Petition for Inter Partes Review of
`U.S. Patent No. 7,764,777 B2
`
`
`
`
`
`
`
`
`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.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 7,764,777 B2
`Filing Date: Nov. 30, 2007
`Issue Date: July 27, 2010
`
`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 7,764,777
`Inter Partes Review No. 1002 Expert Declaration of Dr. Thomas La Porta
`
` [________]
`
`
`
`
`DM2\6864940.7
`
`

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`TABLE OF CONTENTS
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`PAGE
`
`
`I. 
`INTRODUCTION ........................................................................................ 1 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) .................... 2 
`A. 
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 2 
`B. 
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 4 
`C. 
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 5 
`D. 
`Service Information under 37 C.F.R. § 42.8(b)(4) ............................... 5 
`III.  PAYMENT OF FEES - 37 C.F.R. § 42.103 ................................................ 6 
`IV.  GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............... 6 
`V.  RELIEF REQUESTED (37 C.F.R. §§ 42.22(A) AND 42.104(B)) ............ 6 
`VI.  REASONS FOR REQUESTED RELIEF (37 C.F.R. §§ 42.22 AND
`42.104(B)) ....................................................................................................... 6 
`A. 
`Summary of the ‘777 Patent ................................................................. 7 
`B. 
`Prosecution History .............................................................................. 9 
`C. 
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ........................ 10 
`D.  A POSA’s Level of Skill in the Art ................................................... 11 
`E. 
`State of the Art ................................................................................... 11 
`1. 
`Circuit-Switched and Packet-Switched Networks ................... 11 
`2. 
`PSTN Architecture ................................................................... 12 
`3. 
`Call Components – Signaling and Media ................................ 13 
`4. 
`PSTN Call Features and Intelligent Networks ......................... 13 
`5. 
`VOIP and Internet Telephony .................................................. 14 
`VII.  IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R. §
`42.104(B) ...................................................................................................... 14 
`A. 
`Challenged Claims and Statutory Grounds for Challenges ............... 14 
`VIII.  HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE
`(37 C.F.R. § 42.104(B)) ............................................................................... 16 
`B. 
`Summary of Asserted References ...................................................... 16 
`1. 
`Archer ....................................................................................... 16 
`2. 
`Chang ....................................................................................... 16 
`
`i
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`

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`
`
`C. 
`D. 
`
`E. 
`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`4. 
`5. 
`6. 
`7. 
`
`Combinability of Archer and Chang .................................................. 17 
`Claims 18, 21, 23, 25, 26, 28, 29, 30, 31, 37, 38 41, 45 and 46
`are Obvious Under Grounds 1 and 2 .................................................. 18 
`1. 
`Claims 18[pre], 37[pre], 45[pre], 46[pre]– preamble .............. 18 
`2. 
`Claims 18[a], 37[a], 45[a], 46[a]– receiving a first call .......... 24 
`3. 
`Claims 18[b], 37[b], 45[b] and 46[b] – identifying
`control criteria .......................................................................... 26 
`Claims 18[c] and 37[c]– initiating a second call ..................... 35 
`Claim 45[c] – routing the first call to voicemail ...................... 37 
`Claim 46[c] – blocking the first call ........................................ 38 
`Claims 18[d] and 37[d] – connecting first and second
`calls .......................................................................................... 40 
`Claim 21 - distributed architecture .......................................... 41 
`8. 
`Claim 23 - packet switching .................................................... 42 
`9. 
`10.  Claims 25 and 41 – call facilitated via a VoIP connection ...... 42 
`11.  Claim 26 - the first and/or second call routed within the
`communication network ........................................................... 44 
`12.  Claim 31 – the first and second calls routed within the
`communication network ........................................................... 45 
`13.  Claim 28 - within a local service area ...................................... 45 
`14.  Claim 29 - tandem access controller ........................................ 48 
`15.  Claim 30 – TAC coupled to, and operating in conjunction
`with a switching facility ........................................................... 51 
`16.  Claim 38 - web interface .......................................................... 52 
`Claims 45 and 46 are Obvious Under Ground 3 ................................ 54 
`1. 
