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.
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01262
`Patent Number: 7,764,777
`________________
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2022 - 1
`Bates Declaration
`IPR2016-01262
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BRIGHT HOUSE NETWORKS, LLC
`WIDEOPENWEST FINANCE, LLC
`KNOLOGY OF FLORIDA, INC.
`BIRCH COMMUNICATIONS, INC.
`
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2016-01262
`Patent Number: 7,764,777
`________________
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2022 - 1
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`QUALIFICATIONS ........................................................................................ 2
`
`II.
`
`PERSON OF ORDINARY SKILL ................................................................. 4
`
`III. LEGAL UNDERSTANDING ......................................................................... 5
`
`A. ANTICIPATION ................................................................................... 5
`
`B.
`
`C.
`
`OBVIOUSNESS ................................................................................... 6
`
`BROADEST REASONABLE INTERPRETATION ........................... 9
`
`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE
`CHALLENGED PATENT ........................................................................................ 9
`
`A. Overview of the PSTN .......................................................................... 9
`
`B.
`
`The ’777 Patent ................................................................................... 14
`
`The ’777 Patent Contains an Unmistakable Disclaimer of Subject Matter and
`V.
`Claim Scope for Call Controllers Connected to an Edge Switch or Edge Device. . 16
`
`A. Disclaimer in the ’777 Patent .............................................................. 16
`
`The Prosecution History Confirms and Reinforces the Disclaimer, and
`B.
`Does Not Provide a Basis to Rescind the Plain Disclaimer from the
`Specification. ................................................................................................. 22
`
`C.
`
`Scope of General Disclaimer ............................................................... 29
`
`VI. CLAIM CONSTRUCTION .......................................................................... 30
`
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`Declaration of Regis J. “Bud” Bates
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`A.
`
`B.
`
`C.
`
`“Switching Facility” ............................................................................ 30
`
`“Controlling Device” ........................................................................... 33
`
`“Coupled To” / “In Communication With” ........................................ 34
`
`VII. SUMMARY OF THE REFERENCES ......................................................... 36
`
`A.
`
`B.
`
`C.
`
`State of the Art .................................................................................... 36
`
`Summary of Archer ............................................................................. 41
`
`Summary of Chang .............................................................................. 44
`
`VIII. ARGUMENTS .............................................................................................. 46
`
`A. Archer Does Not Disclose that the Controlling Device Connects the
`First and Second Calls. .................................................................................. 46
`
`Archer Does Not Disclose A Controlling Device in Communication
`B.
`with a Switching Facility. .............................................................................. 49
`
`Archer’s Converters Are Edge Devices, Not Switching
`1.
`Facilities. ............................................................................................. 50
`
`Archer Does Not Inherently Disclose that Archer’s Converter is
`2.
`Coupled to a Switching Facility. ......................................................... 53
`
`It Would Not Be Obvious to a POSA to Couple Archer’s
`3.
`Converters to a Switching Facility ...................................................... 53
`
`C.
`
`Petitioner’s Obviousness Arguments Are Inadequate. ....................... 55
`
`IX. CONCLUSION .............................................................................................. 55
`
`
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`IPR2016-01262
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`Declaration of Regis J. “Bud” Bates
`
`I, Regis J. “Bud” Bates, declare as follows:
`1. My name is Regis J. “Bud” Bates, and I have been retained as an expert
`witness for Inter Partes Review of IPR2016-01262.
`2.
`This report contains statements of my opinions formed to date and the
`bases and reasons for those opinions. I may offer additional opinions based on
`further review of materials in this case, including opinions and/or testimony of
`other expert witnesses.
`3.
`I understand that this Declaration is being submitted along with Patent
`Owner’s Response. On January 3, 2017, the Patent Trial and Appeal Board (the
`“Board”) instituted an inter partes review (the “IPR”) and trial, pursuant to 35
`U.S.C. § 314(a), as to Claims 18, 21, 23, 25, 26, 28-31, 37, 38, 41, 45, and 46 of
`U.S. Patent No. 7,764,777 (the “Challenged Claims” and the “’777 Patent”,
`respectively) on the following ground: the Challenged Claims are obvious over
`U.S. Pat. No. 6,683,870 to Archer (“Archer”), U.S. Pat. No. 5,958,016 to Chang
`(“Chang”), and the Admitted Prior Art. See Decision Granting Institution of Inter
`Partes Review, Jan. 3, 2017, Paper No. 19.
