. EX1058, 2:25-31,
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`FIG. 1B; EX1057, FIGS. 4-5, 19:24-28; cf. EX2040, ¶44. Lewis and LaPier also
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`demonstrate that interconnecting PSTN and IP networks at the tandem level was
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`well known and posed no technical challenges over interconnecting such networks
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`at a different switch, such as an end office switch. EX1057, FIGS. 4, 5, 15:7-23,
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`19:24-28, 19:54-61; EX1058, 1B, 1C, 6:55-62; EX1065, ¶¶32-35, 43.
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`Lewis and LaPier were filed by two of the major players in converging IP and
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`PSTN networks in the late 1990s (Level 3 and Cisco Systems). EX1066, ¶53, n.4.
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`Both Patent Owner’s and Petitioners’ expert testified in their depositions that
`
`converging IP carrier and PSTN networks typically connected at tandem (Class 4)
`
`switches and not at edge (Class 5) switches. See §II infra. Furthermore, a POSA
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`understood the advantages of connecting a controller to a tandem switch as taught
`
`in LaPier and Lewis, including that doing so: (1) allows efficient control of the
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`routing of calls using standard switching protocols and equipment, and (2) reduces
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`switching traffic of the PSTN. EX1002, ¶¶169-173; EX1065, ¶¶43-47.
`
`B. Challenge 1: Lewis in View of AAPA
`Claim 183: “web enabled”
`1.
`Lewis discloses this limitation. Lewis discloses a TAC (open architecture
`
`switch 502 within open architecture platform 402 including gateway 508, tandem
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`Network Access Server (NAS) Bays 504 and modem NAS bays 514) that performs
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`the steps of the method recited in proposed Claim 183. EX1057, FIGS. 4, 5, 9A,
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`10A, 12:50-56, 14:65-15:1, 19:24-28, 19:54-61, 25:35-39, 26:4-14, 27:3-5, 27:50-
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`52, 27:59-62, 28:26-30, 29:1-11, 29:44-41, 30:13-19, 30:24-43; EX1066, ¶¶56-69.
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`Like the TAC of the ’113 Patent, Lewis describes that the TAC implements well-
`
`known call processing for various call “class functions”, and stores and accesses
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`call control information for subscribers (e.g. called parties) from a database 516
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`(716). §II infra; EX1057, FIGS. 5, 7, 9A-9B, 11, 13, 20:64-21:2 (“GW 508
`
`comprises SS7 gateway (SS7 GW) 512, control server 510, and database 516
`
`communicating with control server 510.”), 22:36-42, 22:50-57 (“OAP database
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`716 contains the destination of the call, any class functions associated with the call,
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`the type of routing algorithm that should be used.”), 22:64-23:9. Lewis describes
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`that subscribers can interface and communicate with ISP 112, which is coupled to
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`the TAC 502, using a Web browser (Netscape) on a computer. EX1057, FIGS. 4,
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`5, 14:65-15:6, 15:44-55, 15:60-63, 20:50-53. Web browsers allow users to view
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`web pages provided on the Internet 112 by web servers. EX1002, ¶¶80-82, 88-89;
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`EX1049, 123-27. It would have been obvious to a POSA to allow Lewis’s
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`subscribers to enter or change call control information for storage in Lewis’s
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`database 516 (716) in Lewis’s TAC 502, and by coupling the Web servers
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`communicating with Lewis’s Web interface to the TAC, because, as the ’113
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`Patent and Patent Owner’s expert acknowledge, doing so is the conventional
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`approach, widely supported by conventional web portals and web browsers. §II
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`infra; EX1002, ¶¶65-69. Doing so was also well understood to achieve various
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`predictable benefits. EX1002, ¶¶65-69, 83-84, 117-118.
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`2.
`
`Claim 183: “intelligent interconnection between packet network
`and second network”
`Lewis discloses this limitation. Lewis discloses the PSTN including edge
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`switches EO 104 and tandem access switches AT 106 connected to a packet
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`network (e.g. IP network) 408 with the TAC 502 serving as an intelligent
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`interconnection between the two converging networks and coupled to the particular
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`tandem switch AT 106. EX1057, FIGS. 4, 5, 9A, 12:47-49, 12:50-56, 14:65-15:1,
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`15:6-10, 15:13-16, 15:21-23, 15:44-47, 19:54-67, 25:9-10, 25:35-44, 26:4-14;
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`EX1066, ¶58. It was well known, as acknowledged by the ’113 Patent and Patent
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`Owner’s expert, that the conventional PSTN described in Lewis included a
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`network of PSTN tandem switches, including the particular tandem switch AT 106.
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`Id., §II infra; EX1066, ¶¶59, 63; EX1060, 298:3-13; 299:12-17.
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`Claim 183: “PSTN telecommunications network and switches”
`3.
