Opposition to Patent Owner’s Contingent Motion to Amend
`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`IN THE 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.
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`Focal IP, LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
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`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
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`DM2\7928364.2
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`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`
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`IN THE 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
`
`_____________________
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
`
`
`
`
`
`
`
`
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`DM2\7928364.2
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`TABLE OF CONTENTS
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`Page
`I. INTRODUCTION ............................................................................................. 1
`II. SUMMARY OF THE UNPATENTABILITY GROUNDS ........................... 1
`III. STANDARDS FOR A MOTION TO AMEND .............................................. 2
`IV. SUMMARY OF SUBSTITUTE CLAIMS ...................................................... 2
`V. PATENT OWNER’S ARGUMENTS FOR PATENTABILITY OF
`SUBSTITUTE CLAIM 49 ....................................................................................... 3
`VI. ARCHER DISCLOSES THE ADDED FEATURE ....................................... 5
`VII. THE NEWLY CITED ART DISCLOSES THE ADDED FEATURE . 13
`A. Lewis Discloses the Added Feature ............................................................... 13
`B. LaPier Discloses the Added Feature .............................................................. 19
`VIII. PATENT OWNER HAS NOT ATTRIBUTED PATENTABILITY TO
`ANY OF THE OTHER NEWLY ADDED LIMITATIONS ............................. 24
`IX. CONCLUSION ................................................................................................ 25
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`DM2\7928364.2
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`i
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` Exhibit Number
`1001
`1002
`1003
`1004
`1006
`1007
`1010
`1057
`1058
`1059
`1060
`1061
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`1066
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`1067
`1068
`2019
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`2020
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`2040
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`2041
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`2057
`2061
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`2062
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`PETITIONERS’ OPPOSITION EXHIBIT LIST
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`Document
`U.S. Patent No. 7,764,777 (“the ’777 Patent”)
`Expert Declaration of Dr. Thomas F. La Porta
`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. 8,457,113 (“the ’113 Patent”)
`U.S. Patent No. 8,115,298 (“the ’298 Patent”)
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Opposition to Motion to Amend
`Claim Chart of Lewis Against Proposed Substitute Claim 49
`Claim Chart of LaPier Against Proposed Substitute Claim 49
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Expert Declaration of Regis “Bud” Bates in Support of Patent
`Owner’s Motion to Amend
`Section 112 Written Description Support for the Proposed
`Substitute Claim
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`Clean and Redlined Versions of the Proposed Substitute Claim
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`I.
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`INTRODUCTION
`Patent Owner filed a Contingent Motion to Amend (“Motion”) substituting
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`Claim 49 for Claim 46 of U.S. Pat. No. 7,747,777 (“the ’777 Patent”). Petitioners
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`hereby oppose this Motion because Patent Owner has not met its burden of
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`showing that substitute Claim 49 is patentable. Patent Owner has not made the
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`required showing that Claim 49 is patentable over the cited art, and cannot show
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`that Claim 49 is patentable over newly cited U.S. Patent No. 6,442,169 to Lewis
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`(“Lewis”) (EX1057) and U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
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`(EX1058). Accordingly, the Motion should be denied.
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`II.
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`SUMMARY OF THE UNPATENTABILITY GROUNDS
`The Board instituted the present trial on the following ground:
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`Claims 18, 21, 23, 25, 26, 28-31, 37, 38, 41, 45, and 46 of the ’777 Patent are
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`obvious over Archer (EX1003) in view of Chang (EX1004) and the knowledge and
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`skill of a person of ordinary skill in the art (“POSA”).
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`In its Response, Patent Owner has asserted that Archer does not disclose a
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`“controlling device” for several reasons:
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`(1) There is no disclosure that server processor 128 performs the step of
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`connecting the first and second calls nor how this step is performed; and
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`(2) There is no disclosure of a controlling device coupled to/in communication
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`with a switching facility because Archer’s gateways are edge devices not
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`switching facilities (and thus necessarily connected to a PSTN edge switch).
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`Likewise, in the present Motion, Patent Owner makes arguments that
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`overlap with its arguments in its Response regarding Archer with respect to
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`substitute Claim 49, asserting that Claim 49 is patentable over all cited art
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`(including Archer and Chang) because the cited art either discloses a tandem
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`access controller or “TAC” (controlling device) external to the PSTN and thus
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`necessarily connected to an edge switch of the PSTN, or (2) discloses a TAC
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`(controlling device) internal to the PSTN that does not receive call requests or
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`initiate call requests to establish a call.
