Case 3:15-cv-00742-TJC-MCR Document 89-2 Filed 08/12/16 Page 1 of 59 PageID 3234
`
`Exhibit B
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 1
`Burger Declaration IPR2016-01262
`
`

`

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`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`JACKSONVILLE DIVISION
`
`
`
`________________________________________________________________________
`
`PATENT ASSET LICENSING, LLC,
`
`Plaintiff,
`
`v. Case No. 3:15-cv-742-J-32MCR
`
`BRIGHT HOUSE NETWORKS, LLC,
`
`Defendant.
`________________________________________________________________________
`
`PATENT ASSET LICENSING, LLC,
`
`Plaintiff,
`
`
`
`
`v. Case No. 3:15-cv-743-J-32MCR
`
`WIDEOPENWEST FINANCE, LLC
`and KNOLOGY OF FLORIDA, INC.,
`
`
`
`Defendants.
`________________________________________________________________________
`
`PATENT ASSET LICENSING, LLC,
`
`Plaintiff,
`
`
`
`
`v. Case No. 3:15-cv-746-J-32MCR
`
`BIRCH COMMUNICATIONS, INC.,
`
`
`
`Defendant.
`________________________________________________________________________
`
`
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 2
`Burger Declaration IPR2016-01262
`
`

`

`Case 3:15-cv-00742-TJC-MCR Document 89-2 Filed 08/12/16 Page 3 of 59 PageID 3236
`
`________________________________________________________________________
`
`PATENT ASSET LICENSING, LLC,
`
`Plaintiff,
`
`
`v. Case No. 3:15-cv-747-J-32MCR
`
`T3 COMMUNICATIONS, INC.,
`
`
`
`
`
`Defendant.
`________________________________________________________________________
`
`OPENING CLAIM CONSTRUCTION EXPERT DECLARATION
`OF DR. ERIC BURGER
`
`
`
`2
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 3
`Burger Declaration IPR2016-01262
`
`

`

`Case 3:15-cv-00742-TJC-MCR Document 89-2 Filed 08/12/16 Page 4 of 59 PageID 3237
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`My name is Eric Burger and I have been retained as a technical expert to
`
`address certain claim construction issues regarding U.S. Patent Nos. 7,764,777 (“the ’777
`
`patent”); 8,457,113 (“the ’113 patent”); and 8,155,298 (“the ’298 patent”) (collectively
`
`the “patents-in-suit”). I understand the three patents-in-suit share an original parent
`
`patent, U.S. Patent No. 6,574,328 (“the parent ’328 patent”), and a continuation-in-part
`
`parent patent, U.S. Patent No. 7,324,635 (“the ’635 patent”). I understand that the
`
`plaintiff in this case is claiming that the three asserted patents are entitled to the same
`
`invention and priority date as the parent ’328 patent.
`
`2.
`
`In this declaration I will set forth my opinions regarding how the claims of
`
`the patents-in-suit should be construed. This declaration contains a statement of my
`
`opinions formed in this case and provides the basis for those opinions. I make the
`
`following statements based on my own personal knowledge and, if called as a witness, I
`
`could and would testify to my opinions reflected in this declaration.
`
`3.
`
`I am being compensated for the time I have spent on this litigation at my
`
`customary rate of $750 per hour. No part of my compensation is dependent, in any way,
`
`upon the opinion I provide or the outcome of this litigation.
`
`A.
`
`4.
`
`Qualifications
`
`A copy of my current curriculum vitae (“CV”), including references to the
`
`publications I have authored and a list of all cases for which I have testified as an expert
`
`at trial or at deposition in the past five years is attached hereto.
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 4
`Burger Declaration IPR2016-01262
`
`

