Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 8,457,113
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`CLAIMS 1, 2, 8, 11, and 15-19 OF U.S. PATENT NO. 8,457,113
`
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 1
`YMax Petition Excerpts
`IPR2016-01262
`
`
`U.S. Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`YMAX CORPORATION,
`Petitioner
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner
`
`_____________
`
`Inter Partes Review No.: Unassigned
`
`U.S. Patent No. 8,457,113
`
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`CLAIMS 1, 2, 8, 11, and 15-19 OF U.S. PATENT NO. 8,457,113
`
`UNDER 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.100 ET SEQ.
`
`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 1
`YMax Petition Excerpts
`IPR2016-01262
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`
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
`
`See Ex. 1002 ¶¶ 39-40.
`
`When 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
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`recipient is in the same geographical area and directly connected to the same
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`central office, the call is then typically routed to one or more tandem switches (in
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`sequence), until
`
`it reaches the edge switch that
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`is directly connected to the
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`recipient’s phone, and finally to the recipient’s phone. The switches use the
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`telephone number dialed by the caller to know where to route the call. Thus, the
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`{38562528;5}
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`FOCAL IP, LLC EX2025 - 2
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`IPR2016-01262
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`
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`Id. at 3:14-16. Based on the subscriber’s selections, the TAC will determine where
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`to route the telephone call. Id. 3:16-23, 5:5-20, 6:26-29, 10:1-3. If the subscriber
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`set a forwarding number, the TAC 10 will place a second call to the forwarding
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`number. Id. When the second call is answered, the TAC 10 connects the first call
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`to the second call, “thereby connecting the calling party 20 to the subscriber 12.”
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`Id.; see also Ex. 1002 ¶¶ 53-54.
`
`E.
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`Claim Construction
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`For purposes of this petition for Inter Partes Review, the challenged claims
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`must be given their broadest reasonable interpretations to one of ordinary skill in
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`light of the specification. 37 C.F.R. § 42.100(b). Claim language not specifically
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`addressed below should be given its plain and ordinary meaning.
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`1.
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`“web enabled”
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`Claim 1 recites “A method performed by a web enabled processing system
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`including one or more web servers coupled to a call processing system…”
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`The broadest reasonable interpretation of the phrase “web enabled” is
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`“capable of receiving information from, or sending information over, the Internet’s
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`world wide web.” This is supported by the specification, which has numerous
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`disclosures of
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`the disclosed processing system either
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`receiving or sending
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`FOCAL IP, LLC EX2025 - 3
`YMax Petition Excerpts
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`information through the web. See, e.g., Ex. 1001 at 2:67-3:3, 4:1-3, 5:16-20, 5:22-
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`24, 6:41-46, 8:8-12; see also Ex. 1002 ¶ 55.
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`2.
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`“coupled to”
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`Claim 1 recites “the call processing system coupled to at least one switching
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`facility …” The broadest reasonable interpretation of the phrase “coupled to” is
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`“connected either directly or indirectly.” See Ex. 1002 ¶ 56. Support for this
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`interpretation can be found in the specification at 3:29-40. The specification there
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`sets forth two embodiments.
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`In one, the call processing system (what it calls a
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`tandem access controller) is simply “connected to the PSTN” (Ex. 1001 at 3:28-
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`31). Because (as explained above) the PSTN is a network of switches in which all
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`the switches are connected at least indirectly, “connected to the PSTN” allows for
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`an indirect connection with respect to any particular class of PSTN switch.
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`In
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`contrast, in the second embodiment, the tandem access controller is described as
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`“[c]onnected directly to the PSTN tandem switch.” Id. at 3:33-40.
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`(emphasis
`
`added).
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`“Connected” (and its synonym “coupled”) is different from (and broader
`
`than) “connect[ed] directly.” The applicants used the word “directly” in the phrase
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`“Conneced directly to the PSTN tandem switch” when they wanted to be specific
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`about a direct connection.
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`FOCAL IP, LLC EX2025 - 4
`YMax Petition Excerpts
`IPR2016-01262
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`Support for this broadest reasonable interpretation for “coupled to” can also
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`be seen in dependent claim 124 of the ’113 patent. Claim 124 recites “A method
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`as defined in claim 1 wherein the one or more web servers coupled to the call
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`processing system are coupled through a data base.” (emphases added). That a
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`web server can be “coupled to” the call processing system “through” something
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`else requires “coupled” to be broad enough to include being connected indirectly.
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`That “coupled to” encompasses both direct and indirect connection is also
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`seen in the prosecution history of related U.S. Patent No. 6,529,596. There, the
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`applicant differentiated between a connection and a direct connection by amending
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`the claims to state “said TAC being directly connected to a PSTN tandem switch”
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`in an attempt to overcome prior art. Ex. 1006 at 108.
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`3.
