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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.,
`And 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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`________________
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`Case IPR2016-01262
`Patent Number: 7,764,777 B2
`________________
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`NOTICE OF APPEAL TO THE FEDERAL CIRCUIT (35 U.S.C. § 141(c))
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`To: Office of the General Counsel
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Paper No. 72
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`Patent Owner hereby provides notice of appeal to the United States Court
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`of Appeals for the Federal Circuit under 35 U.S.C. §§ 141 and 142 from the Final
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`Written Decision of the Patent Trial and Appeal Board entered December 28, 2017,
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`(Paper No. 71).
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`Pursuant to 37 C.F.R. § 90.2(a)(3)(ii) the expected issues on appeal will
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`include:
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`1. Whether Petitioner has shown by a preponderance of the evidence that
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`claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, 45, and 46, of U.S. Patent No.
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`7,764,777 B2 are unpatentable as discussed in the Final Written Decision.
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`2. Whether the Board’s construction of the disputed terms and
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`phrases at issue was correct, as discussed in the Final Written Decision.
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`3. Whether Petitioners have shown by a preponderance of the evidence
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`that claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, 45, and 46, of U.S. Patent No.
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`7,764,777 B2 are obvious/anticipated in light of the cited prior art references, as
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`discussed in the Final Written Decision.
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`4. Whether the PTAB misapprehended or overlooked evidence or
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`arguments in its Final Written Decision.
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`Patent Owner has electronically filed this notice with the Patent Trial and
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`Paper No. 72
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`Appeal Board, pursuant to 37 C.F.R. § 90.2(a)(1), 37 C.F.R. § 42.6(b)(1) and
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`Federal Circuit Rule 15(a)(1).
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`Simultaneously herewith, patent owner is providing the Federal Circuit
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`an electronic copy of the present Notice of Appeal (pursuant to 37 C.F.R. §
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`90.2(a)(2)(i) and 15(a)(1)) together with a $500 fee (pursuant to 37 C.F.R.
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`§ 90.2(a)(2)(ii) and Federal Circuit Rule 52(a)(3)(A)). A copy of the Final
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`Written Decision is also included.
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`Dated: March 1, 2018
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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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`Paper No. 72
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, in addition to being filed
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`electronically through the Patent Trial and Appeal Board End to End (PTAB E2E),
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`this Notice of Appeal was filed with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Office of the General Counsel
`U.S. Patent and Trademark Office
`Alexandria, Virginia 22313-1450
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal and the required fee were filed electronically via CM/ECF on March 1,
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`2018, with the Clerk of Court for the United States Court of Appeals for the
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`Federal Circuit.
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal was served on March 1, 2018 on counsel of record for Petitioners by
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`electronic mail (by agreement of the parties) at the following addresses:
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`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
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`Sarah J. Guske
`BAKER BOTTS L.L.P.
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`Paper No. 72
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`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
`sarah.guske@bakerbotts.com
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`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
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`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
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`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: March 1, 2018
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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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`6
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` Paper 71
`Trials@uspto.gov
`571-272-7822 Entered: December 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01262
`Patent 7,764,777 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`
`
`IPR2016-01262
`Patent 7,764,777 B2
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`I. INTRODUCTION
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`Bright House Networks, LLC, WideOpen West Finance, LLC,
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`Knology of Florida, Inc., and Birch Communications, Inc. (collectively
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`“Petitioner”)1 filed a Petition for inter partes review of claims 18, 21, 23, 25,
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`26, 28–31, 37, 38, 41, 45, and 46 of U.S. Patent No. 7,764,777 B2
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`(Ex. 1001, “the ’777 patent”). Paper 1 (“Pet.”). Focal IP, LLC (“Patent
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`Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
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`Petitioner filed a Reply. Paper 17 (“Reply”). Upon consideration of the
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`parties’ contentions and supporting evidence, we instituted an inter partes
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`review pursuant to 35 U.S.C. § 314, as to claims 18, 21, 23, 25, 26, 28–31,
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`37, 38, 41, 45, and 46 of the ’777 patent. Paper 19 (“Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 30, “PO Resp.”) and a Motion to Amend (Paper 31,
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`“Mot.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 34,
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`“Pet. Reply”) and an Opposition to Patent Owner’s Motion to Amend (Paper
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`35, “Opp.”). Patent Owner filed a Reply to the Motion to Amend. Paper 43,
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`“Reply.” Both parties filed Motions to Exclude (Paper 47 and 50) and
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`corresponding responsive papers to the respective Motions to Exclude
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`(Papers 51, 52, 55, and 56).