`4.
`Capitalized terms found in this Declaration that are not defined herein
`have the meaning given them in Patent Owner’s Response.
`5.
`In preparing this Declaration, I have reviewed the Petition, the
`declaration that accompanies the Petition, and the exhibits that have been
`submitted with the aforementioned filings.
`6.
`This Declaration is a statement of my opinions on issues, as understood
`by a “person of ordinary skill in the art” (“POSA”) in 1999-2000, related to the
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`Declaration of Regis J. “Bud” Bates
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`validity of the Challenged Claims of the ’777 Patent (the Challenged Patent) over
`the instituted grounds and the other issues raised by Petitioner.
`7.
`I am of the opinion that the Challenged Claims of the ’777 Patent are
`patentable over all of the instituted grounds for the reasons discussed below.
`
`I.
`
`QUALIFICATIONS
`8.
`This section summarizes my career history, education, publications, and
`other relevant qualifications. My full curriculum vitae is attached as Appendix A to
`this report.
`9.
`I have been involved in and with the telecommunications industry for 50
`years and have seen the development and growth of the various technologies,
`infrastructure, legal, regulatory, and technical services.
`10. Notably, I am the author of 20 books which outline the use of Voice and
`Data technologies used throughout the industry. As author of these books, I am
`situated to opine upon the state of the Telephone Networks, as well as the
`conclusions that both parties in this proceeding draw therefrom.
`11.
`I am the founder and president of TC International Consulting, Inc.
`(TCIC), based in Heber, Arizona. I have held this position since the inception of
`the company in October 1989. TCIC is a full service consulting and training firm
`specializing in communications and computer convergence.
`12. My role is to assist our client companies with the analysis of options,
`selection of vendors or products to meet their strategic goals, and training for
`technologies including voice, telephone systems, data networks, video, Internet,
`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
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`Declaration of Regis J. “Bud” Bates
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`systems and services, fiber optics, and infrastructure. We have been responsible for
`selecting and implementing over 100 private branch exchange (PBX) systems for
`our client companies. TCIC develops and conducts training for corporate users,
`equipment manufacturers, and Telephone and Internet carriers.
`13. From September 1986 to October 1989, I was the chief information
`officer at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities
`included the complete automation of the law firm’s multiple offices around the
`country.
`14. From September 1979 to September 1986, I was the telecommunications
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
`select, analyze and implement voice and data communications projects at U.S. and
`international sites.
`15. From April 1977
`senior
`the
`I was
`to September 1979,
`telecommunications manager for manufacturing and international sites at Data
`General Corporation
`in Westboro, MA. I was responsible for selecting
`telecommunications equipment for sites across the world, selecting services (voice,
`data and fax traffic) from common carriers, and selecting appropriate means and
`protocols to use these goods and services.
`16. From September 1974 to April 1977, I was the manager of administrative
`services at a retail chain in Canton, MA called Hills Department Stores. There, I
`was responsible for communications matters including voice, data, fax, telex, and
`teletype.
`
`
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`Declaration of Regis J. “Bud” Bates
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`17. From April 1972 to September 1974, I worked as the telecommunications
`and facilities manager at Damon Corporation, a conglomerate that included
`medical-biological development, veterinary products, clinical labs, security
`manufacturing, and hobby craft. My responsibilities included voice and data
`communications for a variety of locations across the country.
`18. From September 1966 to April 1972, I was a captain in the U.S. Army
`Signal Corps. My assignments took me to many locations, including a deployment
`in Vietnam, where I worked in mobile and fixed-site communication environments
`using radio-based troposcatter systems.
`19.
`In addition to these formal roles, I have consulted for and provided
`training courses to over 20 major organizations, including Cisco, Motorola
`Solutions, Nortel Networks, the University of California at Berkeley, and Fidelity
`Investments, as well as the U.S. Army, Electronic proving Grounds, Central
`Intelligence Agency, Federal Bureau of Investigation, and National Security
`Agency.
`20.
