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`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
`_______________
`
`PATENT OWNER FOCAL IP, LLC’S CONTINGENT MOTION TO
`AMEND CLAIM 46 OF U.S. PATENT NO. 7,764,777
`UNDER 37 C.F.R. § 42.121
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`Case IPR2016-01262
`Patent 7,764,777
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`Paper No. 31
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
`
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`I.
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`II. CLAIM LISTING ............................................................................................. 2
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`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM .................................. 2
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIM ................................................ 4
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`V. CLAIM CONSTRUCTIONS ........................................................................... 4
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`A. Tandem Switch .............................................................................................. 4
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`VI. THE SUBSTITUTE CLAIM IS PATENTABLE ............................................ 8
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`B. Receiving a Request to Establish a Call ........................................................ 7
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`A. The Level of Ordinary Skill in the Art .......................................................... 8
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`B. State of the Art as of the Priority Date .......................................................... 8
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`SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM ..................... 12
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`VII.
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`VIII. DISTINCTIONS OVER THE ART ............................................................ 13
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`A. Scope of the Art and Deficiencies of the Art .............................................. 13
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`IX. THE SUBSTITUTE CLAIM IS NOT OBVIOUSNESS ............................... 21
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`ii
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`TABLE OF AUTHORITIES
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`
`Cases:
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`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) ........................................................................... 13
`
`
`Regulations:
`
`37 C.F.R. §42.121(a)(3) ............................................................................................ 2
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`iii
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`Paper No. 31
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`UPDATED LIST OF EXHIBITS
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`7,764,777
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`of U.S. Patent No.
`
`Declaration of Regis J. “Bud” Bates filed with Preliminary
`Response
`Ray Horak, Communications Systems & Networks, (2nd ed. 2000)
`Ray Horak, Webster’s New World Telecom Dictionary (2008)
`Ray Horak, Telecommunications and Data Communications
`(2007)
`Prosecution History
`(“’777ProsHist”)
`Harry Newton, Newton’s Telecom Dictionary, (23rd ed. 2007)
`Declaration of John P. Murphy in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Declaration of Hanna F. Madbak in Support of Unopposed Motion
`for Pro Hac Vice Admission
`Corrected Declaration of Hanna F. Madbak in Support of
`Unopposed Motion for Pro Hac Vice Admission
`U.S. Patent No. 6,574,328
`Opening Claim Construction Expert Declaration of Dr. Eric
`Burger filed by certain Defendants in the underlying district court
`litigation Case No. 3:15-cv-00742-TJC-MCR, Dkt No. 89-2, filed
`08/12/16.
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR2016-
`01259, -01261, -01262, and 01263
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR2016-
`01259, -01261, -01262, and 01263 (“La Porta Dep.”)
`Excerpts of Deposition Transcript of Mr. Willis, Mar. 1, 2017, for
`IPR2016-01254 and -01257. (“Willis Dep.”)
`Declaration of Regis J. “Bud” Bates in Support of Response
`(“BatesDec”)
`Excerpts of Petition filed in IPR2016-01261 (“-01261 Pet.”)
`Excerpts of Petition filed in IPR2016-01254 (“-01254 Pet.”)
`Excerpts of Petition filed in IPR2016-01260 (“-01260 Pet.”)
`Excerpts of Declaration of Dr. La Porta in support of the Petition,
`Ex. 1002 of IPR2016-01262 (“La Porta Dec. of IPR2016-01262”)
`Excerpts of Declaration of Mr. Willis in support of the Petition,
`Ex. 1002 of IPR2016-01254 (“Willis Dec. of IPR2016-01254”)
`iv
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`2001
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`2002
`2003
`2004
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`2005
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`2006
`2007
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`2008
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`2009
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`2010
`2011
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`2019
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`2020
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`2021
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`2022
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`2023
`2024
`2025
`2026
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`2027
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`Paper No. 31
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`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01258 (“Lavian Dec. of IPR2016-01258”)
`Excerpts of Deposition Transcript of Dr. Lavian, March 29, 2017,
`for IPR2016-01256, -01258, and -01260 (“Lavian Dep.”)