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`On September 19, 2017, we held an oral hearing. Paper 68 (“Tr.”).2
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`Subsequent to oral hearing, Petitioner was authorized to file a supplemental
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`brief in opposition to Patent Owner’s Motion to Amend in light of the
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`
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`1 Petitioner identifies several real parties-in-interest, as well as other
`“potential real parties-in-interest” to Petitioner. Pet. 2–4.
`2 The oral arguments in the following cases were consolidated: Cases
`IPR2016-01259, IPR2016-01261, IPR2016-01262, and IPR2016-01263.
`Paper 68.
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`2
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`IPR2016-01262
`Patent 7,764,777 B2
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`Federal Circuit’s en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d
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`1290 (Fed. Cir. 2017) (“Aqua Products”). Paper 65. On October 31, 2017,
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`Petitioner filed a supplemental brief in opposition to Patent Owner’s Motion
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`to Amend. Paper 67 (“Supp. Br.”).
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`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
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`For the reasons that follow, we determine that Petitioner has demonstrated
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`by a preponderance of the evidence that claims 18, 21, 23, 25, 26, 28–31, 37,
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`38, 41, 45, and 46 of the ’777 patent are unpatentable. Patent Owner’s
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`Motion to Amend is denied.
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`A. Related Matters
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`The parties state that the ’777 patent is the subject of pending lawsuits
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`in the Middle District of Florida, and these lawsuits include assertions
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`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
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`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
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`Pet. 4; Paper 7 (Patent Owner’s Mandatory Notices), 2–3. Another
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`petitioner filed a petition also challenging claims of the ’777 patent (i.e.,
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`IPR2016-01258). Paper 7, 3.
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`B. The ’777 Patent
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`The ʼ777 patent relates to telephone services. Ex. 1001, 1:18. In the
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`background section, the ’777 patent describes that the Public Switched
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`Telephone Network (PSTN) consists of a plurality of edge switches
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`connected to telephones on one side and to a network of tandem switches on
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`the other. Id. at 1:40−42. The tandem switch network allows connectivity
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`between all of the edge switches, and a signaling system is used by the
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`PSTN to allow calling and to transmit both calling and called party identity.
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`Id. at 1:42−46; Ex. 2022 ¶ 36. Dr. La Porta testifies that the “PSTN had
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`3
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`IPR2016-01262
`Patent 7,764,777 B2
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`been in existence for decades and consisted of a global network of circuit
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`switches arranged in a geographical hierarchy.” Ex. 1002 ¶¶ 53−56 (citing
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`the ENGINEERING AND OPERATIONS IN THE BELL SYSTEM (2nd ed. 1984) (“the
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`Bell System Reference,” Ex. 1037)).
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`According to the ’777 patent, at the time of the invention, there were
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`“web-based companies managing 3rd-party call control, via the toll-switch
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`network, which allow users to enter call control information through a web
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`portal.” Ex. 1001, 1:29−32. “Edge devices such as phones and PBXs that
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`include voice mail, inter-active voice response, call forwarding, speed
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`calling, etc., have been used to provide additional call control.” Id. at
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`2:36−39.