`I received a Bachelor of Sciences degree in Business Management in
`1979 from Stonehill College in Easton, MA with additional work towards my
`Masters of Business Administration from Lehigh University in Bethlehem, PA and
`St. Joseph’s College in Philadelphia, PA.
`21.
`I completed all the coursework but not the thesis for an MBA.
`
`II.
`PERSON OF ORDINARY SKILL
`22.
`I believe that a person of ordinary skill in the art with respect to the
`Challenged Patent in 1999-2000 would have a bachelor’s degree in electrical
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`engineering, computer science, or the equivalent thereof and approximately 2-3
`years of professional experience within the field of telecommunications or network
`communications. This is consistent with the positions taken by the Petitioners in
`the Related IPRs.
`
`III. LEGAL UNDERSTANDING
`23. Although I am not an attorney and do not intend to testify about legal
`issues, my opinions are also informed by my understanding of the relevant law. I
`understand that the Patent Office will find a patent claim invalid in an inter partes
`review if it concludes that it is more likely than not that the claim is invalid.
`
`A. ANTICIPATION
`24.
`I have read 35 U.S.C. §§ 102 (a)-(g) and have been advised by counsel of
`the requirements to prove “anticipation” of a patented invention under these
`statutory provisions. I have been advised that if each and every element or step of
`a claim is disclosed within the “four corners” of a single prior art reference, that
`claim is said to be anticipated by that prior art reference and is invalid under 35
`U.S.C. § 102.
`25.
`I understand that anticipation requires that a single reference disclose all
`the elements, as arranged in the claim. I further understand that the prior art
`reference must clearly and unequivocally disclose the claimed invention or direct
`those skilled in the art to the claimed invention without any need for picking,
`choosing, and combining various disclosures not directly related to each other by
`the teachings of the cited reference.
`
`
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`26.
`I also have been advised that a prior art reference can disclose a claim
`feature because the feature is expressly described, or because the feature is inherent
`in the disclosure. I understand that something is inherent in a prior art reference if
`the missing descriptive matter must be necessarily present, and it would be so
`recognized by one of ordinary skill in the art. I also understand that inherency
`cannot be established by probabilities or possibilities, and that the mere fact that
`something may result from a given set of circumstances is not sufficient to show
`inherency.
`
`B. OBVIOUSNESS
`27.
`I have also been advised by counsel of the legal standards that apply to
`invalidity for obviousness under 35 U.S.C. § 103. I understand that a patent claim
`may be invalid under 35 U.S.C. § 103 if the differences between the claimed
`subject matter and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having ordinary
`skill in the art to which the subject matter pertains. I understand that obviousness is
`a question of law and that the following factors must be evaluated to determine
`whether a party challenging a patent claim’s validity has met its burden of proof
`that the claimed invention is obvious: (1) the scope and content of the prior art; (2)
`the differences between the claims and the prior art; (3) the level of ordinary skill
`in the art; and (4) objective indicia of nonobviousness.
`28.
`I understand that to reach a proper determination under 35 U.S.C. § 103,
`one must step backward in time and into the shoes worn by the hypothetical
`“person of ordinary skill in the art” when the invention was unknown and just
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`before it was made. In view of all factual information, one must then make a
`determination whether the claimed invention “as a whole” would have been
`obvious at that time to that person of ordinary skill in the art. Knowledge of the
`applicants’ disclosure must be put aside in reaching this determination, yet kept in
`mind in order to determine the differences between the claimed subject matter as a
`whole and the content of the prior art.
`29.
`If a single element of the claim is absent from the prior art, alone, or in
`combination, the claims cannot be considered obvious.
`30. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I have been informed by
`counsel to consider any distortion caused by hindsight bias, to guard against
`
`slipping into the use of hindsight, to be cautious of opinions that rely upon after‐
`
`the-fact reasoning, and to avoid the temptation to read into the prior art the
`teachings of the invention at issue. The determination of obviousness is not
`whether a person could, with full knowledge of the patented device, reproduce it
`from prior art or known principles. The question is whether it would have been
`obvious, without knowledge of the patentee’s achievement, to produce the same
`thing that the patentee produced. This judgment must be made without the benefit
`of hindsight. It is improper to take concepts from other devices and change them in
`
`light of the now‐known template of the patented device, without some direction
`
`that would render it obvious to do so.