`

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`
`5.
`
`I am presently a Research Professor of Computer Science at Georgetown
`
`University. I have been with Georgetown since 2010. In addition to my duties as a
`
`Professor, I am the Director of the Georgetown Center for Secure Communciations and
`
`Director of the Georgetown site of the NSF-sponsored Security and Software
`
`Engineering Research Center (S2ERC).1 As of the time of this writing, the Georgetown
`
`site of the S2ERC has two main programs. The first program focuses on cyber threat
`
`intelligence information sharing. The second program, of relevance to the present case,
`
`focuses on the transition of the legacy public switched telephone network (PSTN) to the
`
`all-Internet Protocol (all-IP) telecomuncations network.2
`
`6.
`
`I have a PhD with Highest Honors in Computer Science, with a thesis
`
`relating to using Voice-over-Internet Protocol (VoIP) protocols for device control from
`
`the Illinois Institute of Technology. VoIP is a technology that allows you to make voice
`
`calls using packet networks, particularly using the Internet Protocol (IP). VoIP Internet
`
`services use a broadband Internet connection instead of a regular (or analog) phone line.
`
`My dissertation for this work won the IIT Exemplary Research Award.
`
`7.
`
`I hold an MBA with Distinction from the Catholic University of Leuven
`
`and a SBEE from the Massachusetts Institute of Technology. I am a Senior Member of
`
`the Institute of Electronics and Electrical Engineers (IEEE) and a Senior Member of the
`
`Association for Computing Machinery (ACM). In 2012, I was awarded the IEEE-USA
`
`Professional Achievement for Individuals Award for my work in communications
`
`
`1 See https://s2erc.georgetown.edu
`2 See https://www.fcc.gov/general/voice-over-internet-protocol-voip
`
`4
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 5
`Burger Declaration IPR2016-01262
`
`

`

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`
`technology policy. IEEE awarded only three such awards that year out of a membership
`
`of over 200,000 individuals.
`
`8.
`
`Of my academic publications, I have published two journal articles on
`
`Voice over IP technology; a textbook related to Voice over IP technology; numerous
`
`conference and magazine articles related to Voice over IP technology; a number of public
`
`policy white papers, including the IEEE-USA position statement on Voice over Internet
`
`Protocol; and made numerous comments and presentations at
`
`the Federal
`
`Communications Commission (FCC).
`
`9.
`
`From 1993–2000 I was a Lecturer (adjunct faculty) in Information
`
`Systems at George Washington University, teaching Masters’ level classes in Software
`
`Engineering and Computer Science. In 2000 I was an Adjunct Assistant Professor of
`
`Computer Science at George Mason University, teaching undergraduate Computer
`
`Science.
`
`10.
`
`Since 1998, I have been significantly involved in the Internet Engineering
`
`Task Force (“IETF”). The IETF is a large open international community of network
`
`designers, operators, vendors, and researchers concerned with the evolution of the
`
`Internet architecture and the smooth operation of the Internet. I have authored 18 IETF
`
`Internet Requests for Comments (“RFCs”). An RFC is a document describing actual or
`
`suggested practices applicable to the Internet, including standards and protocols for
`
`technical arrangements and conventions relevant to the Internet. These RFCs authored by
`
`me include standards for signaling interworking, such as how to deal with data elements
`
`5
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 6
`Burger Declaration IPR2016-01262
`
`

`

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`
`present in one protocol not found in another, such as for SIP to H.323, as well as VoIP
`
`media transcoding.
`
`11.
`
`I have been an invited expert to the International Telecommunications
`
`Union Telecommunications Standardization Sector (ITU-T) Study Group 16, which is
`
`where multimedia standards such as H.323 and H.248 are developed. I have also been an
`
`invited expert to the Third-Generation Partnership Program (3GPP). The 3GPP sets the
`
`protocol standards for the wireless industry.
`
`12.
`
`I also contributed to the World-Wide Web Consortium’s (W3C) initiatives
`
`for bringing the Web model and HTML for graphical user interfaces to voice user
`
`interfaces, culminating in two W3C Recommendations, the Voice Extensible Markup
`
`Language (VoiceXML) and the Call Control Markup Language (CCXML). The World
`
`Wide Web Consortium (W3C)
`
`is an
`
`international community where Member
`
`organizations, a full-time staff, and the public work together to develop Web standards.
`
`13.
`
`The following paragraphs describe some of my relevant work experience
`
`in the areas of telecommunications and VoIP.
`
`14.
`
`In 1990, I started work in telecommunications at MCI, followed by Cable
`
`& Wireless. In 1993, I joined The Telephone Connection where I was the Vice President
`
`of Engineering. The Telephone Connection built, operated, and sold telephony enhanced
`
`service platforms. Our largest customer was MCI, connecting our platforms to Nortel
`
`DMS-100 and Siemens EWSD Class 5 switches for providing local services. The
`
`Telephone Connection service platforms were IP-based at their core. By 1997, we had
`
`thousands of ports of personal assistant and messaging services deployed nationwide. At
`
`6
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`FOCAL IP, LLC EX2011 - 7
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`
`