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`The ’777 patent discloses a system for allowing a subscriber to select
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`telephone service features. Id. at 1:18–21. Figure 1 of the ’777 patent is
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`reproduced below (with annotations).
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`Patent 7,764,777 B2
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`Annotated Figure 1 illustrates tandem access controller 10 connected
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`to conventional PSTN tandem switch 16. Id. at 4:40, 41. According to the
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`’777 patent, “[d]etails of the operation of the existing phone network,”
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`including directing of phone calls by “existing” PSTN tandem switch 16 to
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`central offices 17, 18 are further described in a publication incorporated by
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`reference, as well as “numerous books describing the PSTN.” Id. at 4:40–
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`51.
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`The call flow in the network illustrated in Figure 1 with tandem access
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`controller 10 remains the same as that in a conventional network, “except
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`that additional 3rd-party features are applied to the call.” Id. at 4:40–44.
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`More specifically, in the network illustrated in Figure 1, a call from calling
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`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
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`which places a second call, subject to third party control information to
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`subscriber 12. Id. at 4:52–55. The second call is placed “to the subscriber’s
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`5
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`IPR2016-01262
`Patent 7,764,777 B2
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`‘private’ phone number,” without terminating the first call. Id. at 4:55–57.
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`When subscriber 12 answers the call, tandem access controller 10 connects
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`the first call to the second call so as to connect calling party 20 to subscriber
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`12. Id. at 4:59–62.
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`Figure 1 also shows web server 23 within World Wide Web 22, which
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`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
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`specifies 3rd-party call control features via web server 23 and these features
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`are then relayed via World Wide Web 22 to tandem access controller 10. Id.
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`at 5:13–21.
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`C. Illustrative Claim
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`Petitioner challenges claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, 45,
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`and 46 of the ’777 patent. Claims 18, 37, 45, and 46 are independent claims.
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`Claims 21, 23, 25, 26, and 28–31 depend directly from claim 18. Claims 38
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`and 41 depend directly from claim 37. Independent claims 18 and 46,
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`reproduced below, are illustrative of the claimed subject matter:
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`18. A method for processing an incoming call from a
`switching facility on a communication network that comprises
`edge switches for routing calls to subscribers within a local
`geographic area and switching facilities for routing calls to edge
`switches, or other switching facilities local or in other geographic
`areas the method comprising the steps of:
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`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with the
`switching facility;
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`identifying one or more control criteria previously
`associated with the specified recipient, wherein the one or more
`control criteria was entered via a web-based interface;
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`initiating a second call at the controlling device in
`accordance with the control criteria associated with the specified
`recipient; and
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`6
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`IPR2016-01262
`Patent 7,764,777 B2
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` connecting the first and second calls at the controlling
`device after the second call is received by a communication
`device associated with the specified recipient.
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`Id. at 15:12–30.
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`46. A method for processing an incoming call from a
`switching facility on a communication network that comprises
`edge switches for routing calls within a local geographic area and
`switching facilities for routing calls to other geographic areas,
`the method comprising the steps of:
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`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with one of
`the switching facilities;
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`identifying a control criteria previously associated with the
`specified recipient, wherein the control criteria is previously
`entered via a web-based interface and instructs the controlling
`device to block calls for the specified recipient; and
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` blocking the first call received at the controlling device in
`accordance with the control criteria.
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`Id. at 18:34–48.
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`Independent claim 37 is similar to claim 18, except that when the call
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`is forwarded, the claim requires using a “packet-based connection.”
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`Independent claim 45 is similar to claim 18, except that instead of initiating
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`a second call to a specified recipient, the original first call is routed to a
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`"voicemail server."