`31.
`I understand that a claim is not proven obvious merely by demonstrating
`that each of the claim elements was independently known in the prior art. I
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`Declaration of Regis J. “Bud” Bates
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`understand that most, if not all, inventions rely on building blocks long since
`uncovered and claimed discoveries, and, almost of necessity, will likely be
`combinations of elements that were already known. A party challenging validity
`must show that a person of ordinary skill in the art would have had a reason to
`combine the teachings of the prior art to achieve the claimed invention and would
`have had a reasonable expectation of success in doing so.
`32.
`I have also been informed by counsel that an inference that a claimed
`combination would not have been obvious is especially strong where the prior art’s
`teachings undermine the very reason being proffered as to why a person of
`ordinary skill would have combined the known elements. A reference may be said
`to "teach away" when a person of ordinary skill, upon reading the reference, would
`be discouraged from following the path set out in the reference, or would be led in
`a direction divergent from the path that was taken by the applicant. Where a
`proposed modification or combination for the prior art would change the principle
`of operation of the prior art being modified or render the prior art unsatisfactory for
`its intended purpose then the teachings of the references are not sufficient to render
`the claims at issue obvious.
`33.
`I have been informed by counsel that a party challenging the claims of a
`patent must present evidence sufficient to establish some articulated, rational
`reason to select and combine the teachings of the prior art to produce the claimed
`invention with a reasonable expectation of success, which is sometimes referred to
`as a prima facie conclusion, or case, of obviousness.
`
`
`
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`Declaration of Regis J. “Bud” Bates
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`C. BROADEST REASONABLE INTERPRETATION
`34. The Board interprets claims in an unexpired patent using the broadest
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`they appear. Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history. Under this standard, claims should always
`be read in light of the specification and teachings in the underlying patent claim. A
`construction under BRI cannot be divorced from the specification and the record
`evidence, and must be consistent with the one that those skilled in the art would
`reach. The construction must be reasonable in light of the totality of the written
`description and the claims. I have also been informed by counsel that the
`prosecution history may be an important component of intrinsic evidence in
`construing claims, even when a broadest reasonable construction standard applies.
`35.
`I understand that the broadest reasonable interpretation of a claim term
`cannot be so broad as to include a configuration expressly disclaimed or disavowed
`in the specification. Claim terms are given their plain meaning unless the
`specification or prosecution history evidences that the patentee acted as his own
`lexicographer or disavowed claim scope.
`
`IV. DISCUSSION OF THE PSTN AND OVERVIEW OF THE
`CHALLENGED PATENT
`A. Overview of the PSTN
`36. The PSTN employs various equipment to route calls. This equipment
`includes switches and databases, and is arranged in a hierarchical fashion:
`
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`10
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`Declaration of Regis J. “Bud” Bates
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`BHN, et al. v. FOCAL IP, LLC
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`Declaration of Regis J. “Bud” Bates
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`Notably, the same hierarchical levels/equipment may be referred to by a variety of
`names. In both examples above, the class 4 level refers to both a “toll center” and
`a “tandem switch.” This understanding is important because the Challenged Patent
`and prior art references sometimes use different terminology to refer to the same
`hierarchical level. At the top of the hierarchy are regional toll centers (class 1
`offices). These offices are interconnected with sectional toll centers (class 2
`offices), which in turn connect to primary centers (class 3 offices). Class 4 and 5
`levels comprise the rest of the hierarchy and are of particular relevance to the
`Challenged Patent. Class 4 centers contain tandem switches. Class 4 centers are
`also referred to as toll centers, and tandem switches are also referred to as Class 4
`switches or toll switches.
`37. Accordingly, the ’777 Patent refers to “PSTN tandem switches” as
`“exchanges that direct telephone calls (or other traffic) to central offices [] or to
`other tandem switches.” ’777 Pat., 4:44-46. These “PSTN tandem switches” are
`in the PSTN. See Lavian Dec. of IPR2016-01258 (Ex. 2028), ¶¶39-45).
`38. Class 5 offices contain edge switches and are interconnected by tandem
`switches. Edge switches are sometimes referred to as central offices (“COs”).