`Claims 45 and 46 [pre] - preamble .......................................... 54 
`2. 
`Claims 45[a] and 46[a] – receiving a first call......................... 59 
`3. 
`Claims 45[b] and 46[b] – identifying control criteria .............. 60 
`4. 
`Claim 45[c] – routing the first call to voicemail ...................... 62 
`
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`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`CONTINUED
`
`CONTINUED
`
`PAGE
`
`PAGE
`
`
`
`5. 
`Claim 46[c] – blocking the first call ........................................ 63 
`Claim 46[c] — blocking the first call ...................................... ..63
`5.
`IX.  CONCLUSION ........................................................................................... 64 
`
`
`IX. CONCLUSION ......................................................................................... ..64
`
`iii
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`iii
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`

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`
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`Exhibit Number
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
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`1025
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`1026
`1027
`1028
`1029
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`1030
`1031
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`1032
`
`List of Exhibits Cited in this Petition
`
`Document
`U.S. Patent No. 7,764,777 (“the ’777 patent”)
`Expert Declaration of Dr. Thomas La Porta (“TLP”)
`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. 6,445,694 to Swartz (“Swartz”)
`U.S. Patent No. 8,457,113 (“the ’113 patent”)
`U.S. Patent No. 8,115,298 (“the ’298 patent”)
`File history of U.S. Patent No. 8,115,298
`File history of U.S. Patent No. 8,457,113
`File history of U.S. Patent No. 7,764,777
`WO 97/23899 to Harris (“Harris”)
`U.S. Patent No. 5,802,160 to Kugell
`U.S. Patent No. 5,206,901 to Harlow
`U.S. Patent No. 6,353,660 to Burger
`WO 98/54913 to Arkko
`U.S. Patent No. 5,434,852 to La Porta
`U.S. Patent No. 6,463,145 to O’Neal
`ITU-T Recommendation H.323 (“H.323”) (02/98)
`ITU-T Recommendation H.225 (“H.225”) (09/99)
`ITU-T Recommendation Q.1211 (“Q.1211”) (03/93)
`ITU-T Recommendation Q.1215 (“Q.1215”) (10/95)
`ITU-T Recommendation Q.1221 (“Q.1221”) (09/97)
`ITU-T Recommendation H.245 (“H.245”) (09/98)
`Request for Comments - SIP: Session Initiation Protocol
`(March 1999) (“SIP”)
`Tech Report CUCS-002-99 Implementing Intelligent
`Network Services with the Session Initiation Protocol
`Low, The Internet Telephony Red Herring (1996)
`Modarressi, An Overview of Signaling System No. 7 (1992)
`Crumlish, The ABCs of the Internet
`Helmstetter, Increasing Hits and Selling More on your Web
`Site (1997)
`Comer, Internetworking with TCP/IP 2d, Vol. I (1991)
`Judson, netmarketing – How Your Business Can Profit from
`the Online Revolution (1996)
`Newton’s Telecom Dictionary 15th ed. (Aug. 1999)
`
`iv
`
`

`
`Random House Webster’s Computer & Internet Dictionary
`3rd ed. (1999)
`Request for Comments – The TLS Protocol (Jan. 1999)
`Request for Comments – Hypertext Transfer Protocol –
`HTTP/1.1 (June 1999)
`ITU-T Recommendation Q.931 (“Q.931”) (05/98)
`Engineering and Operations in the Bell System (1984)
`Thӧrner, Intelligent Networks (1994)
`U.S. Patent No. 5,473,679 (“La Porta”)
`U.S. Patent No. 5,509,010 (“La Porta”)
`U.S. Patent No. 5,563,939 (“La Porta”)
`U.S. Patent No. 5,659,544 (“La Porta”)
`U.S. Patent No.5,943,408 (“Chen”)
`U.S. Patent No. 6,081,715 (“La Porta”)
`U.S. Patent No. 6,298,039 (“Buskens”)
`SEC Form S-1, Net2Phone, Inc. (May 1999)
`Terplan, The Telecommunications Handbook (1999)
`Lakshmi-Ratan, The Lucent Technologies Softswitch—
`Realizing the Promise of Convergence (April-June 1999)
`Tanenbaum, Computer Networks 3rd ed. (1996)
`IBM PCjr The easy one for everyone (1983)
`PacketCable™ 1.0 Architecture Framework Technical
`Report (1999)
`Table of applications and patents in the ’777 patent’s family
`Curriculum vitae (CV) of Dr. Thomas F. La Porta
`
`
`
`v
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`
`
`
`
`1033
`
`1034
`1035
`
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`1048
`
`1049
`1050
`1051
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`1052
`1053
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`I.