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`“switching facility”
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`Claim 1 uses the phrase “switching facility”/”switching facilities” as follows
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`(emphases added):
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`a
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`second
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`network
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`coupled
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`to
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`a
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`switching
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`facility
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`of
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`a
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`telecommunications
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`network,
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`the
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`telecommunications
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`network
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`comprising edge switches for routing calls from and to subscribers
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`within a local geographic area and switching facilities for routing
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 5
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`calls to other edge switches or other switching facilities local or in
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`other geographic areas …
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`the call processing system coupled to at least one switching facility of
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`the telecommunications network…
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`The broadest reasonable interpretation of “switching facility” is “any switch
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`in the communication network” (and “switching facilities” is simply the plural).
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`The phrase “switching facility” does not appear in the specification. However, to
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`one of ordinary skill in the art, all switches in a telecommunications network like
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`the PSTN are a “switching facility.” Ex. 1002 ¶ 60. This is supported by the
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`“authoritative source of definitions for terms used in the preparation of all
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`telecommunication documentation” for “all Federal departments and agencies” in
`
`effect in 1999, the Federal Standard 1037C (Glossary of Telecommunications
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`Terms) (Aug. 7, 1996), which defines “switching facility” and “switching center”
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`as synonyms that broadly mean “a facility in which switches are used to
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`interconnect communications circuits on a circuit-, message-, or packet-switching
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`basis. Synonyms,
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`in telephony, central office, switching exchange, switching
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`facility. Deprecated synonym switch.” Ex. 1008 at 7, 391 (footnote omitted).
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`Notably, this definition does not refer to a particular class of switch; it is the
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`generic, broad term for the location of communication switches of circuits,
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 6
`YMax Petition Excerpts
`IPR2016-01262
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`
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`packets, or messages, and for short, for the switches themselves. “Central office,”
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`which is the location of edge switches, is even listed as a synonym. See also Ex.
`
`1009 at 757 (defining “switching centers” to refer to all five classes of switches in
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`the PSTN, including class 5/edge switches).
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`In light of the embodiments displayed in Figures 1 and 2 of the ‘113 patent
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`in which a Tandem Access Controller is shown directly connected to a tandem
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`switch (class 4) and not to the CO (central office, the location of an edge switch),
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`and in light of the claim also separately referring to “edge switches,” Patent Owner
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`may argue that “switching facility” should be interpreted more narrowly to exclude
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`central offices/edge switches. That, however, is not the broadest reasonable
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`interpretation. Nowhere in the specification did the inventors provide a definition
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`of “switching facilities” that is narrower than the ordinary meaning to those of
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`ordinary skill in the art as shown above. Moreover, as Figures 1 and 2 illustrate,
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`applicants knew the specific term “tandem switch,” but chose to use the broad,
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`generic phrase “switching facility” in the claims. That deliberate word choice
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`broadens the claim under the broadest reasonable interpretation beyond the specific
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`embodiments of Figures 1 and 2 involving the tandem switch to include a
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`connection to any kind of switch in the PSTN.
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 7
`YMax Petition Excerpts
`IPR2016-01262
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`
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`Indeed, applicants have used “switching facilities” to refer to all switches in
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`the PSTN, including edge switches. In the applicants’ February 22, 2010 response
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`in the prosecution history of the related U.S. Patent No. 7,764,777, they argued that
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`the then-pending claims were allowable over the Schwab prior art because:
`
`The PSTN is a configuration of switching facilities for routing calls
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`from calling parties to called parties, comprising a plurality of end
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`office switches (also referred to as central office switches or edge
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`switches (e.g., a class 5 switch)) and a plurality of interconnected
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`switching facilities
`
`(also referred to as
`
`tandem switches)….
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`Typically, a telephone call involves an originating end office switch, a
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`plurality of tandem switches, and a terminating end office switch.
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`Therefore in Schwab the application of “features” to call routing
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`operations is restricted within the local geographic area of a particular
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`end office switch (local to the calling party that originates the call).
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`(Ex. 1007 at 93-94)
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`4.
`
`“a call processing system serving as an intelligent
`
`interconnection between at least one packet network and a
`
`second network coupled to a switching facility of a
`
`telecommunications
`
`network,
`
`the
`
`telecommunications
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 8
`YMax Petition Excerpts
`IPR2016-01262
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`
`
`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`network comprising edge switches for routing calls from
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`and to subscribers within a local geographic area and
`
`switching facilities for routing calls to other edge switches
`
`or other switching facilities local or in other geographic
`
`areas”
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`The broadest reasonable interpretation of the phrase above from claim 1 to
`
`one of ordinary skill in the art in light of the specification is that the call processing
`
`system: (A) [interconnection] is directly or indirectly connected to both (1) a
`
`packet network, such as the Internet, and (2) a telecommunications network that
`
`has edge switches that route calls to local subscribers and that has switches that
`
`route calls to edge switches and to other switches both geographically local and
`
`far, such as the PSTN, and (B) [intelligent] can change the route of a call from its
`
`originally-dialed telephone number destination.