`Excerpts of Declaration of Dr. Lavian in support of the Petition,
`Ex. 1002 of IPR2016-01256 (“Lavian Dec. of IPR2016-01256”)
`Declaration of Regis J. “Bud” Bates in Support of Motion to
`Amend (“BatesDec”)
`Listing of Section 112 Written Description Support for the
`Proposed Substitute Claims
`Application No. 11/948,965, filed on November 20, 2007
`(annotated with line numbers)
`Application No. 10/426,279, filed on April 30, 2003 (annotated
`with line numbers)
`Application No. 09/565,565, filed on May 4, 2000 (annotated with
`line numbers)
`U.S. Patent No. 6,381,323 to Schwab, et al. (“Schwab”)
`U.S. Patent No. 6,463,145 to O’Neal et al. (“O’Neal”)
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 6,353,660 to Burger et al. (“Burger”)
`U.S. Patent No. 6,798,767 to Alexander et al. (“Alexander”)
`PCT Application No. WO 99/14924 to Shtivelman (“Shtivelman”)
`U.S. Patent No. 5,809,128 to McMullin (“McMullin”)
`U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`An Overview of Signaling System No. 7, Abdi R. Modarressi, and
`Ronald A. Skoog, April, 1992
`U.S. Patent No. 4,646,296 to Bartholet et al. (“Bartholet”)
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`U.S. Patent No. 6,744,759 to Sidhu et al. (“Sidhu”)
`U.S. Patent No. 6,041,325 to Shah et al. (“Shah”)
`U.S. Patent No. 5,802,160 to Kugell et al. (“Kugell”)
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
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`v
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`2028
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`2029
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`2030
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`2040
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`2041
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`2042
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`2043
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`2044
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`2046
`2047
`2048
`2049
`2050
`2051
`2052
`2053
`2054
`2055
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`2056
`2057
`2058
`2059
`2060
`2061
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`2062
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`2063
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`2064
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`2065
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`2066
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`Redline Comparison of the Proposed Substitute Claims and the
`Original Claims and Clean Versions of the Proposed Substitute
`Claims
`“Cheat Sheet” listing the various IPRs by docket number, along
`with the identity of the petitioner, claims at issue, and art at issue
`Excerpts of Declaration of Thomas La Porta in Support of Petition
`for Inter Partes Review of U.S. Patent No. 8,457,113, June 23,
`2016, submitted in support of IPR2016-01261
`Excerpts of Declaration of Dr. Tal Lavian in Support of Petition
`for Inter Partes Review of U.S. Patent No. 7,764,777, June 23,
`2016, submitted in support of IPR2016-01258
`Application No. 12/821,119, filed on June 22, 2010
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`I.
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`INTRODUCTION
`To the extent that original independent claim 46 (the “Original Claim”) of
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`U.S. Pat. No. 7,764,777 (“the ’777 Patent”) (Ex. 1001) is found unpatentable in this
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`proceeding, Patent Owner requests the Board to substitute the invalid Original Claim
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`with Proposed Substitute Claim 49. The Proposed Substitute Claim amends the
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`Original Claim by incorporating limitations that describe (i) the tandem access
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`controller (as described in the ’777 Patent) coupled to a tandem switch, and (ii) that
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`communications, including a call request to establish a call, between these two
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`devices occur without the communications passing through an intervening edge
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`switch. None of these claimed features are disclosed, taught, or rendered obvious
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`by the art known to Patent Owner, as explained below. BatesDec, ¶152.
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`
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`This IPR is but one of nine IPRs filed by three groups of petitioners involving
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`two other related patents (the “Related IPR Proceedings”). The patents at issue in
`
`these Proceedings share a common specification and the claims of these patents are
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`related in that they share common terms and are directed to similar inventions.
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`Furthermore, the art cited by the various Petitioners overlaps from one Related IPR
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`Proceedings to the next. Finally, other contingent motions to amend are also being
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`submitted in some of the other Related IPR Proceedings. As used herein,
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`“Petitioners” refers to all three groups of Petitioners. A “cheat sheet” listing the
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`various IPRs by docket number, along with the identity of the petitioner, claims at
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`issue, and art at issue, is provided as Ex. 2063.
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`II. CLAIM LISTING
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`A listing of Proposed Substitute Claim 49 is provided, as well as redlined
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`version showing the differences between the Proposed Substitute Claim and the
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`Original Claim. Ex. 2062.