`
`INTRODUCTION
`Petitioners request inter partes review of claims 18, 21, 23, 25-26, 28-31,
`
`37, 38, 41, 45 and 46 (“Challenged Claims”) of U.S. Patent No. 7,764,777
`
`(EX1001) (“’777 patent”), assigned to Focal IP, LLC. Petitioners respectfully
`
`submit that the Challenged Claims are unpatentable as obvious over the prior art
`
`references discussed herein. This Petition demonstrates by a preponderance of the
`
`evidence that there is a reasonable likelihood that Petitioners will prevail with
`
`respect to at least one of these claims. Accordingly, it is respectfully requested that
`
`the Board institute an inter partes review of the Challenged Claims pursuant to 37
`
`C.F.R. § 42.108.
`
`The ‘777 patent relates to implementing user-selected call features in
`
`telephone communications, such as call forwarding or call blocking. The
`
`Challenged Claims disclose methods to allow users to set call features using a web
`
`based interface. During prosecution of the ‘777 patent, Applicants distinguished
`
`over prior art references that disclosed implementing call features using a web-
`
`enabled interface in a subscriber’s local telephone office, rather than at a central
`
`location in the telephone network. EX1010, 84-88.
`
`Years prior to the ‘777 patent’s earliest filing date, web-based systems that
`
`allowed subscribers to set call features outside of the subscriber’s local edge switch
`
`1
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
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`were known. EX1003, EX1004, EX1005. These same systems also implemented
`
`the control of these user-set call features outside of the user’s local edge switch. Id.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Petitioner Bright House Networks, LLC identifies Bright House Networks,
`
`LLC and Charter Communications, Inc. as real parties-in-interest. Additionally,
`
`Bright House Networks, out of an abundance of caution based on certain decisions
`
`from the PTAB describing the test for real parties-in-interest, identifies Cisco
`
`Systems, Inc., Broadsoft, Inc., Siemens Communications, Inc. (Petitioner Bright
`
`House is aware of a number of related entities, including predecessor, and
`
`successor entities: Nokia Solutions and Networks US, LLC, Nokia Siemens
`
`Networks US, LLC, Nokia Corp., Nokia Solutions and Networks Holdings USA,
`
`NS Networks, LLC, Nokia Networks Inc., Nokia USA Inc., Nokia, Inc., Alcatel-
`
`Lucent USA Inc., Alcatel-Lucent Holdings Inc., Alcatel USA Holdings Corp.), and
`
`Sonus Networks, Inc. as potential real parties-in-interest to Petitioner Bright House
`
`Networks, LLC. However, none of these companies have participated in any way
`
`in the preparation of, the funding of, or the evaluation of the present Petition; nor
`
`have any of these companies attempted to exercise control over the related
`
`litigation nor the present Petition nor contributed funding to the present Petition. It
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`should also be noted that none of these companies have agreed to be listed as a real
`
`party-in-interest for this Petition.
`
`Petitioners WideOpenWest Finance, LLC (“WOW”) and Knology of
`
`Florida, Inc. (“KOF”) identify WideOpenWest Finance, LLC, Knology of Florida,
`
`Inc., and Metaswitch Networks Ltd. as real parties-in-interest. Additionally,
`
`WOW and KOF, out of an abundance of caution based on certain decisions from
`
`the PTAB describing the test for real-parties-in-interest, identify WOW’s parent
`
`company Racecar Holdings, LLC and majority equity holders Avista Capital
`
`Partners and Crestview Partners, and KOF’s parent companies Knology, Inc. and
`
`Kite Parent Corp., as potential real parties-in-interest to WOW and KOF.