`Lewis discloses this limitation. It was well known, as acknowledged by the
`
`’113 Patent and Patent Owner’s expert, that the conventional PSTN described in
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`Lewis includes edge switches EO 104 connected to telephones 110 on one side and
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`tandem switches AT 106, which are not directly connected to telephones 110, on
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`the other side, wherein the tandem switches AT 106 are not the edge switches EO
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`104, wherein the edge switches route calls from and to subscribers within a local
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`geographic area and the tandem switches route calls to the edge switches or the
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`PSTN tandem switches local or in other geographic areas. EX1057, FIGS. 4, 5,
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`9A, 15:7-23; §II infra; EX2041, p. 4-5; EX1066, ¶¶58-59.
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`4.
`
`Claim 183: “enabling voice across packet network and second
`network and subscriber called party”
`Lewis discloses this limitation. Lewis discloses a TAC that performs the steps
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`of the method recited in proposed Claim 183. §III.1.C.1 supra. Lewis discloses
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`that this method performed by the TAC enables voice communication of a call
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`from a calling party to a called party across both the packet network (e.g. Internet)
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`and the second network in the PSTN. EX1066, ¶¶57, 60, 63, 67. Lewis describes
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`a VoIP call as voice traffic over a data network or data connection. EX1057,
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`FIGS. 5, 9A, 12:50-56 (“Voice over packet refers to the carrying of telephony or
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`voice traffic over a data network, e.g. . . . voice over Internet Protocol (IP).”),
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`14:65-15:1 (“Calling party 102 and called party 110 can be ordinary telephone
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`equipment . . . or applications running on a host computer.”); 25:23-26, 25:35-39,
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`26:4-14 (“NAS bay 942 can . . . provide[] both the tandem functions of tandem
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`NAS bay 504, and the modem functions of modem NAS bay 514 . . . [C]alling
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`party 914, via its host computer, has the additional feature of providing voice over
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`IP (VOiP) service over communications link 944.”); EX1066, ¶65.
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`In one embodiment, using an architecture that is virtually identical to the ’113
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`Patent, Lewis teaches the TAC receives call requests in the form of SS7 signaling,
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`and voice, from tandem switch AT 106 and converts the voice and SS7 signaling to
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`formats suitable for use on the packet network 408 to ensure that PSTN to VoIP
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`calls are routed properly to the called party as a VoIP called party. Id., see also
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`EX1057, Figures 4, 10A, 25:9-10, 27:3-5, 27:50-52, 27:59-62, 28:26-30, 29:1-11,
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`29:44-51, 29:66-30:9, 30:13-19; EX1066, ¶¶57, 60. Lewis discloses the called
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`party can be a subscriber. EX1057, 15:35-37, 14:65-15:1, 15:51-52, 25:61-64;
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`EX1060, 387:12-390:11.
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`C. Challenge 2: LaPier in View of the AAPA
`Claim 183: “web enabled”
`1.
`LaPier discloses this limitation. LaPier discloses a TAC (Network Access
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`Server (NAS) 118 and Signaling Access Server (SAS) 112) that performs the steps
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`of the method recited in proposed Claim 183. EX1058, FIGS. 1B, 7A, 4:58-5:4,
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`8:61-9:7, 35:54-62, 38:1-4, 35:13-22, 35:26-40; EX1066, ¶¶74-88. Like the TAC
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`of the ’113 Patent, LaPier describes that the TAC implements well-known call
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`processing for various call features, and stores and accesses call control
`
`information from a database. EX1058, 16:1-16 (“The computer system used to
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`implement the [SAS] 112 may also execute one or more other intelligent network
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`applications. In this configuration, one or more separate applications execute on
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`the SAS host . . . For example, a separate application may carry out intelligent
`
`routing to the appropriate [NAS] based on the type of service that is required. This
`
`type of application could improve utilization of [NAS] resources by re-directing
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`calls to the [NAS] that is best able to supply the required service.”), 16:17-32,
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`16:44-51, 35:13-16, 36:54-64 (“[SAS] 112 can store access control lists of network
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`addresses. The access control lists may be used to block messages that contain
`
`calling numbers identified in the lists . . . [SAS] 112 can store access control lists
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`of destination point codes . . . [that] may be used to block call processing messages
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`that are directed to one of the point codes identified in the lists.”)