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`III. SCOPE OF THE PROPOSED SUBSTITUTE CLAIM
`The Proposed Substitute Claim corresponds to the Original Claim, thereby
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`satisfying the rule that “only one substitute claim would be needed to replace each
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`challenged claim.” See 37 C.F.R. §42.121(a)(3).
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`
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`The Proposed Substitute Claim is narrower than the Original Claim.
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`Specifically, all of the language originally found in the Original Claim is found in
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`the Proposed Substitute Claim or a narrower term is found in the Proposed Substitute
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`Claim in place of a corresponding term in the Original Claim.
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`The first limitation added to the Proposed Substitute Claim is to change the
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`term “switching facility” to “tandem switch.” In the Institution Decision (Paper 19,
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`the “ID”), the Board construed the term “switching facility” as meaning “any switch
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`in the network.” ID at 8. The term “tandem switch” refers to a particular switch,
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`found in the PSTN, and thus is narrower.
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`The next limitation added was to change the term “controller” found in the
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`Original Claim to “tandem access controller.” The term “tandem access controller”
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`Paper No. 31
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`was not construed in the ID, but it is no broader than “controller.” ’777 Pat. 5:37-
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`39. The descriptive language of the term “tandem access controller” indicates that
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`it is a controller associated with a tandem switch, not an edge switch.
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`The next limitations added were “wherein the PSTN communication network
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`comprises edge switches connected to telephones on one side and PSTN tandem
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`switches on the other side, wherein the PSTN tandem switches include the particular
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`PSTN tandem switch” and “wherein the PSTN tandem switches are not the edge
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`switches, and wherein the PSTN tandem switches are not directly connected to any
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`of the telephones.” These limitations make explicit restrictions on the scope of the
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`claims that Patent Owner believes already exists by virtue of disclaimers made in
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`the ’777 Patent itself and the file history.
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`The last limitation added is “wherein communications, including the first
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`request to establish the incoming call, between the tandem access controller and the
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`particular PSTN tandem switch, occur without passing through any of the edge
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`switches.” This limitation eliminates the possibility that the tandem access
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`controller (“TAC”) is connected through an edge switch with the PSTN tandem
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`switch. This limitation, for example, takes outside the scope of the Proposed
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`Substitute Claim edge devices, such as PBXs, that connect to the PSTN (and tandem
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`switches) through edge switches.
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`IV. SUPPORT FOR THE SUBSTITUTE CLAIM
`Support for the Proposed Substitute Claim from the original disclosure of the
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`patent and from each earlier-filed disclosure for which benefit of the earlier filing
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`date is sought is provided in Exhibit 2041 (as allowed by the Board pursuant to
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`Patent Owner’s request). Petitioner’s expert also provides evidence about a POSA’s
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`understanding of “local” PSTN tandem switches. BatesDec, ¶35.
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`V. CLAIM CONSTRUCTIONS
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`Constructions are provided for the term “PSTN tandem switch” and the
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`language “request to establish a call” which are found in several claim terms (e.g.,
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`“a first request to establish a first incoming call”). These terms were not construed
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`by any of the Parties in their submissions to date, or by the Board in its Institution
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`Decisions.
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`A. Tandem Switch
`Patent Owner submits a “PSTN tandem switch” be construed as “as a switch
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`in the PSTN that interconnects other PSTN tandem switches and edge switches.”
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`This construction is consistent with the various Petitioners description of tandem
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`switches and the language of the Proposed Substitute Claim. If the Board, however,
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`believes that because of footnote one in the ’777 Patent’s prosecution history, that
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`“PSTN tandem switch” should be construed in a broader fashion (see e.g., -01262
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`Paper No. 31
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`IPR Institution Decision (Paper 19) at 12), there are specific claim limitations in the
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`Proposed Substitute Claim (discussed below) that effectively limit the scope of the
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`term “PSTN tandem switch” to approximately the construction being proposed by
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`Patent Owner.
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`As background, neither Patent Owner nor Petitioners have previously set forth
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`a formal construction of the term “tandem switch” in this or any of the other Related
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`POPRs. The Board declined to formally construe the term “tandem switch” when
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`considering claim 94 of the ’113 Patent. See -01261 Institution Decision (Paper 19)
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`at 12.