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`Support for the portion of this interpretation with respect to the word
`
`“interconnection” can be found above regarding the interpretation of “coupled to.”
`
`Support for the portion with respect to the word “intelligent” can be found in the
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`’113 patent’s specification at 5:4-9. The specification there juxtaposes the
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`explanation that TAC 10, an embodiment of the claimed call processing system,
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`can change the route of a call to a subscriber (“it redirects calls to subscribers”)
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`FOCAL IP, LLC EX2025 - 9
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`IPR2016-01262
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`with the characterization in the next, concluding sentence of the paragraph that the
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`TAC “provides intelligent
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`interconnection between a calling party and a
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`subscriber.” Ex. 1001 at 5:4-9 (emphasis added); see also Ex. 1002 ¶¶ 64-68.
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`The
`
`broadest
`
`reasonable
`
`interpretation
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`of
`
`the
`
`phrase
`
`“the
`
`telecommunications network comprising edge switches for routing calls from and
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`to subscribers within a local geographic area and switching facilities for routing
`
`calls to other edge switches or other switching facilities local or in other
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`geographic areas” is “a telecommunications network that has edge switches that
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`route calls to local subscribers and that has switches switches that route calls to
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`edge switches or
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`to other switches both local and far, such as PSTN.”
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`(Alternatively, for purposes of the petition, this phrase need only be interpreted
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`broadly enough to encompass at least the PSTN.)
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`As detailed above,
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`the PSTN,
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`the conventional nationwide telephone
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`network, includes edge switches for routing calls to subscribers within the local
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`geographic area of the switch and other switches that route calls to edge switches
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`or to still other switches which can be local or far. See Ex. 1002 ¶ 68. Thus, the
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`“telecommunications network” in this claim limitation is plainly intended to
`
`include the PSTN. Notably then, as written, it is hard to make sense of the full
`
`wording of this limitation.
`
`If it
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`is the “telecommunications network” that
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`“compris[es] edge switches” and “switching facilities for routing calls to other
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`edge switches or other switching facilities” local or
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`far,
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`then it
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`is the
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`“telecommunications network” that describes the PSTN. Yet the claim states that
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`the call processing system is an interconnection between “one packet network” and
`
`a “second network,” with the “second network” simply “coupled to a switching
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`facility of a telecommunications network…” That suggests that
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`the second
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`network is not itself the telecommunications network/PSTN. But if the second
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`network is not
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`the telecommunications network/PSTN, what network is it?
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`Furthermore, what then does claim 1 mean when it later recites “receiving call data
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`which is associated with a call originated by the calling party via either the packet
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`network [such as the Internet in Voice over IP communications] or the second
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`network”? What is the second network from which a call can originate that is
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`neither the packet network nor the PSTN?
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`However,
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`the specification consistently describes the alleged inventive
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`tandom access controller as being connected to the PSTN as well as to the Internet.
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`See, e.g., Ex. 1001 at Figs. 1 and 2, 3:29-40. Thus, the broadest reasonable
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`limitation of this claim limitation should construe the language (as set forth above)
`
`to refer to an interconnection between a packet network such as the Internet and
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`the “second network” that can be the PSTN. The proposed broadest reasonable
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`{38562528;5}
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`Petition for Inter Partes Review
`U.S. Patent No. 8,457,113
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`interpretation above is also consistent with the language in claim 94 that uses a
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`similar sentence structure:
`
`“a call processing system serving as an intelligent
`
`interconnection between at
`
`least one circuit-switched network and a packet
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`network in a telecommunications network.” See Ex. 1001 Claim 94. By analogy to
`
`claim 94, the broadest reasonable interpretation of the “second network” would
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`thus include the telecommunications network like the PSTN.
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`5.
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`“tandem access controller”
`
`The phrase “tandem access controller” in claims 18 and 19 is not a known
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`term of art in telecommunications. Ex. 1001 However, the inventors acted as their
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`own lexicographers, explaining that “tandem access controller” is a “processor.”
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`Ex. 1001 at 3:28-29 (“In one embodiment,
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`the system includes a processor
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`(referred to herein as a tandem access controller)...”) The specification also
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`describes the “tandem access controller” as “any combination of hardware,
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`firmware, or software and,
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`in one embodiment,
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`is a conventional computer
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`programmed to carry out the functions described herein.” Because to function
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`software needs to be run on a processor, the broadest reasonable interpretation in
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`light of the specification of the phrase “tandem access controller” is “a processor”
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`(or a device with a processor).
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`{38562528;5}
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2025 - 12
`YMax Petition Excerpts
`IPR2016-01262
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