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`7
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`IPR2016-01262
`Patent 7,764,777 B2
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`D. Instituted Grounds of Unpatentability
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`We instituted this trial based on the following ground of
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`unpatentability (Dec. 19):
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`Reference(s)
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`Basis
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`Challenged Claim(s)
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`Archer,3 Chang,4 and the
`Admitted Prior Art5
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`§ 103(a)6
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`18, 21, 23, 25, 26, 28–31, 37,
`38, 41, 45, and 46
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
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`1. “switching facility”
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`Each of the independent claims 18, 37, 45, and 46 recites “switching
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`facility.” Claim 18 is representative. The preamble of claim 18 recites
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`3 U.S. Patent No. 6,683,870 B1, issued Jan. 27, 2004 (Ex. 1003) (“Archer”).
`4 U.S. Patent No. 5,958,016, issued Sept. 28, 1999 (Ex. 1004) (“Chang”).
`5 Admitted Prior Art (see, e.g., Ex. 1001, 1:40–46).
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`6 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
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`8
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`IPR2016-01262
`Patent 7,764,777 B2
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`“processing an incoming call from a switching facility on a communication
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`network that comprises edge switches for routing calls to subscribers within
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`a local geographic area and switching facilities for routing calls to edge
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`switches, or other switching facilities local or in other geographic areas.” 7
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`Apart from the claims, the term “switching facility” does not appear in the
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`Specification. Nor does the term appear in the original disclosure of the
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`application that issued as the ’777 patent. Rather, the term was introduced
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`into the claims by amendment during prosecution. Ex. 1010, 68−88.
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`At institution, we adopted Petitioner’s proposed construction, as it is
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`consistent with the intrinsic evidence and the plain and ordinary meaning of
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`“switching facility,” construing the term as “any switch in the
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`communication network.” Dec. 6−9; Pet. 9−10; Paper 17, 1−8 (Reply to
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`Preliminary Response); Ex. 2005, 82, n.1 (Applicants defined a “switching
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`facility” as “[a]ny point in the switching fabric of converging networks”);
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`TELECOMMUNICATIONS: GLOSSARY OF TELECOMMUNICATION TERMS, THE
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`FEDERAL STANDARD 1037C, S-35 (1996) (Ex. 3001, 391) (defining
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`“switching center” and “switching facility” as synonyms that mean “a
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`facility in which switches are used to interconnect communications circuits
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`on a circuit-, message-, or packet-switching basis”); NEWTON’S TELECOM
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`DICTIONARY, (15th ed. 1999) (Ex. 3002) (defining “switching centers” to
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`refer to all five classes of switches in the PSTN)). We rejected Patent
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`
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`7 In this proceeding, the parties agree that the preamble should be given
`patentable weight. Pet. 18–24; Prelim. Resp. 35; PO Resp. 33. For purposes
`of this Decision, we proceed on the assumption that the preamble should be
`given patentable weight.
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`9
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`IPR2016-01262
`Patent 7,764,777 B2
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`Owner’s proposed construction because it would improperly import
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`limitations into the claim. Dec. 6−9.
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`In its Response, Patent Owner maintains that “switching facility”
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`cannot include an edge switch or edge device. PO Resp. 1−37. Patent
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`Owner argues that the claim expressly distinguishes that a “switching
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`facility” is not an “edge switch,” and that construing “switching facility” to
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`include “edge switch” would render the claim terms superfluous. Id. at
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`32−37. In Patent Owner’s view, Applicants of the ’777 patent
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`“unequivocally disclaimed controllers that applied call control features
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`through an edge switch, or controllers that were themselves an edge device,
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`from the scope of their inventions.” Id. at 15−16. We disagree and address
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`below each of Patent Owner’s arguments in turn.
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`First, based on the evidence before us, we decline to adopt Patent
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`Owner’s proposed claim construction, as it would import limitations—
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`“connecting the Tandem Access Controller (‘TAC’) to a PSTN tandem
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`switch, rather than edge switches and edge devices”—from a preferred
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`embodiment into the claim. Id. at 2, 20, 32−37; Ex. 1001, 1:63−65,
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`3:23−25, 3:61−65. Significantly, neither “Tandem Access Controller” nor
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`“tandem switch” appears in most of the challenged claims, including
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`independent claim 18.8 In fact, Patent Owner admits that Applicants used
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`“switching facility” in the claim instead of “tandem switch” to indicate that
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`“switching facility” has broader scope than “tandem switch.” Prelim. Resp.