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`Nevertheless, Petitioners and Patent Owner have consistently described
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`tandem switches in a very similar manner. In all of the Related POPRs, Patent
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`Owner described tandem switches as being “connected to edge switches and other
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`tandem switches.” See, e.g., -01258 POPR at 7. Petitioner BHN states, “[t]he PSTN
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`consists of switches known as tandem switches or class 4 switches (switching
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`facilities in the claims) which serve to interconnect between different geographical
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`regions and edge switches or class 5 switches, which connect to end-user devices,
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`like telephones, within a local geographic area.” -01261 Pet. at 29 (emphasis added).
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`BHN provided no construction otherwise. Id. at p. 10. Petitioner Cisco states,
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`“[c]lass 3 switches are also known as tandem switches and generally provide long
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`Paper No. 31
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`
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`distance calling links by interconnecting between edge switches and other tandem
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`switches.” -01254 Pet. at 7 (emphasis added). Cisco provided no construction
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`otherwise. Id. at 14-15. Petitioner YMax states that “[w]hen a telephone call is
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`placed on the PSTN . . . the call is then typically routed to one or more tandem
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`switches (in sequence), until it reaches the edge switch that is directly connected to
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`the recipient’s phone, and finally to the recipient’s phone.” -01260 Pet. at 13
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`(emphasis added). YMax provided no formal construction of “tandem switch.” Id.
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`at 18-27.
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`Related to the construction of “PSTN tandem switch” are the negative
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`limitations found in the Proposed Substitute Claim. The Claim explicitly provides
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`that the “PSTN tandem switch” is not an edge switch and does not connect directly
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`to the telephones of subscribers. These limitations were added to address the
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`controversy surrounding the terms “switching facility”, “tandem switch”, and
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`footnote one found in the prosecution history of the ’777 Patent. See, e.g., -01261
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`Institution Decision at 7-12.
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`In light of the foregoing, Patent Owner’s proposed construction is consistent
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`with the intrinsic and extrinsic record, as well as all of the Parties’ descriptions of
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`“PSTN tandem switch.” But, a broader construction of “PSTN tandem switch” is
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`effectively limited by the specific claim requirements that prevent the claimed PSTN
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`Paper No. 31
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`tandem switch from being considered an edge switch or connecting directly to
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`telephones. For example, these negative limitations would eliminate a “hybrid
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`switch” from being considered a PSTN tandem switch since it connects directly to
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`telephones.
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`B. Receiving a Request to Establish a Call
`The term “call” was not previously construed by the Board or any of the
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`
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`Parties in this or any other of the Related IPRs.
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`Nevertheless, two of the Petitioners agree that a traditional telephone call
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`consists of two parts – signaling and media. For a typical person-to-person call,
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`signaling between PSTN switches sets up the call, then the voice connection is
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`established so that two people can speak to each other. See, e.g., -01261 Pet. at 12
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`(BHN) and -01254 Pet at (Cisco). Patent Owner characterizes this call setup as “the
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`exchange of control signaling that causes the establishment of a path over which
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`voice data can flow.” See, e.g., -01261 Patent Owner Preliminary Response (Paper
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`11) at 7.
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`Turning back to the construction of the phrase “a request to establish a call”,
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`the proper construction of this phrase is “signaling indicating a request to set up a
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`connection that provides for a two way voice communication.” In the context of “a
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`request to establish a call” this can only refer to signaling, which the Parties agree
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`Paper No. 31
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`must precede the establishment of two way voice communications. This
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`construction is also supported by the ’777 Patent, which gives an example of call
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`data associated with an “incoming call” as a “call request” or “SS7 data indicating
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`an incoming call.” ’777 Pat., Fig. 5, Box 1 and 5:57.
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`VI. THE SUBSTITUTE CLAIM IS PATENTABLE
`A. The Level of Ordinary Skill in the Art
`Patent Owner believes that a person of ordinary skill in the art with respect to
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`
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`the ’777 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
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`years of professional experience within the field of telecommunications or network
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`communications. BatesDec, ¶22. This is consistent with the positions taken by the
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`Petitioners in the Related IPRs. See, e.g., -01262 La Porta Dec. (Ex. 2064) at ¶28; -
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`01258 Lavian Dec. (Ex. 2065) at ¶19; -01257 Willis Dec. (Ex. 2027) at ¶21.
`
`B.