`
`However, none of these companies have participated in any way in the preparation
`
`of, the funding of, or the evaluation of the present Petition; nor have any of these
`
`companies attempted to exercise control over the related litigation nor the present
`
`Petition nor contributed funding to the present Petition. It should also be noted that
`
`none of these companies have agreed to be listed as a real party-in-interest for this
`
`Petition.
`
`Petitioner Birch Communications, Inc. identifies Birch Communications,
`
`Inc. and Birch Communications Holdings, Inc. as real parties-in-interest.
`
`Additionally, Birch Communications, Inc., out of an abundance of caution based
`
`on certain decisions from the PTAB describing the test for real parties-in-interest,
`
`3
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`identifies Broadsoft, Inc., Sonus Networks, Inc., Metaswitch Networks Ltd., Acme
`
`Packet, Inc. (Petitioner Birch Communications is aware of successor Oracle Corp.
`
`through acquisition), Holcombe T. Green, Jr., and R. Kirby Godsey as potential
`
`real parties-in-interest to Birch Communications, Inc. However, none of these
`
`companies have participated in any way in the preparation of, the funding of, or the
`
`evaluation of the present Petition; nor have any of these companies attempted to
`
`exercise control over the related litigation nor the present Petition nor contributed
`
`funding to the present Petition. It should also be noted that none of these
`
`companies have agreed to be listed as a real party-in-interest for this Petition..
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`IPR2016-1257
`
`IPR2016-1252
`
`IPR2016-1259
`
`(Patent Asset Licensing LLC v.) Opposing Party
`Case
`3:15-cv-00742 (M.D. Fla.) Bright House Networks, LLC
`3:15-cv-00744 (M.D. Fla.) YMAX Corp.
`3:15-cv-00747 (M.D. Fla.) T3 Communications, Inc.
`3:15-cv-00743 (M.D. Fla.) WideOpenWest Finance, LLC et al.
`3:15-cv-00746 (M.D. Fla.) Birch Communications, Inc.
`IPR2016-1254
`IPR Petition of related U.S. 8,457,113 patent by
`Cisco Systems, Inc.
`IPR Petition of related U.S. 8,457,113 by Cisco
`Systems, Inc
`IPR Petition of related U.S. 8,155,298 patent by
`Petitioners
`IPR Petition of related U.S. 8,155,298 patent by
`Petitioners
`IPR Petition of related U.S. 8,457,113 patent by
`Petitioners
`Also related is the prosecution of pending U.S. App. No. 14/737,243, filed
`
`IPR2016-01261
`
`June 11, 2015 (see EX1052).
`
`4
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel:
`Patrick McPherson (Reg. No. 46,255)
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
`PDMcPherson@duanemorris.com
`
`
`Back-up Counsel:
`Christopher Tyson (Reg. No. 63,850)
`Duane Morris LLP
`505 9th St. NW, Ste 1000
`Washington DC 20004
`Tel: 202-776-7851
`Fax: 202-776-7801
`CJTyson@duanemorris.com
`
`Wayne O. Stacy (Reg. No. 45,125)
`Cooley LLP
`380 Interlocken Crescent, Ste. 900
`Broomfield, CO 80021
`Tel: 720-566-4125
`Fax: 720-566-4099
`wstacy@cooley.com
`zBrightHousePatentAsset@cooley.com
`
`Britton F. Davis (pro hac vice to be
`filed)
`Cooley LLP
`380 Interlocken Crescent, Ste. 900
`Broomfield, CO 80021
`Tel: 720-566-4125
`Fax: 720-566-4099
`bdavis@cooley.com
`
`Kyle Lynn Elliott (Reg. No. 39,485)
`Spencer Fane LLP
`1000 Walnut, Suite 1400
`Kansas City, MO 64106
`Tel: 816-292-8150
`Fax: 816-474-3216
`sfbbaction@spencerfane.com
`Service Information under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Please direct all correspondence to lead and back-up counsel at the above
`
`5
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`addresses. Petitioners consent to electronic service at the email addresses above.