`
`LaPier describes that users can communicate with the TAC using a Web
`
`browser and HTTP messages. EX1058, Fig. 1C (computer 126), 24:41-52, 25:5-9
`
`(“A user or client software element 1101, which may be co-located with platform
`
`1102 or remote from it, communicates with the platform, for example, using a Web
`
`browser and HTTP messages.”) Web browsers allow users to view web pages
`
`provided on the Internet by web servers and HTTP was the protocol that managed
`
`communications between web servers and web browsers. EX1002, ¶¶80, 88-89;
`
`EX1049, 123-27. Thus, LaPier describes one or more web servers coupled to the
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`TAC. It would have been obvious to a POSA to allow users to enter or change call
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`control information for access by LaPier’s TAC, and via LaPier’s web interface to
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`the TAC, because, as the ’113 Patent and Patent Owner’s expert acknowledge,
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`DM2\8273565.8
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`doing so is the conventional approach, widely supported by conventional web
`
`portals and web browsers. §II supra; EX1002, ¶¶65-69. Doing so was also well
`
`understood to achieve the readily apparent and predictable benefits of improving
`
`the system’s function by providing an easy-to-use interface for users with 24-hour
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`access to the TAC from anywhere in the world using standard computer software.
`
`EX1002, ¶¶65-69, 117-118.
`
`2.
`
`Claim 183: “intelligent interconnection between packet network
`and second network”
`LaPier discloses this limitation. LaPier discloses the PSTN including edge
`
`switches 116 and tandem access switches 114 connected to a packet network 122
`
`with the TAC serving as an intelligent interconnection between the two converging
`
`networks and coupled to the particular tandem switch 114. EX1058, FIGS. 1B-1C,
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`4:58-5:4, 5:28-35, 6:60-62, 8:61-9:7, 35:13-16, 35:54-62; EX1066, ¶¶74-76. It
`
`was well known, as acknowledged by the ’113 Patent and Patent Owner’s expert
`
`that the conventional PSTN described in LaPier included a network of PSTN
`
`tandem switches, including a particular tandem switch 114. Id., §II infra; EX1066,
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`¶77; EX1060, 298:3-13; 299:12-17.
`
`Claim 183: “PSTN telecommunications network and switches”
`3.
`LaPier discloses this limitation. It was well known, as acknowledged by the
`
`’113 Patent and Patent Owner’s expert, that the conventional PSTN described in
`
`LaPier includes edge switches 116 connected to telephones 105 on one side and
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`DM2\8273565.8
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`tandem switches 114, which are not directly connected to telephones 105, on the
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`other side, wherein the tandem switches 114 are not the edge switches 116,
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`wherein the edge switches route calls from and to subscribers within a local
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`geographic area and the tandem switches route calls to the edge switches or the
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`tandem switches local or in other geographic areas. EX1058, Figures 1B-1C, 5:28-
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`35, 6:60-62, 7:1-3; §II infra; EX2041, p. 4-5; EX1066, ¶¶76-77.
`
`4.
`
`Claim 183: “enabling voice across packet network and second
`network and subscriber called party”
`LaPier discloses this limitation. LaPier discloses that the TAC enables voice
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`communication of a call from a calling party to a called party across both the
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`packet-switched network 122 and the second network in the PSTN. EX1066,
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`¶¶74-75, 78. The SAS 112 of the TAC in LaPier receives call requests in the form
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`of SS7 signaling, NAS 118 of the TAC receives voice from tandem switch 106,
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`and the TAC converts the voice and SS7 signaling to formats suitable for use on
`
`the packet network 122 to ensure that voice calls are routed properly. Id., ¶¶74-75,
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`78; EX1058, FIGS. 1B-1C, 4:58-5:4, 5:8-16, 5:28-43, 6:4-9, 6:49-54, 6:60-62,
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`8:61-9:7, 9:18-22, 9:26-29, 35:13-16, 35:54-62, 38:13-40, 38:51-62. The TAC in
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`LaPier interconnects the voice calls between the PSTN and the packet-switched
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`network 122. EX1058, 5:8-16, 5:28-35, 6:10-27, 6:55-62, 8:61-9:7, 38:26-40,
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`38:51-62; EX1066, ¶75. LaPier discloses the called party can be a subscriber.
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`EX1058, 16:17-32, 36:6-21, 36:54-64, cls. 1, 16-19; EX1060, 387:12-390:11.
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`DM2\8273565.8
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`Dated: October 31, 2017
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`
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`Respectfully submitted,
`
`By: /Patrick D. McPherson/
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`Duane Morris LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
`LEAD COUNSEL FOR
`PETITIONERS
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`DM2\8273565.8
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`16
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6(e)
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on the 31st
`
`day of October 2017, a complete and entire copy of this Supplemental Brief to
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`Petitioners’ Opposition to Patent Owner’s Motion to Amend and all supporting
`
`exhibits not already of record in this proceeding were provided via the Patent Trial
`
`and Appeal Board End to End (PTAB E2E) System as well as delivering a copy
`
`via email on the following counsel for Patent Owner at:
`
`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
`
`Dated October 31, 2017
`
`LEAD COUNSEL FOR PETITIONERS
`
`
`DM2\8273565.8
`
`1
`
`
`
`By: /Patrick D. McPherson/
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`Duane Morris LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
`
`
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