`State of the Art as of the Priority Date
`Related to the growth of the internet during the 1990’s was the growth of
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`
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`VoIP. VoIP would grow significantly after the turn of the century, and certain
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`businesses saw this potential back in the 1990s and began to innovate in this space.
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`One obvious issue with the growth of VoIP was how to integrate VoIP systems with
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`the already existing PSTN. BatesDec, ¶47.
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`Paper No. 31
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`Related to the development of VoIP were PBXs. As a bit of history, PBXs
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`(private branch exchanges) were private telephone switches used by businesses of
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`all sizes. PBXs allowed businesses to share a handful of voice lines, and provided
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`various calling features, such as voice mail, conference calling, call forwarding, and
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`call waiting. Since at least the mid-1980s, PBXs provided users with call features
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`such as call forwarding and conference calling. See, e.g., U.S. Pat. No. 4,646,296
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`(filed on July 9, 1984) (Ex. 2056) and BatesDec, ¶48.
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`There was a need for PBXs that could adapt intra-office VoIP calls (or VoIP
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`calls generally) to the PSTN, which was an analog system (at least at the local level),
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`and vice versa. This dynamic is at issue in Alexander, Archer, Burger, O’Neal,
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`Schwab, and Swartz. See e.g., Alexander (Ex. 2051), Background of the Invention,
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`1:14-33. BatesDec, ¶49.
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`In summary, during the 1990s, inventors were working on the problem of how
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`to better integrate digital and analog voice networks. These innovations, however,
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`were largely being implemented from outside the PSTN by companies other than the
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`Baby Bells (i.e., the original regional Bell operating companies that resulted as the
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`breakup of AT&T in 1984 - Ameritech, Bell Atlantic, BellSouth, NYNEX, Pacific
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`Telesis, Southwestern Bell, and US West), as opposed from inside the PSTN itself.
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`BatesDec, ¶50.
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`Generally speaking, the Baby Bells (as well as other regional phone
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`companies such as Cincinnati Bell) owned the equipment that made up the PSTN
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`and controlled access to the PSTN. These companies generally only allowed access
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`to the PSTN through edge switches. Edge switches served as “firewalls” to the rest
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`of the PSTN. As one of their functions, they serve to protect the switching fabric of
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`the PSTN from malfunctioning/malicious end user equipment such as PBXs. Thus,
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`consumers of PBXs only had access to the PSTN though the lines provided to them
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`by the local telecommunication companies through edge switches. These lines
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`generally consisted of analog phone lines (common for residences) and digital T1
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`connections (which provided up to 24 simultaneous voice paths, common for larger
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`businesses). These lines originated from edge switches. In sum, the only practical
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`interface into the PSTN (from the outside) was through central offices. BatesDec,
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`¶51.
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`A second development was taking place during the 1980s up until the time of
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`the invention as well. Unlike the VoIP/PBX development discussed above, the
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`implementation of features by the Baby Bells and others did not involve equipment
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`to be attached to the peripheral of the PSTN. The Baby Bells did not attempt to
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`utilize switching equipment similar to the claimed TAC to be attached to existing
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`switching equipment within the PSTN. Rather, the Baby Bells and others
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`Paper No. 31
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`
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`contemplated modifications to switching and signaling equipment, referred to as
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`intelligent networking. Id.
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`Chang is a representative example of this second development. Chang teaches
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`that switching equipment, such as edge switches and tandem switches, can be
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`modified to serve as Service Switching Points to initiate database queries to SCPs.
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`Chang (Ex. 2049), 9:13-17; Fig. 1, elements 11E and 11T. In these modified edge
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`and tandem switches, database queries are sent to an SCP that stored call control
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`information, and the SCP returns a response to the switch that the switch can utilize
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`to process the call. In the case of these switches, the edge and tandem switches have
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`been modified to contain enhanced functionality to send and receive the query and
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`response signaling with an SCP. BatesDec, ¶52.
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`The Baby Bells were incentivized to add call features such as call waiting and
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`call forwarding because the pricing of such features was not regulated like the cost
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`of providing actual telephone service and was extremely profitable. See, e.g., $200
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`Billion Broadband Scandal, Bruce Kushnick, 2006 (Ex. 2057) at 135 (“Some
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`services could now be ‘market priced.’ Ameritech could charge what customers
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`were willing to pay, even though there was no competition in 1994. In this bucket
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`would be ‘calling features’, such as Call Waiting, Call Forwarding, etc., that cost
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`about one penny to offer, but could sell for $5.00 per month per line.”). BatesDec,
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`Paper No. 31
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`
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`¶53.