`
`III. Payment of Fees - 37 C.F.R. § 42.103
`This Petition requests inter partes review of 14 claims of the ’777 patent and
`
`is accompanied by a request fee payment of $23,000. 37 C.F.R. §42.15. This
`
`petition meets the fee requirements. 35 U.S.C. §312(a)(1). Payment is authorized
`
`for any additional fees to be charged to Deposit Account 04-1679.
`
`IV. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Petitioners certify the ‘777 patent is eligible for inter partes review and that
`
`each Petitioner is not barred or estopped from requesting inter partes review of the
`
`Challenged Claims on the grounds identified within this Petition. This Petition is
`
`filed pursuant to 37 C.F.R. § 42.106(a).
`
`V. RELIEF REQUESTED (37 C.F.R. §§ 42.22(A) AND 42.104(B))
`Petitioners request institution of an inter partes review pursuant to 37 C.F.R.
`
`§ 42.108 and cancellation of the Challenged Claims under the following grounds:
`
`Basis for Challenge
`
`Obvious under § 103(a) by Archer.
`
`1
`
`2
`
`Ground ‘777 Patent Claims
`18, 21, 23, 25, 26,
`28, 29, 30, 31, 37,
`38, 41, 45 and 46
`18, 21, 23, 25, 26,
`Obvious under § 103(a) by Archer in view of
`28, 29, 30, 31, 37,
`Chang.
`38, 41, 45 and 46
`3
`45 and 46
`Obvious under § 103(a) by Chang.
`VI. REASONS FOR REQUESTED RELIEF (37 C.F.R. §§ 42.22 AND 42.104(B))
`As explained in §§ VI-VIII of this Petition and in the attached Declaration of
`
`6
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`Petitioners’ Expert, Dr. Thomas La Porta (“La Porta”) (EX1002, “TLP”), the
`
`methods claimed in the Challenged Claims are obvious over the prior art.
`
`Specifically, this Petition and La Porta explain where each element is found in the
`
`prior art and why each claim would have been obvious to a person of ordinary skill
`
`in the art (“POSA”) at the time of the invention. See §§ I and VI-VIII. This
`
`Petition and La Porta also describe additional prior art references to provide a
`
`background as of the earliest possible filing date of the ‘777 Patent, explanation as
`
`to why a POSA would combine the teachings of the cited references, and support
`
`for why a POSA would have a reasonable expectation of success in such
`
`combinations.
`
`Summary of the ‘777 Patent
`
`A.
`The ‘777 patent is a division of application no. 10/426,279, filed on April
`
`30, 2003, which itself is a continuation-in-part of application no. 09/565,565, filed
`
`May 4, 2000, the ‘777 patent’s earliest possible filing date. 1
`
`The ‘777 patent relates generally to allowing telephone service subscribers
`
`1 The priority date for the Challenged Claims is not put in issue by the references
`
`relied upon in this Petition, and is therefore assumed to be May 4, 2000, for
`
`purposes of this proceeding only. TLP, ¶ 35. However, Patent Owner has alleged
`
`it may be entitled to a priority date as early as June 1, 1999. The invalidity analysis
`
`and opinions presented in this Petition are the same under either date. Id.
`
`7
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
`
`to select call features using the Internet and for providing connections between the
`
`PSTN and VoIP networks. EX1001, 1:18-21; see §V.E.1; TLP, ¶ 91. The ‘777
`
`patent acknowledges that well-known prior art systems allowed telephone service
`
`subscribers to add, modify, and/or control, telephony features using the Internet.
