Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
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`Focal IP, LLC,
`Patent Owner
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`Patent No. 7,764,777 B2
`Filing Date: Nov. 30, 2007
`Issue Date: July. 27, 2010
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`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
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`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,764,777
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`Inter Partes Review No. ______
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`Bright House Networks - Ex. 1002, Page 1
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 1
`La Porta Declaration Excerpts
`IPR2016-01262
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`52. The figure below illustrates the differences between circuit-switched
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`networks and packet-switched networks, at least as of 1996. Ex. 1049, 58-59, Fig.
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`2-34. In circuit-switched network (a), the physical “copper wire” connection was
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`set up when the call was made, forming a dedicated path for the call. Id. In the
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`packet-switched network (b), however, the packets were divided up and queued for
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`transmission. Id.
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`1.
`PSTN
`53. Telephony services, including voice-based telephone calls and fax
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`messaging, were generally carried out over the Public Switched Telephone
`31
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`Bright House Networks - Ex. 1002, Page 31
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 2
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`Network (“PSTN”) in the mid-1990s to 2000. Ex. 1037, 91-92, 95-101. The PSTN
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`had been in existence for decades and consisted of a global network of circuit
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`switches arranged in a geographical hierarchy. Ex. 1037, 64-69, 11-92, 106-13,
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`139-45. In the PSTN hierarchy, switches known as tandem switches, or class 4
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`switches, served to interconnect geographical regions and edge switches, or class 5
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`switches, connected between tandem switches and end-user devices, like
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`telephones, within a local geographic area. Ex. 1037, 106-13, 119-22, 137-38, Fig.
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`4-4, 110 (shown below); Ex. 1001, 1:40-46.
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`32
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`Bright House Networks - Ex. 1002, Page 32
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 3
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`telephone service subscriber to add, modify, and/or control, the telephony features
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`of his or her own telephone service using the Internet. Id., 1:29-36, 1:55-58, 1:66-
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`2:11, 2:21-22, 2:46-48, 3:37-38, 4:44-51, 6:32-33. Call features that the ‘777
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`Patent acknowledges were well known include “conditional call blocking, call
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`forwarding, call altering, time of day conditions, day of week conditions, follow-
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`me, caller recognition/password, caller ID, call screening/retrieval from voice mail,
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`speed dialing, interactive voice response, and speech recognition.” Id., 5:22-30,
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`see also 1:66-2:4, 2:9-10, 2:37-39, 6:48-51. The ‘777 Patent also acknowledges
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`that “Voice over Internet Protocol (VoIP) products emerging that provide better
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`user interfaces and control.” Id., 2:46-48.
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`92. The ‘777 Patent claims that there were problems with these systems
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`related to either the location of where the call features were applied—in the
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`terminating central office edge switches of telephone service providers or through
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`subscriber edge devices, such as phones or public branch exchanges (PBX)—(id.,
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`1:58-62, 2:4-11, 2:40-46, 2:12-17, 3:33-34—or the type providers that offered the
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`services—web-based toll systems that rely upon the toll network through the use of
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`“800” numbers. Id., 1:37-39, 2:23-30, 3:32-36.
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`93. The ‘777 Patent’s solution for the claimed invention was to provide
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`web-based call selection features through a controller connected to a tandem
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`switch rather than an edge switch, to provide the telephony features. PAL-1001,
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`59
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`Bright House Networks - Ex. 1002, Page 59
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 4
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`1:63-65, 3:29-34; 3:42-43, 4:32-46, 5:1-22.
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`94. The ‘777 patent discloses that its controller and system uses known
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`technologies and conventional computer and telephony equipment. PAL-1001,
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`1:29-32, 1:36, 1:40-46, 2:46-48, 3:37-38, 3:61-4:3, 4:44-51, 5:7-12, 5:13-20, 5:22-
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`30, 5:33, 5:57, 6:32-33, 6:44-52.
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`95. During prosecution, applicants acknowledged the only aspect they
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`considered novel was the location of where the call control features were applied—
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`in a switching facility, rather than in a terminating edge switch. Ex. 1019, 87 n.1
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`Claim 18
`[i] A method for processing an incoming call from a switching facility on
`a communication network [ii] that comprises edge switches for routing
`calls to subscribers within a local geographic area and switching facilities
`for routing calls to edge switches, or other switching facilities local or in
`other geographic areas the method comprising the steps of:
`receiving a first call, which is intended for a specified recipient, at a
`controlling device in communication with the switching facility;
`[i] identifying one or more control criteria previously associated with the
`specified recipient, [ii] wherein the one or more control criteria was
`entered via a web-based interface;
`initiating a second call at the controlling device in accordance with the
`control criteria associated with the specified recipient; and
`connecting the first and second calls at the controlling device after the
`second call is received by a communication device associated with the
`specified recipient.
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`Claim 37
`[i] A method for processing an incoming call from a switching facility on
`a communication network [ii] that comprises edge switches for routing
`calls within a local geographic area and switching facilities for routing
`calls to other geographic areas, the method comprising the steps of:
`receiving a first call, at a controlling device in communication with the
`switching facility; which is intended for a specified recipient;
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`60
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`18[pre]
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`18[a]
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`18[b]
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`18[c]
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`18[d]
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`37[pre]
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`37[a]
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`Bright House Networks - Ex. 1002, Page 60
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 5
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`geographic areas. See claim limitations 37[pre(ii)], 45[pre(ii)] and 46[pre(ii)];
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`Supra, ¶¶ 113-119. Additionally, as set forth above, it is also my opinion that
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`Archer expressly discloses a communication network that contains edge switches
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`for routing calls to subscribers within a local geographic area, and switching
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`facilities for routing calls to edge switches, or other switching facilities local or in
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`other geographic areas. See claim limitation 18[pre(ii)]; supra, ¶¶ 113-119. But,
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`to the extent the Board finds that Archer does not expressly disclose the claimed
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`communication network, it is my opinion that such a communication network is
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`inherent in Archer’s disclosure.
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`121. I have been informed and understand that for a claim limitation to be
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`inherent in a prior art reference, such a limitation must necessarily be present in
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`such reference. Archer teaches circuit-switched network (118, 136) is preferably
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`the PSTN, which includes edge switches for servicing respective local geographic
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`areas by routing calls locally, meaning circuit-switched network (118, 136)
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`necessarily comprises edge switches for routing calls within a local geographic
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`area. See Newton’s Telecommunication Dictionary, 15th Ed. (1999) (“Class 4
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`Office”). The PSTN would not function properly without edge switches See Ex.
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`1037, 82-83, 241-244, 261-264; Ex. 1038, 19-26, 49-50, Fig. 2.5, Fig. 3.3. Thus,
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`edge switches are inherent because the PSTN (118) necessarily contains them.
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`122. Similarly, absent a tandem switch, the PSTN would not function
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`78
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`Bright House Networks - Ex. 1002, Page 78
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2026 - 6
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
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`VIIl. CONCLUSION
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`290. I reserve the right to offer opinions relevant to the invalidity of the
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`'777 patent claims at issue and/or offer testimony in support of this Declaration.
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`291.
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`In signing this Declaration, I recognize that the Declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office. I also recognize that I may be
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`subject to cross-examination in the case.
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`If required, I will appear for cross(cid:173)
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`examination at the appropriate time.
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`292.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true and, further, that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under 18 U.S.C. § 1001.
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`Dated:
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`J/
`·d( 1 I
`v,-,e LJ e, 1Jr£
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`Respectfully submitted,
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`166
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`Bright House Networks - Ex. 1002, Page 166
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`BHN, et al. v. FOCAL IP, LLC
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