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`In summary, a POSA in 2000 would have been familiar with PBXs and their
`
`ability to provide call features. Such PBXs were available for at least fifteen years
`
`prior to the filing date of the ’777 Patent. With respect to these PBXs, a POSA
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`would also have been aware of industry efforts to integrate these traditional PBXs
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`with the nascent VoIP systems. A POSA would have also been aware of the Baby
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`Bell’s 15 year effort to provide call features from inside the PSTN. A POSA would
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`have known that these features were being applied by modifying the software that
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`operates edge switches and tandem switches. As it relates to the Proposed Substitute
`
`Claim, a POSA would have been familiar with the various efforts in the VoIP space
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`to provide equipment for use by businesses to integrate VoIP with traditional voice
`
`systems. Also, a POSA would have been familiar with a different field of endeavor
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`– that of the Baby Bells’ efforts to upgrade the PSTN with an IN architecture to force
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`others to use their call features to drive additional, high-margin revenues. BatesDec,
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`¶54.
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`VII. SUMMARY OF THE PROPOSED SUBSTITUTE CLAIM
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`The primary goal of the newly added language to the Proposed Substitute
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`Claim is to make explicit in the Claim disclaimers of claim scope Patent Owner
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`believes result from disclaimers in the priority document and the prosecution history.
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`Paper No. 31
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`Specifically, most of the added language is to make clear that the TAC cannot be
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`connected to an edge switch. Instead, the TAC communicates with the tandem
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`switch without passing through an edge switch. As will be discussed below, this
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`concept is not disclosed, suggested, or rendered obvious in any known prior art.
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`Also, certain negative limitations where added to make clear that tandem
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`switches are different than edge switches, that tandem switches are not directly
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`connected to the telephones of subscribers, and that communications between the
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`tandem switch and tandem access controller do not pass through an edge switch.
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`With respect to these negative limitations, the Federal Circuit has approved of the
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`use of such limitations when drafting claims. Nike, Inc. v. Adidas AG, 812 F.3d
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`1326, 1348 (Fed. Cir. 2016).
`
`VIII. DISTINCTIONS OVER THE ART
`A.
`Scope of the Art and Deficiencies of the Art
`There are approximately 400 U.S. and non-U.S. patent documents cited in the
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`“References Cited” portion of the ’777 Patent and other patents that claim priority
`
`to the same provisional application cited to by the ’777 Patent. In addition, there are
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`approximately 20 “Other References” cited to in these patents. In the underlying
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`district court cases, approximately 44 different patent documents and other
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`publications were cited as potentially invalidating art. In the Related IPR
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`Paper No. 31
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`
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`Proceedings, Petitioners relied upon ten different references - Alexander, Archer
`
`(Ex. 2048), Burger (Ex. 2050), Chang, McMullin (Ex. 2053), O’Neal (Ex. 2047),
`
`Schwab (Ex. 2046), Shtivelman (Ex. 2052), Swartz (Ex. 2054), and the SS7 Paper
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`(Ex. 2055). See BatesDec, ¶¶65-114 (summarizing and distinguishing these
`
`references). The IDs in the various Related IPR Proceedings were based on all of
`
`these references except for Schwab. In the prosecution of the ’777 Patent, three
`
`references were substantively discussed: Schwab, Sidhu (Ex. 2058), Shah (Ex.
`
`2059), and Kugell (Ex. 2060).
`
`With respect to Sidhu and Shah, the examiner used the Sidhu and Shah
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`references as a basis to show it would have been obvious to allow a user to provision
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`a telephone service through the internet. See, e.g., ’777ProHist (Ex. 2005 in
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`IPR2016-1262) at 121. These references are not believed to be relevant to the
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`Proposed Substitute Claim beyond these teachings. Kugell was used by the
`
`examiner to reject certain dependent claims by allegedly disclosing a system that can
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`ring multiple phones at one time. See, e.g., ’777ProHist at 122. This reference is
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`not relevant to the Proposed Substitute Claim beyond this in that it is cumulative to
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`art that shows call control features being applied at an edge switch. Bates, ¶59. The
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`SS7 Paper discusses standard SS7 signaling that was known at the time of the
`14
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`invention and is not relevant to the Proposed Substitute Claim, other than discussing
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`Paper No. 31
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`
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`call requests. Bates, ¶60.