`

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`
`the time, that made us one of the top ten enhanced service platform manufacturers in the
`
`world.
`
`15.
`
`In 1998, Centigram Communications Corporation bought The Telephone
`
`Connection. I continued my employment at Centigram as its Chief Scientist, where I
`
`started development of Voice-over-IP products, as well as lead Centigram’s messaging
`
`and Voice-over-IP standardization efforts in the IETF.
`
`16.
`
`In 2000, I co-founded a company called SnowShore Networks, Inc.
`
`(“SnowShore”), where I was Chief Technology Officer. SnowShore developed the first
`
`SIP-controlled, multi-function, voice-over IP and video-over IP media server. In 2004,
`
`Brooktrout Technology acquired SnowShore. I was asked to stay on as the Chief
`
`Technology Officer. Brooktrout continued the SnowShore line, as well as having a long
`
`legacy in the fax enabling technology and TDM voice enabling technology market. A
`
`major impetus for the merger was the transition of networks from circuit switched to
`
`packet switched technology, as well as the need for hybrid, VoIP/switched products. In
`
`2006, Brooktrout merged with Excel Switching, the leading manufacturer of SS7-based
`
`programmable voice switches, IP/switched mediation platforms, and compact, SS7-
`
`connected, voice PSTN-IP gateways. Again, I was asked to stay on as the Chief
`
`Technology Officer. We rebranded that company as Cantata.
`
`17.
`
`In 2007, I left Cantata for BEA Systems, where I was ultimately
`
`responsible for the Communications Products Division. One of the Communications
`
`Products Division’s products, the WebLogic Network Gateway, enabled Web developers
`
`to use standard Web services to access and control VoIP and PSTN network resources. In
`
`7
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 8
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`
`

`

`Case 3:15-cv-00742-TJC-MCR Document 89-2 Filed 08/12/16 Page 9 of 59 PageID 3242
`
`2008 Oracle acquired BEA Systems. I lead the BEA side of the Communications
`
`Products Division’s integration into Oracle. Between the Cantata family and BEA, who
`
`partnered with many of the innovative and legacy application and network equipment
`
`providers in the period, I have expanded knowledge of the state of the art of voice and
`
`video applications from first-hand experience.
`
`18.
`
`In 2009, I joined Neustar, Inc., where I was the Chief Technology Officer.
`
`Neustar provides authoritative data base services to the communications industry,
`
`including the Number Portability Administration Center (NPAC) and the registries for
`
`the .US and .BIZ generic top-level and .CO country-code top-level Internet domain
`
`names.
`
`19.
`
`I was a Trustee of the IETF Trust from 2010 to 2012, and a Trustee of the
`
`Internet Society, the legal home of the IETF, from 2009 to 2015. I was a Director of the
`
`SIP Forum from 2003 to 2011 and served as the Chairman of the Board of the SIP Forum
`
`from 2007 to 2010. I was a Director of the International Softswitch Consortium, which
`
`became the International Packet Communications Consortium, which became the IMS3
`
`Forum, from 2002 to 2007. Most VoIP-related companies were members or active in one
`
`of more of these industry associations, and as such, I was exposed to a wide swath of
`
`activity in the field.
`
`20.
`
`At the time of this writing, I have nineteen issued U.S. patents, of which
`
`nine relate to the area of IP communications. My CV enumerates the full list of issued
`
`Patents.
`
`
`3 The IMS is the IP Multimedia Subsystem.
`
`8
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 9
`Burger Declaration IPR2016-01262
`
`