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`37.
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`
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`8 Of the challenged claims, only dependent claims 29 and 30 recite “tandem
`access controller.”
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`10
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`IPR2016-01262
`Patent 7,764,777 B2
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`A person of ordinary skill in the art would have understood that
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`“switching facility” and “tandem switch” have different meanings. In the
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`context of telecommunication and network communication, the plain and
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`ordinary meanings of these terms are clear—“tandem switch” refers to class
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`4 switches in the PSTN (Ex. 1002 ¶ 53; Ex. 2022 ¶ 36), whereas “switching
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`facility” refers to all five classes of switches in the PSTN (Ex. 3002) or “a
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`facility in which switches are used to interconnect communications circuits
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`on a circuit-, message-, or packet-switching basis” (Ex. 3001, 391). This is
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`consistent with Applicants’ definition of “switching facility”—“[a]ny point
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`in the switching fabric of converging networks”—submitted with the
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`Amendment that introduced the term. Ex. 2005, 82, n.1. Moreover, “the
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`general assumption is that different terms have different meanings.”
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`Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed.
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`Cir. 2008).
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`Importantly, even if we were to interpret “switching facility” as a
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`“tandem switch,” it would not affect our analysis below because none of the
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`challenged claims require a direct connection or communication between the
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`controlling device and a switching facility. Indeed, independent claims 18,
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`37, and 45 recite “a controlling device in communication with the switching
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`facility.” Ex. 1001, 15:19−20, 16:54−55, 18:25−26 (emphasis added). And
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`even with respect to dependent claim 30, which recites a tandem access
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`controller, the tandem access controller is coupled to at least one of the
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`switching facilities. For the reasons stated below, we decline to construe “in
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`communication with” or “coupled to” restrictively to require the processing
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`system to be in direct communication with or connected directly to a tandem
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`switch in the network, as urged by Patent Owner.
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`11
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`IPR2016-01262
`Patent 7,764,777 B2
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`As our reviewing court has explained, “each claim does not
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`necessarily cover every feature disclosed in the specification,” and “it is
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`improper to limit the claim to other, unclaimed features.” Ventana Med.
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`Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006).
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`Furthermore, the court “has repeatedly cautioned against limiting the
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`claimed invention to preferred embodiments or specific examples in the
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`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
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`(Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
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`870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into a
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`claim limitations that are not a part of the claim”). “[I]t is the claims, not the
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`written description, which define the scope of the patent right.” Williamson,
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`792 F.3d at 1346–47; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (noting that “[i]t is a bedrock principle of patent
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`law that the claims of a patent define the invention to which the patentee is
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`entitled the right to exclude”).
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`Second, we are not persuaded by Patent Owner’s arguments that the
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`claims expressly distinguish that a “switching facility” is not an “edge
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`switch,” and that construing “switching facility” to include “edge switch”
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`would render the claim terms superfluous. PO Resp. 32−37; Ex. 2022
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`¶¶ 61−65. Patent Owner’s arguments fail to appreciate that claim 18 sets
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`forth two separate functional requirements: (1) “edge switches for routing
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`calls to subscribers within a local geographic area”; and (2) “switching
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`facilities for routing calls to edge switches, or other switching facilities local
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`or in other geographic areas.” Ex. 1001, 15:14−17 (emphases added). The
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`evidence before us shows that edge switches can perform the function
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`recited in the first claim element, as well as “routing calls to edge switches,
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`or other switching facilities local” geographic areas, as recited in the second
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`claim element. Ex. 1002 ¶¶ 53−55. The two terms, “edge switches” and
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`“switching facilities,” are not mutually exclusive, but rather “switching
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`facilities” encompasses all five classes of switches in the PSTN, including
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`an edge switch. Ex. 3001, 391; Ex. 3002; Ex. 2005, 82 n.1.