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`In the discussion below, Patent Owner will concentrate on the reference on
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`which the IDs in the Related IPR Proceeding were based (the “IPR Art”), which are
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`largely cumulative to the teaching of the prior art discussed in the ’777 Patent. Patent
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`Owner and Patent Owner’s expert are not aware of any prior art that is more relevant
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`and material to the Proposed Substitute Claim than the IPR Art. BatesDec, ¶62.
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`Special attention will be paid to Archer and Chang, as that specific combination is
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`at issue in five of the nine IPRs, is the art on which the ID is based, and at least one
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`of those references is at issue in seven of the nine IPRs. Further, Patent Owner
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`believes those references are representative of the two categories of all known art,
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`discussed below.
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`All of the known material prior art can be broken down into two categories.
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`The first category includes majority of the art that applies call features external to
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`the PSTN via an edge switch or edge device (the “EXT Art”), which includes
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`Alexander, Archer, Burger, McMullin, O’Neal, Schwab, Shtivelman, and Swartz.
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`Then, there is the IN Art, which includes Chang, that discloses the capability of
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`applying call features internal to the PSTN via an SCP.
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`Turning now to the EXT Art, these references do not disclose a controller
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`comparable to the TAC that connects to a tandem switch, such that communications,
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`Paper No. 31
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`
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`including a call request to establish a call, occur between the TAC and the tandem
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`switch without passing through an intermediary edge switch. Notably, none of the
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`EXT Art contains the term “tandem switch”, “class 4”, “transit switch” or other term
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`of art to refer to what the ’777 Patent refers to as a tandem switch. Bates Dec, ¶115.
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`There is simply no disclosure in these references of tandem switches, let alone
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`connecting a controller to one.
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`Rather, the majority of the EXT Art explicitly discloses that the purported
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`TAC is connected to a central office/edge switch in the PSTN, rather than a tandem
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`switch, where the edge switch is directly connected to telephones, modems,
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`gateways, PBXs, and other devices external to the PSTN. Bates Dec, ¶¶116-122,
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`125, 129-133. Some references (e.g., O’Neal and Archer) disclose that the purported
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`TAC resides outside the PSTN without illustrations as to where the purported TAC
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`connects. But a POSA (without knowledge of the teachings of the ’777 Patent)
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`would understand that the state of the art taught that most types of devices external
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`to the PSTN must receive or send call requests via the PSTN through an edge switch
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`first, not a tandem switch. Id.; Willis Dec. at ¶39; La Porta Dep. (Ex. 2020) at 82:7-
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`17.
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`With respect to the so-called hybrid switches that possess class 4 and class 5
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`functionality discussed by the Board in some of the IDs (see, e.g., -01254 IPR
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`Paper No. 31
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`
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`Institution Decision (Paper 15) at 12), hybrid switches are simply different than the
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`tandem switches discussed in the ’777 Patent. There, tandem switches are clearly
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`differentiated from edge switches. There is simply is no contemplation of any switch
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`that performs both functions in the ’777 Patent. Finally, to put to rest any debate
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`that a hybrid switch is within the scope of the Proposed Substitute Claim, a limitation
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`was added to the Proposed Substitute Claim that recites “wherein the PSTN tandem
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`switches are not the edge switches, wherein the PSTN tandem switches are not
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`directly connected to the telephones” To the extent that hybrid switches can be
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`considered tandem switches, these switches are excluded from the scope of the
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`Proposed Substitute Claim because a hybrid switch would connect directly to
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`telephones (as part of their class 5 functionality). Bates Dec, ¶124.
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`Looking now specifically at Archer, which Patent Owner believes to be
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`representative of the EXT Art, there can be almost no debate that what Petitioners
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`identify as relating to the TAC (server processor 128 in conjunction with Archer’s
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`converter 126, 132a) receives telephone lines directly from a central office.
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`BatesDec, ¶120. Archer states that “[o]nce only an analog system, the heart of most
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`telephone networks today is digital. In the Unit
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