`

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`
`21.
`
`Through my educational and professional experiences,
`
`I am
`
`knowledgeable about and familiar with telecommunications systems, including the
`
`convergence of the public switched telephone network (PSTN) with Voice over IP
`
`(VoIP) and the use of Web-based applications to control PSTN, VoIP, and hybrid
`
`telephony.
`
`B.
`
`22.
`
`Level of Ordinary Skill in the Art
`
`I understand there is a concept in patent law known as the “person having
`
`ordinary skill in the art.” I understand that this concept refers to a person who is trained
`
`in the relevant technical field of a patent without possessing extraordinary or otherwise
`
`exceptional skill. I further understand that factors such as the education level of those
`
`working in the field, the educational level of the inventors, the sophistication of the
`
`technology, the types of problems encountered in the art, the prior art solutions to those
`
`problems, and the speed at which innovations are made may help establish the level of
`
`skill in the art.
`
`23.
`
`Taking the above-mentioned factors into consideration, it is my opinion
`
`that a person of ordinary skill in the art (“POSA”) as of the filing of the patents-in-suit
`
`would have had a bachelor’s degree in electrical engineering or a related field and around
`
`three years of experience in the fields of communications systems, including exposure to
`
`telecommunications standards as applied in circuit-switched and packet-switched
`
`networks, or the equivalent. The education and experience levels may vary between
`
`POSAs; for example, some persons would have a Bachelor’s degree with two to three
`
`9
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 10
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`
`

`

`Case 3:15-cv-00742-TJC-MCR Document 89-2 Filed 08/12/16 Page 11 of 59 PageID 3244
`
`years of work experience, and others would have a Master’s degree, with one to two
`
`years of work experience.
`
`24.
`
`In forming my opinions, I considered the level of knowledge and common
`
`terminology used by persons of ordinary skill in the art in the late-1990s-2000, which I
`
`understand from counsel was the timeframe of the invention. I understand from counsel
`
`that the plaintiff in this case claims that all of the asserted patent claims are entitled to the
`
`same invention and priority date as for the parent ’328 patent. I understand from counsel
`
`that the meaning and scope of patent claims is determined as of the invention date.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
`
`C. Materials Considered
`
`25.
`
`In preparing the opinions and discussion outlined in this declaration, I
`
`have reviewed and considered the patents-in-suit and their file histories, the parties’
`
`preliminary claim constructions and related extrinsic evidence, plaintiff’s infringement
`
`contentions with respect to BHN, and invalidity contentions, as well as technical
`
`references, from the perspective of one of ordinary skill in the art. I have also relied on
`
`my years of education, teaching, research, and experience, and my understanding of the
`
`applicable legal principles.
`
`26. My analysis of the materials produced in this case is ongoing. I will
`
`continue my review of materials, including any new materials provided to me, or that I
`
`discover. Therefore, this declaration represents those opinions I have formed to date, and
`
`I reserve the right to revise, supplement, and amend the opinions stated herein based on
`
`new information and on my continuing analysis of the materials already considered.
`
`10
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 11
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`
`

`

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`
`27.
`
`I reserve the right to supplement my opinions and declaration to rebut any
`
`arguments or expert opinions presented by the plaintiff in this case.
`
`28.
`
`I understand that the inventors and prosecutors of the patents-in-suit have
`
`been subpoenaed and dates for production of documents and depositions are currently
`
`being negotiated between Defendants and plaintiff, who represents the inventors and
`
`prosecutors of the patents-in-suit. I reserve the right to rely on the information collected
`
`or elicited from those individuals to rebut any arguments or supplement any opinions
`
`herein.
`
`II.
`
`CLAIM CONSTRUCTION ANALYSIS AND OPINIONS
`A.
`
`Switching facility
`
`29.
`
`I understand that the statutory requirement of “definiteness” is met only
`
`when claims clearly distinguish what is claimed from what went before in the art and
`
`clearly circumscribe what is foreclosed from future enterprise. I also understand that a
`
`claim is indefinite if its limitations, read in light of the patent’s specification and
`
`prosecution history, fail to inform, with reasonable certainty, one skilled in the art about
`
`the scope of the invention. I understand that this standard was articulated by the Supreme
`
`Court in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).
`
`30.
`
`The term “switching facility” (or “switching facilities”) appears in the
`
`following asserted claims:
`
`• Claims 17, 18, 30, 37, and 45-46 of the ’777 patent;
`
`• Claim 1 of the ’113 patent; and
`
`• Claims 1 and 20 of the ’298 patent.
`
`11
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2011 - 12
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`
`