`Central offices have been defined as:
`[Offices] which serve end users through local loop connections [local
`loops are the actual copper wires that run from a customer’s premises to
`the central office].
`Ex. 2002 at 159. They have also been described as:
`
`
`
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`Declaration of Regis J. “Bud” Bates
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`. . . a CO traditionally houses one or more voice-optimized circuit
`switches to interconnect subscriber lines within a local area known as
`the carrier serving area (CSA) and to connect subscriber local loops to
`network trunks.
`Ex. 2003 at 102. The ’777 Patent’s description of edge switches is consistent with
`the above:
`The [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.
`
`12
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`’777 Pat., 1:40-46 and Fig. 2. The extrinsic and intrinsic evidence confirm that (1)
`edge switches are connected directly to subscribers or edge devices via end-lines
`(i.e., there are copper wires (or other media) that run directly between the edge
`switches and subscribers); and (2) tandem switches are not directly connected to
`subscribers or edge devices, but are instead connected to edge switches and other
`tandem switches. Other experts support my opinion in this regard. See Lavian
`Dec. of IPR2016-1256 (Ex. 2030), ¶¶105-106; Lavian Dep. (Ex. 2029) at 31:5-
`32:16.
`39. Petitioners largely agree with how a tandem switch functions in the
`PSTN that is consistent with my opinion. In a Related IPR, Petitioner BHN states,
`“[t]he PSTN consists of switches known as tandem switches or class 4 switches
`(switching facilities in the claims) which serve to interconnect between different
`geographical regions and edge switches or class 5 switches, which connect to end-
`user devices, like telephones, within a local geographic area.” -01261 Pet. (Ex.
`2023) at 29 (emphasis added). In a different Related IPR, Petitioner Cisco states,
`“[c]lass 3 switches are also known as tandem switches and generally provide long
`
`distance calling links by interconnecting between edge switches and other tandem
`switches.” -01254 Pet. (Ex. 2024) at 7 (emphasis added). In yet another Related
`IPR, Petitioner YMax states that “[w]hen a telephone call is placed on the PSTN,
`the call typically travels from the caller’s phone to the edge switch in the caller’s
`local central office. Unless the recipient is in the same geographical area and
`directly connected to the same central office, the call is then typically routed to one
`or more tandem switches (in sequence), until it reaches the edge switch that is
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`directly connected to the recipient’s phone, and finally to the recipient’s phone.” -
`01260 Pet. (Ex. 2025) at 13 (emphasis added); Lavian Dec. of IPR2016-1256 (Ex.
`2030), ¶¶41-43; Lavian Dep. (Ex. 2030) at 23:11-25:11.
`40. 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. SS7 signaling flows between one CO and another, including all switches in
`between (e.g., tandem switches). SS7 signaling does not flow past COs to edge
`devices, as edge devices are not equipped to process and respond to SS7 signaling.
`
`B.
`The ’777 Patent
`41. Generally, the ’777 Patent relates to the provision of call control features
`in the PSTN. Call forwarding (e.g., transferring a voice call originally directed to
`703-555-1212 to an alternate telephone number) is an exemplary call control
`feature. The ’777 Patent discloses a Tandem Access software that is appropriately
`programmed to process calls. ’777 Pat., 4:32-44.
`42. The Background section acknowledges that, at the time of the invention,
`various devices existed to provide call control features. One novel and important
`aspect of the ’777 Patent concerns where in the PSTN such call control features are
`implemented. As discussed in more detail below, the ’777 Patent expressly
`recognizes that prior art call control devices were attached to an edge device (e.g.,
`phones and PBXs) or an edge switch located in a CO. ’777 Pat., 1:47-62 and 2:35-
`49. These prior art edge devices received and answered a call on one line, then
`dialed out on another line, and then connected the two lines together.
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`43. By contrast, the ’777 Patent discloses connecting the TAC to a tandem
`switch (hence the name Tandem Access Controller). This arrangement allows
`calls to be intercepted and processed before they are handed off to the CO (edge
`switch) associated with the called party. Stated differently, instead of a call being
`passed to a destination CO, then on to a controller connected to the CO that would
`a perform call control feature, the TAC processes the call at a tandem switch
`before it is ever routed to the destination CO. Further, the TAC “is not an edge
`device such as a PBX or central office (CO) switch . . . .” ’777 Pat., 5:1-3.