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`Notably, an ordinarily skilled artisan would have recognized that an
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`edge switch can route calls to other edge switches directly via a direct trunk
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`group or indirectly through a tandem switch, and to other switching facilities
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`(e.g., a tandem switch). Ex. 1002 ¶¶ 53−55; Ex. 1037, Fig. 4-3. Dr. La
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`Porta’s testimony regarding background information on the PSTN (Ex. 1002
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`¶¶ 53−55) cites to Figure 4-4 of the Bell System reference (Ex. 1037, 111,
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`Fig. 4-4), which is reproduced below (with highlighting added).
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`As shown in highlighted Figure 4-4 above, an edge switch (a class 5
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`switch) can route calls from and to users within local geographic area
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`(highlighted in red). An edge switch also can route calls to a tandem switch
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`and other edge switches directly using a direct trunk group or indirectly
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`through a tandem switch (highlighted in blue). Ex. 1002 ¶¶ 53−54;
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`Ex. 1037, 90−92, 106−113, 119−122, 137−138, Figs. 4-3, 4-4.
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`The aforementioned functional claim elements map to the switches in
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`the PSTN. The first claim element takes into account routing calls from and
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`to users within a local geographic area. For the second claim element, the
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`claim language “switching facilities for routing calls to edge switches” takes
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`into account routing calls from an edge switch to other edge switches. The
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`claim language “switching facility for routing calls to other switching
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`facilities” takes into account routing calls from an edge switch to a tandem
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`switch, as well as from a tandem switch to other switches, including edge
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`switches, in the network. Therefore, construing “switching facility” to
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`include “edge switch” would not render the claim terms superfluous.
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`More significantly, interpreting “switching facility” to exclude an
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`edge switch, as urged by Patent Owner, would read out important claimed
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`functions—namely, routing calls from an edge switch to other edge switches
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`and to tandem switches (highlighted in blue above in Figure 4-4). The
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`claimed network would be incomplete.
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`Probably recognizing this problem in its proposed construction, Patent
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`Owner attempts to show that a tandem switch is capable of performing those
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`functions, arguing that a tandem switch can “interconnect end office
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`switches to other geographic areas” and that “a tandem switch may be
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`‘local’ (or nearby) to other tandem switches.” PO Resp. 32−37; Ex. 2022
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`¶¶ 61−65. However, those assertions address the connection, a physical line,
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`between the switches. Neither Patent Owner nor Mr. Bates explains
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`sufficiently how those functions—e.g., routing calls from an edge switch to
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`other edge switches—can be performed by a tandem switch without an edge
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`switch. PO Resp. 32−37; Ex. 2022 ¶¶ 61−65.
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`Patent Owner also attempts to show that an edge switch is not capable
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`of performing the recited functions in the second claim element, arguing that
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`“an edge switch cannot ‘interconnect end office switches to other geographic
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`areas that are not local to an end office switch.’” PO Resp. 32−37; Ex. 2022
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`¶¶ 63−65 (emphasis added). However, that argument is not commensurate
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`with the scope of the claim. Claim 18 does not require every switching
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`facility to perform that function. In fact, the claim uses the term “or” rather
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`than “and”—“switching facilities for routing calls to edge switches, or other
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`switching facilities local or in other geographic areas.” Ex. 1001, 15:15−17
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`(emphasis added). Patent Owner does not identify, nor can we discern, a
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`reason to read “or” as “and.” As discussed above, an edge switch is capable
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`of routing calls to other edge switches and other switching facilities within
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`local geographic areas. Ex. 1002 ¶¶ 53−54; Ex. 1037, 106−113, Figs. 4-3,
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`4-4.