`

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`
`31.
`
`In my opinion, the term “switching facility” (or “switching facilities”)
`
`fails to inform those skilled in the art of the scope of the invention with reasonable
`
`certainty. While the term “switching facility” is a term that was used in the literature, it
`
`does not have a uniform meaning in the context of the patents-in-suit. The patents and
`
`prosecution history fail to provide a consistent definition for the term sufficient to explain
`
`to one of ordinary skill in the art what the claims require.
`
`32.
`
`Aside from the claims, the term “switching facility” does not appear in the
`
`specification. I understand that the plaintiff claims an invention date predating the filing
`
`of the parent ’328 patent for all of the asserted claims in this case and that that claim
`
`meaning is determined as of the invention date. In my opinion, the claims of the patents-
`
`in-suit, when read in the context of the parent ’328 patent specification, define the term
`
`“switching facility” to mean a PSTN tandem switch. For example, claim 1 of the ’113
`
`patent and claims 1 and 20 of the ’298 patent require “…switching facilities for routing
`
`calls to other edge switches or other switching facilities local or in other geographic
`
`areas….” The specification teaches “[a]s is well known, PSTN tandem switches are
`
`exchanges that direct telephone calls (or other traffic) to central offices 17, 18 or to other
`
`tandem switches.” (’328 patent, col. 4:3-5 (emphasis added).) The specification explains
`
`that PSTN tandem switches therefore do exactly what claim 1 of the ’113 patent and
`
`claims 1 and 20 of the ’298 patent require of switching facilities: route calls to other edge
`
`switches (also known as central offices) or other PSTN tandem switches.
`
`33.
`
`The Background of the parent ’328 patent acknowledges that well-known
`
`prior art systems allowed telephone service subscribers to add, modify, and/or control,
`
`12
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`

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`
`telephony features using the Internet. ’328 patent, col. 1:17-20, 1:24-27, 2:9-14, 3:3-5
`
`The parent ’328 patent states that problems with these prior art systems related to either
`
`the location of where the call features were applied—in the terminating central office
`
`edge switches of telephone service providers or through subscriber edge devices—(id.,
`
`1:20-23, 1:35-51, 1:54-67, 2:24-35, 4:28-30)—or the type of providers that offered the
`
`services—web-based toll systems. Id., 1:18-19, 1:24-27, 2:9-23, 3:3-8.
`
`34.
`
`The parent ’328 patent repeatedly states that the invention was to provide
`
`Internet-based call feature selection, and implementation of such selected call features,
`
`through a controller connected to a PSTN tandem switch rather than an edge switch:
`
`invention described herein connects at
`thereby
`tandem,
`the
`The
`eliminating these problems. ’328 patent, col. 1:52-53 (emphasis added);
`
`Connecting directly to the PSTN tandem switch (or embedding the system
`into the tandem switch) eliminates the signal degradation problems
`previously described. Id., 2:64-67;
`
`FIG. 1 illustrates the tandem access controller (TAC) of the present
`invention connected to the existing PSTN tandem switch, the TAC
`providing features for the subscriber’s telephone as requested by the
`subscriber via the web. Id., 3:24-27.
`
`The reader should keep in mind that although only one tandem switch 16
`is shown in FIG. 1, the invention will apply equally well to a network of
`tandem switches, as shown in FIG. 2. Id., 4:33-36; FIGS. 1, 2 (showing
`TAC connected to one or more “PSTN tandem switch[es]”);
`
`The present invention adds direct control of third party call control
`features, but does not suffer from any of the disadvantages listed above,
`and allows the subscriber to manage his/her telephone system in a
`dynamic and exceptionally useful manner that is not currently available
`through the existing PSTN. Id., 2:42-47.
`
`The invention allows enhanced direct third-party call control features,
`such as selective call routing and remote dialing, to be added to the PSTN
`(Public Switched Telephone Network) using local call control and
`providing dynamic provisioning of the system by the subscriber. Direct
`
`13
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`