`
`EX1001,1:29-36, 1:55-58, 1:66-2:11, 2:21-22, 2:46-48, 3:37-38, 4:44-51, 6:32-33;
`
`TLP, ¶ 91.. Call features that the ‘777 patent acknowledges were well known
`
`include “conditional call blocking, call forwarding, call altering, time-of-day
`
`conditions, day-of-week conditions, follow-me, caller recognition/password, caller
`
`ID, call screening/retrieval from voice mail, speed dialing, interactive voice
`
`response, and speech recognition.” EX1001, 55:22-30, see also 1:66-2:4, 2:9-10,
`
`2:37-39, 6:48-51; TLP, ¶ 91. It also acknowledges that emerging VoIP products
`
`“provide better user interfaces and control.” EX1001, 2:46-48; TLP, ¶ 91.
`
`The ‘777 patent states that problems with these prior art systems related to
`
`either the location of where the call features were applied—in the terminating
`
`central office edge switches of telephone service providers or through subscriber
`
`edge devices—or the type of providers that offered the services—web-based toll
`
`systems. Id., 1:37-39, 1:58-62, 2:4-11, 2:12-17, 2:18-25, 2:23-30, 2:40-46, 3:32-
`
`36; TLP, ¶ 91.
`
`The ‘777 patent’s solution was to provide web-based call feature selection
`
`and implementation of such selected call features, through a controller connected
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
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`to a tandem switch rather than an edge switch,. EX1001, 1:63-65, 3:29-34; 3:42-
`
`43, 4:32-46, 5:1-22; TLP, ¶ 93. The ‘777 patent discloses that its controller and
`
`system uses known technologies and conventional computer and telephony
`
`equipment. EX1001, :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, 5:22-30, 5:33, 5:57, 6:32-33, 6:44-52; TLP, ¶ 94.
`
`However, under their broadest reasonable interpretation (“BRI”), none of the
`
`independent Challenged Claims include the asserted solution of providing web-
`
`based call feature selection, and implementation of such selected call features,
`
`through a controller connected to a tandem switch. For example, under their BRI,
`
`independent Challenged Claims 1 and 37 do not recite call features. Nevertheless,
`
`as set out in §§ V.E, VI, VII, and VIII below, the concept of providing subscribers
`
`web-based call feature selection via controllers connected to tandem switches was
`
`well known in the art more than a year before the earliest priority date of the ‘777
`
`patent. Supra §§ V.E, VI-VIII; TLP, ¶¶ 61-69.
`
`Prosecution History
`
`B.
`During prosecution of the application leading to the ‘777 Patent (EX.1010),
`
`the Applicant distinguished over prior art rejections by amending the claims to
`
`include “switching facilities”, which were “any point in the switching fabric of
`
`converging networks, also referred to in industry as a signal transfer point (STP),
`
`signal control point (SCP) . . . gateway, access tandem, class 4 switch . . . trunk
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`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
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`gateway, hybrid switch, etc.” EX.1010, 87 n.1. . The Applicant also amended the
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`claims to specify that the “controller,” or “controlling device,” or “web-enabled
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`processing system,” was “coupled to” or “in communication with” such a
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`“switching facility”, rather than an “edge switch.” Id., 75, 80, 84, 86-87, 93-94.
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`The Applicant argued that its claimed switching facility architecture was an
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`improvement over the edge-switch connected prior art, because its switching
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`facility architecture could apply call features anywhere in the PSTN, while the
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`prior art edge switch architecture could only apply call features to a local
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`geographic area. Id..
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`In response to the Applicant’s amendments and arguments, a Notice of
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`Allowance was mailed and the ‘777 patent issued on July 27, 2010. Id., 33, 51.
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`However, under their BRI, none of the independent Challenged Claims are limited
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`to the implementation of call features in a tandem switch and independent
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`Challenged Claims 18 and 37 do not even recite call features. However, as set
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`forth below, it was well-known, and standard practice, to implement subscriber-
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`selected call features using intelligent servers located within, or coupled to a
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`centralized “switching facility” in the PSTN. TLP, ¶¶ 44-49, 61-69.
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`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`Claim terms construed during inter partes review are given their broadest
`
`reasonable interpretation (BRI). 37 C.F.R. §42.100(b). Claim terms that are not
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`construed are to be given their plain and ordinary meaning to a POSA at the time
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`of the claimed invention when read in light of the specification and file history.