`44. This novel arrangement has several advantages. The first advantage
`concerns costs. Calls coming into and out of controllers connected to COs
`incurred charges for each incoming and outgoing call. See ’777 Pat., 2:12-17
`(discussing this scenario). Using a TAC instead avoids these costs. See ’777 Pat.,
`4:52-67.
`45. Another advantage regarding the TAC’s placement at a tandem switch
`concerns call quality. Running an analog voice signal from an edge switch to an
`edge device over copper wire degrades the quality of the signal. An edge device is
`a device connected to an edge switch, typically on a customer’s premises, such as a
`private branch exchange (PBX) or a generic telephone. See ’777 Pat., 5:1-3.
`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 compared to the end lines that carry a call from a CO to
`a phone). ’777 Pat., 1:54-65, 2:35-49.
`
`
`
`15
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2022 - 18
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`V. The ’777 Patent Contains an Unmistakable Disclaimer of Subject
`Matter and Claim Scope for Call Controllers Connected to an Edge
`Switch or Edge Device.
`A. Disclaimer in the ’777 Patent
`46. The ’777 Patent specification recognizes and criticizes prior art systems
`and methods that apply call control features through an edge switch or an edge
`device. The ’777 Patent disparages these prior art attempts as suffering from
`various shortcomings that the present inventions specifically seek to remedy.
`Indeed, Applicants, both in the specification and the prosecution history,
`repeatedly criticized applying call control features through an edge switch or an
`edge device, and in fact distinguished their inventions over such prior art. By
`making such statements, Applicants unequivocally disclaimed controllers that
`applied call control features through an edge switch, or controllers that were
`themselves an edge device, from the scope of their inventions.
`47. Applicants’ disparaging statements begin in the Background of the
`Invention section of the ’777 Patent. In discussing various prior art systems and
`their perceived disadvantages, Applicants specifically disparage the application of
`call control features at an edge switch:
`
`
`There are also edge devices in each of the public telephone company’s
`central offices which provide local control, but offer an extremely
`limited number of features and do not provide true 3rd-party call
`control.
`’777 Pat., 1:32-35; and
`
`
`
`16
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2022 - 19
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`In the past, numerous devices have been built that allow the
`connection of two lines together at an edge switch. These devices can
`be used to add features to a telephone network by receiving a call on
`one line and then dialing out on another line. The problem with these
`devices is that, because they are connected through an edge switch,
`transmission losses and impairments occur, degrading the overall
`connection. In addition, signaling limitations prevent full control, by
`the subscriber or the system, over the call.
`Id., 1:54-62.
`48.
`further
`these disparaging statements, Applicants
`to
`In addition
`distinguished their invention from controllers that are edge devices themselves, and
`noted the numerous disadvantages of applying call control features using an edge
`device:
`In addition to these [1-800] services, there are edge devices that
`perform some of the same services. Edge devices such as phones and
`PBXs that include voice mail, inter-active voice response, call
`forwarding, speed calling, etc., have been used to provide additional
`call control. These devices allow the phone user direct control over
`incoming and outgoing calls. The disadvantage of edge devices is that
`they add cost, degrade voice and transmission quality, can be difficult
`to program, are not easily programmed remotely, can require the user
`to pay for two lines, provide lower quality of service, and cannot
`
`
`
`17
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2022 - 20
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`provide the same level of functionality as a system that controls the
`PSTN directly.
`’777 Pat., 2:35-49.
`49.
`In sum, the ’777 Patent specification expressly recognizes that prior art
`systems and methods provided call control features through an edge switch or an
`edge device, but notes that there are numerous disadvantages with carrying out call
`control features in this manner; namely, the addition of costs, voice quality
`problems, and the requirement of a user to pay for the use of multiple telephone
`lines (in order to handle incoming and outgoing calls simultaneously).
`50. As a solution, the ’777 Patent emphasizes the importance of connecting
`the TAC (a Tandem Access Controller) to a tandem switch. The specification is
`replete with comme
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