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`
`3rd-party control means that the ability to provision the 3rd-party features
`is directly available to a subscriber, eliminating the need to go through the
`telephone company (telco) business office. Id., 2:47-55.
`
`35.
`
`The parent ’328 patent specification (as well as the specifications of the
`
`patents-in-suit) indicate that the tandem switches of the invention are tandem switches in
`
`the conventional PSTN:
`
`FIG. 1 shows a tandem access controller (TAC) 10 that allows an
`authorized subscriber to establish 3rd-party control criteria for calls to the
`subscriber’s telephone (having a ‘public’ phone number that callers dial) .
`. . The TAC 10 may use any combination of hardware, firmware, or
`software . . . The TAC 10 is connected to or inside the conventional PSTN
`tandem switch 16 such that calls may flow through the TAC 10 in the
`same manner as the existing PSTN tandem switch, except that additional
`3rd-party features are applied to the call.” 3:57-60, 61-63, 3:66-4:3; see
`also id., 4:26-30.
`
`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 signalling system is
`used by the PSTN to allow calling and to transmit both calling and called
`party identity. Until now, optional features were provided by the local
`service telephone company (telco) through the edge switch at the central
`office (CO). Id. 1:28-38.
`
`36.
`
`At the time of the parent ’328 patent, the “conventional PSTN” was a
`
`circuit-switched network. (’328 patent, col. 1:28-34; Newton’s Telecommunication
`
`Dictionary, 15th Ed. (1999) (“Public Switched Network”); The Telecommunications
`
`Handbook, 3d Ed. (2000), at 1-8.) And tandem switches were class 4 circuit switches--
`
`TDM tandem circuit switches in particular. (See Newton’s Telecommunication
`
`Dictionary, 15th Ed. (1999) (“Tandem Switch” and “Class 4 Office”.)
`
`37.
`
`The embodiments described in the ’328 patent specification are consistent
`
`with the specification’s identification of the invention as providing Internet-based call
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`feature selection, and implementation of such selected call features, through a controller
`
`connected to a PSTN tandem switch rather than an edge switch. See generally ’328
`
`patent.
`
`38.
`
`The original claim filed as part of the ’328 patent specification is also
`
`consistent with the identification of the invention:
`
`1. A controller connected to a PSTN tandem switch comprising:
`means for receiving a first call intended for a subscriber;
`means for placing a second call to said subscriber; and
`means for interconnecting the two calls to complete the original
`incoming call.
`
`(Application 09/565,565, dated May 4, 2000, at p. 12.)
`
`39.
`
`In claims 18, 37, 45 and 46 of the ’777 patent, an “incoming call” is
`
`received at a “controlling device” and “from a switching facility….” As set forth above,
`
`the ’328 patent specification describes that a controller receives and processes calls from
`
`the PSTN tandem switch 16. (’328 patent, col. 3:66-4:5, 4:11-13, 5:27-28, 6:9-12.)
`
`40.
`
`Thus, in my opinion, the claims of the patents-in-suit, when read in the
`
`context of the ’328 patent specification--the patent to which the plaintiff asserts all claims
`
`are entitled to priority--define the term “switching facility” to mean a PSTN tandem
`
`switch.
`
`41.
`
`The patent owner introduced ambiguity into the meaning of the term
`
`“switching facility” three (3) years later when it modified the language of the ’328 patent
`
`specification in the continuation-in-part specification of the ’635 patent application
`
`(deletions shown in red strikethrough and additions shown in blue underline). The
`
`changed language is repeated in the specifications of the three asserted patents. Rather
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`than describing the scope of the invention, the amended specification does not make clear
`
`to one of ordinary skill in the art what invention the patent owner was attempting to
`
`disclose. For example:
`
`The inventionA preferred embodiment of the inventive system described
`herein connects at the tandem, thereby eliminating these problems. ‘635
`patent, col. 1:60-62.
`
`42.
`
`Adding confusion, seven years after the ’635 patent application was filed,
`