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`Petitioners believe the terms in the challenged claims are readily understood by a
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`POSA in light of the specification and file history and have applied them in
`
`accordance with their plain and ordinary meaning. Petitioners provide additional
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`explanation of a POSA’s understanding where relevant.
`
`D. A POSA’s Level of Skill in the Art
`A POSA is a hypothetical person of ordinary creativity presumed to be
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`aware of all pertinent prior art, and thinking along conventional wisdom. With
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`respect to the ‘777 Patent, a POSA in the May 2000 timeframe would have been an
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`engineer or computer scientist with at least a bachelor’s degree or equivalent
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`experience in electrical engineering, or a related field, and at least three years of
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`industry experience in the fields of analog and digital communications, inclusive of
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`exposure to telecommunications standards as applied in circuit-switched and
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`packet-switched networks. TLP, ¶¶ 28.
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`State of the Art
`
`E.
`As of the late 1990s and early 2000, the state of the art pertinent to the ‘777
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`patent included web-based provisioning of user-selected call features across circuit
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`and packet-switched networks. TLP, ¶¶ 61-69, 76.
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`1.
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`Circuit-Switched and Packet-Switched Networks
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`Circuit-switched networks are traditional networks for carrying voice data in
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`the form of telephone calls and operate to transfer information using dedicated
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`paths or circuits. TLP ¶50; EX1049, 58-63; EX1030, 15. A common circuit-
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`switched network is the Public Switched Telephone Network (PSTN). TLP ¶¶ 53;
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`EX1030, 15.
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`Packet-switched networks do not use dedicated paths for the transmission of
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`information. TLP ¶¶ 51-52; EX1030, 15; EX1037, 146-49. In packet-switched
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`networks, information is broken into pieces, known as packets, which are routed
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`through the network. Id.; EX1049, 58-63. A common packet-switched network is
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`the Internet. TLP ¶¶51; EX1049, 70-96..
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`PSTN Architecture
`
`2.
`In the mid-1990s and 2000, voice-based telephone calls were traditionally
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`provided over the PSTN. TLP ¶53; EX1037, 81-92, 95-102. The PSTN has existed
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`since the 1970s and comprises a global network of circuit switches arranged in a
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`geographical hierarchy, where tandem switches serve to interconnect geographical
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`regions and edge switches connect between tandem switches and end-user devices,
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`like telephones, within a local geographic area. TLP ¶53; EX1037, 64-69, 106-13,
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`119-22, 137-38, Fig. 4-4, 111; EX1001, 1:42-51.
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`In the traditional Bell telephone system of the 1980s, edge switches were
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`operated by local telephone service providers. TLP ¶54; EX1037, 59-62, 90-92,
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`97-100, 106-13. Calls where the calling party and called party were attached to
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`different edge switches in different geographic areas required routing to tandem
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`switches for connection to other edge switches. TLP ¶55; EX1037, 64, 106-13.
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`Call Components – Signaling and Media
`
`3.
`Traditional telephone calls consisted of two distinct parts—signaling and
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`media. TLP ¶56; EX1037, 131-36, Fig. 8-1, 133. The signaling portion of
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`telephone calls was used for call setup and feature selection, and the media portion
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`consisted of the actual voice traffic. Id.; TLP ¶¶56-57; EX1051, 9-12, 22-25. Once
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`a telephone was answered, the call accept signal was used to finalize the path, or
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`circuit, over which the voice traffic (i.e. media) of the call traveled. TLP ¶57;
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`EX1037, 95-102, Fig. 3-8, 101, 131-35; EX1027, 9-10. Signaling protocols, such
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`as Signaling System 7 (SS7), were used in parallel to notify the switches of a
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`completed call. TLP ¶58–59; EX1027, 1
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`PSTN Call Features and Intelligent Networks
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`4.
`In the late 1960s–early 1970s, AT&T developed a suite of call features,
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`implemented by the local service provider in the edge switch, which users could
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`select by dialing codes from their telephones. TLP ¶61; EX1038, 13, 66-67, 75;
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`EX1037, 60-61, 114.