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`In light of the foregoing, Patent Owner’s arguments (PO Resp. 32−37)
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`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that the claim language
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`expressly distinguishes that a “switching facility” is not an “edge switch,”
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`and that construing “switching facility” to include “edge switch” would
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`render the claim terms superfluous, are unavailing.
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`Third, we are not persuaded by Patent Owner’s argument and its
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`expert testimony that the Specification sets forth an unmistakable disclaimer
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`that the claimed controller must be directly connected to a tandem switch,
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`rather than an edge switch or edge device. PO Resp. 1−3, 9−21, 30−37.
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`There is a presumption that a claim term carries its ordinary and customary
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`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
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`Cir. 2002). To overcome this presumption, the patentee must “clearly set
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`forth” and “clearly redefine” a claim term away from its ordinary meaning.
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`Bell Atlantic Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
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`1258, 1268 (Fed. Cir. 2001). The disavowal must be “unmistakable” and
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`“unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
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`2012).
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`The claims do not recite “tandem switch,” but rather “switching
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`facility.” Our construction for “switching facility” is consistent with its
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`plain and ordinary meaning, encompassing all five classes of switches in the
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`PSTN, including edge switches. Ex. 3001, 391; Ex. 3002; Ex. 1002 ¶ 53.
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`Turning to the Specification, the term “switching facility” is not found
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`anywhere in the Specification. Accordingly, there is not much, if anything,
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`intrinsically in the Specification that explicitly defines or informs a person of
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`ordinary skill in the art at the time of the invention the meaning of
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`“switching facility.” As discussed above, Patent Owner, in fact, admits that
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`Applicants introduced the term “switching facility” into the claims by
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`Amendment to indicate that “switching facility” has broader scope than
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`“tandem switch.” Prelim. Resp. 37; Ex. 2005, 82, n.1.
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`We note that Patent Owner’s arguments and Mr. Bates’ testimony rely
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`on the discussions in the Specification regarding both edge switches and
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`edge devices (Ex. 1001, 1:32−35, 1:54−62, 2:35−49), to support their
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`assertion that Applicants disparage the application of call control features at
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`an edge switch. PO Resp. 15−16; Ex. 2022 ¶ 47. In any event, the
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`Specification clearly states that connecting a controller directly at a tandem
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`switch, rather than an edge switch—to eliminate the problems regarding the
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`provision of call features through the local service telephone company
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`(telco) business office—is a preferred embodiment. Ex. 1001, 1:63−65 (“A
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`preferred embodiment of the inventive system described herein connects at
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`the tandem, thereby eliminating these problems.”), 3: 23−25 (“In one
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`embodiment, the system includes a processor (referred to herein as a tandem
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`access controller)”), 3:61−63 (“FIG. 1 illustrates the tandem access
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`controller (TAC) in one embodiment of the present invention connected to
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`the existing PSTN tandem switch.”). In other embodiments, the
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`Specification explains that the web-enhanced services should be connected
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`locally or “coexist with and overlay the local phone service at the local
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`level.” Id. at 3:35−51. As Mr. Bates confirms, edge switches “serve end
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`users through local loop connections,” and “interconnect subscriber lines
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`within a local area.” Ex. 2022 ¶ 38; Ex. 2002, 159; Ex. 2003, 102.
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`The Specification also does not support Patent Owner’s position
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`regarding edge devices. PO Resp. 15−19; Ex. 2022 ¶¶ 46−50. The allegedly
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`disparaging statements are directed to only certain types of edge devices,
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`such as phones, PBXs, and edge devices that provide extremely limited
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`features. Ex. 1001, 1:32−35, 1:66−2:11; 2:35−49. Notably, nothing in the
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`Specification disparages a PSTN-to-IP network gateway, as taught in
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`Archer. Therefore, if there is a disclaimer, such a disclaimer, at most, is
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`limited to those prior art edge devices (e.g., phones and PBXs) discussed
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`specifically in the Specification.
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