`during prosecution of the ’777 patent application, the patent owner distinguished over
`
`prior art rejections by amending the claims to include the term “switching facilities,”
`
`arguing:
`
`Applicants’ have amended the claims here to emphasize this distinction.
`Rather than to simply refer to a “PSTN,” the claims now define the
`various components of the PSTN architecture and indicate the point
`(switching facility within the PSTN) at which Applicants’ system has
`access to apply the “features” requested by a subscriber to call routing
`operations. Application 11/948,965, Amendment & Response To Final
`Office Action Submitted With Request For Continued Examination
`(“RCE”) dated February 16, 2010, p. 21 (emphasis added).
`
`43.
`
`The arguments indicate to one of ordinary skill in the art that a “switching
`
`facility” is in the PSTN, consistent with the ’328 patent disclosure and in spite of the
`
`altered specification language.
`
`44.
`
`Then, during a January 11, 2010 interview with the examiner at the U.S.
`
`Patent and Trademark Office, the patent owner asserted that it had “explained the
`
`differences between Schwab et al and their apparatus. The major difference being that the
`
`subscriber is allowed to connect to a tandem access switch directly through a tandem
`
`access controller without any modification to the network. Applicant is going to file an
`
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`RCE stressing this difference.” Application 11/948,965, Interview Summary, 11 January
`
`2010 (emphasis added).
`
`45.
`
`To one of ordinary skill in the art, the patent owner was stating—and
`
`attempting to overcome the examiner’s objections by stating—that the switching facility
`
`must be in the PSTN, specifically, the alleged invention must connect only to a tandem
`
`switch of the PSTN. By amending the claims and stressing the importance of no
`
`modification of the then-existing network--the circuit-switched PSTN--the patent owner
`
`indicated to a person of skill that the invention is limited to connecting to and controlling
`
`the existing network tandem circuit switches. These statements were consistent with the
`
`meaning of “switching facility” as described in the ’328 patent specification and also
`
`with the ’328 patent’s identification of the invention.
`
`46.
`
`However, in a footnote of the February 16, 2010 Amendment and
`
`Response, the patent owner again added ambiguity to the meaning of the term “switching
`
`facility” by injecting a different possible meaning of the term, namely to include “[a]ny
`
`point in the switching fabric of converging networks, also referred to in industry as a
`
`signal transfer point (STP), signal control point (SCP), session border controller (SBC),
`
`gateway, access tandem, class 4 switch, wire center, toll office, toll center, PSTN
`
`switching center, intercarrier connection point, trunk gateway, hybrid switch, etc.” This
`
`definition of “switching facility” completely changes the scope of the claims.
`
`47.
`
`The discrepancy of claim scope between what one of ordinary skill in the
`
`art would understand the term to mean in view of the claims and the specification to
`
`which the plaintiff claims priority--a PSTN tandem switch—and what the February 16,
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`2010 Amendment and Response footnote attempts to add--any point in the switching
`
`fabric of converging networks,
`
`including STPs, SCPs, SBCs, gateways, and
`
`more--renders the claims indefinite in my opinion.
`
`48.
`
`To the extent PAL argues that an alternate or different plain and ordinary
`
`meaning of the term should be applied, it would introduce yet another possible definition
`
`and a different claim scope. The term “switching facility” was used in literature to mean
`
`a facility in which one or more switches are used to interconnect communications
`
`circuits.
`
`(Federal
`
`Standard
`
`1037C
`
`(Telecommunications: Glossary
`
`of
`
`Telecommunications Terms) (1996).)
`
`B.
`
`49.
`
`External device
`
`The term “external device” appears in claim 166 of the ’113 patent, which
`
`is a dependent claim for “the controller of claim 163, wherein the controller is configured
`
`to enable the communication between the first call and the second call through an
`
`external device.”
`
`50.
`
`As stated above, I