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`By the early 1990s, as part of an effort to streamline the deployment of
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`additional call features and network capacity, the Intelligent Network (IN) concept
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`was developed and standardized. TLP ¶62; EX1038, 89-90. The IN took many of
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`the functions that had traditionally been located in terminating central offices or
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`edge switches, including these call features, and moved them into a centralized
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`processor that was often connected to a tandem switch in the PSTN. TLP ¶¶63–64;
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`EX1038, Figs. 2.5, 3.3, 30-31, 34-36, 46-48, 58-59, 90-92; EX1020. .
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`VOIP and Internet Telephony
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`5.
`In the 1990s, voice data for real-time communication began being carried
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`over the Internet as packet data using the Internet Protocol (IP). TLP ¶70; EX1026,
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`3-5; EX1018; EX1024. This became known colloquially as VoIP or voice over
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`Internet Protocol. By the late 1990s, the PSTN and VoIP networks were
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`interconnected , calls could be connected across both networks, and the benefits of
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`implementing IN-type services in mixed-network architectures were commonly
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`recognized. TLP ¶¶47-48, 70-71; EX1026, 3-5; EX1016, 1:16-3:10; EX1018;
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`EX1025; EX1018; EX1024.
`
`VII. IDENTIFICATION OF CHALLENGES UNDER 37 C.F.R. § 42.104(B)
`A. Challenged Claims and Statutory Grounds for Challenges
`Petitioners’ Grounds for the Challenged Claims are set forth in detail below
`
`and summarized as follows:
`
`Ground Claims
`18, 21, 23, 25, 26, 28, 29, 30,
`1
`31, 37, 38, 41, 45, and 46
`
`Basis
`103
`
`Archer
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`References
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`Petition for Inter Partes Review of U.S. Patent No. 7,764,777 B2
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`Ground Claims
`18, 21, 23, 25, 26, 28, 29, 30,
`2
`31, 37, 38, 41, 45, and 46
`3
`45 and 46
`
`Basis
`103
`103
`
`References
`Archer, Chang
`Chang
`
`U.S. Patent No. 6,683,870 (“Archer,” EX1003) was filed June 25, 1998 and
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`issued January 27, 2004. EX1003, 1. Archer depends through divisionals to
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`application no. 08/798,350, filed February 10, 1997. Id. Archer issued from an
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`application filed prior to the ’777 patent and is available as prior art under at least
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`35 U.S.C. § 102(e).
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`U.S. Patent No. 5,958,016, (“Chang,” EX1004) was filed July 13, 1997, and
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`issued September 28, 1999. EX1004, 1. Chang issued from an application filed
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`prior to the ’777 patent and is available as prior art under at least 35 U.S.C. §
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`102(e). Id.
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`Archer was not cited, applied by, or disclosed to, the Examiner during
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`prosecution of the ‘777 patent. Chang was identified by the Applicant in
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`information disclosure statements (IDS) submitted during prosecution of the ‘777
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`Patent. The Examiner did not apply Chang, or cite to Chang, nor did the Examiner
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`consider the combination of the teachings of Chang with Archer.
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`Petitioners request that the Board institute on all three grounds, but if the
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`Board finds any ground redundant, Petitioners request the Board institute on
`
`ground 2 for all of the Challenged Claims.
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`VIII. HOW THE CHALLENGED CLAIMS ARE UNPATENTABLE (37 C.F.R. §
`42.104(B))
`B.
`
`Summary of Asserted References
`1.
`Archer is directed to telephone services involving both circuit-switched
`
`Archer
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`networks (118, 136), like the PSTN, and VOIP-capable packet networks (130), like
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`the Internet. EX1003, Fig. 2, 2:26-51; TLP ¶ 101. Archer discloses systems and
`
`methods that allow users to set call features for routing calls over circuit-switched
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`and packet-switched networks, including call forwarding and find-me-follow-me
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`services. EX1003, 2:26-51, 3:45-62, 4:3-16, 6:31-39; TLP ¶ 102. Ar