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`Thus, Patent Owner’s arguments for patentability of Claim 46 and substitute
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`Claim 49 largely turn on the same issues.
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`III. STANDARDS FOR A MOTION TO AMEND
`Under 37 C.F.R. §42.121, the patent owner has the burden to show its
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`entitlement to the proposed claim amendments, including written description
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`support in the original disclosure and patentability over the prior art. Patent Owner
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`has failed to carry this burden.
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`IV. SUMMARY OF SUBSTITUTE CLAIMS
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`Patent Owner proposes to amend current Claim 46 by making the following
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`amendments:
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`1. Changing “a communication network” to “a PSTN communication
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`network.”
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`2. Changing the “switching facility” and “one of the switching facilities” to
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`“the particular PSTN tandem switch.”
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`3. Changing “controlling device” to “tandem access controller.”
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`4. Adding the limitations that the PSTN communication network includes
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`“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 includes
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`the particular PSTN tandem switch”, “wherein the PSTN tandem switches
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`are not the edge switches”, and “wherein the PSTN tandem switches are not
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`directly connected to any of the telephones.”
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`5. Adding the limitation “wherein communications, including the first request
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`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
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`edge switches.”
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`6. Changing the limitation “receiving a first call” to “receiving a first request to
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`establish an incoming call.” Mot. To Amend, Paper 31, 2-3.
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`V.
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`PATENT OWNER’S ARGUMENTS FOR PATENTABILITY OF
`SUBSTITUTE CLAIM 49
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`In support of its burden to establish that its substitute claims are patentable
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`over the prior art of record and prior art known to it, Patent Owner grouped the
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`prior art into two categories, external art (EXT Art) and internal art (INT Art).
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`Patent Owner asserts that EXT Art teaches systems “that appl[y] call features
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`external to the PSTN via an edge switch or edge device.” Mot. to Amend., 15.
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`Patent Owner asserts that INT Art teaches the “capability of applying call features
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`internal to the PSTN via an SCP.” Id., 15.
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`Patent Owner asserts that all of the art cited in the Petition is either EXT Art
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`or INT Art, and that “none of the Petitioners have come forward with a single
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`document that shows something akin to a TAC connected to a tandem switch that
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`does not communicate call requests through an edge switch.” Id., 22. Patent
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`Owner’s description of what third parties were developing, including the “Baby
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`Bells”, is wholly dependent upon the testimony of Patent Owner’s expert who does
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`not provide factual support for these assertions. Id., 22-25. Nevertheless, Patent
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`Owner relies on this unsupported expert testimony and focuses its arguments for
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`patentability on the following two features that Patent Owner and its expert assert
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`are not known or suggested in any known prior art:
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`1.
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`A tandem access controller (TAC) coupled to a tandem switch (the
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`“First Added Feature”); and
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`2.
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`The TAC communicates, including call requests to establish a call,
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`with the tandem switch without passing through an edge switch. (the “Second
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`Added Feature”) Mot. To Amend, 12-13; EX2040, ¶152.
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`Regarding the First Added Feature, Patent Owner does not expressly
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`construe the term “tandem access controller”. Mot. to Amend., 2-8. Rather, Patent
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`Owner’s addition of the Second Added Feature to Substitute Claim 49—that it is a
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`controller communicating with a PSTN tandem switch without an intervening edge
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`switch—is the focus of the Patent Owner’s arguments on patentability. Id., 12-13.
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`Thus, although its expert identifies them as distinctly added features (EX2040,
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`¶152), it appears that any distinction is one without a difference. Notwithstanding,
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`whether one or two features, they are present in the art already of record in this
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`Petition, as well as newly cited art discussed below. Specifically, Archer, which
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`serves as the basis for the instituted Ground includes these features. Likewise, the
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`newly cited art of Lewis and LaPier both disclose these features.
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`VI. ARCHER DISCLOSES THE FIRST AND SECOND ADDED
`FEATURES
`In the Petition, server processor 128 in conjunction with database 138 and
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`gateway 1261 coupled to a tandem switch in PSTN 118 (136) as described in
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`1 Patent Owner’s position that Archer doesn’t use the term “gateway” with respect
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`to component 126 is simply false. See, e.g., EX1003, 5:34-35 (“Converter 126 can
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`Archer was identified as the claimed “controlling device coupled to [“in
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`communication with”] a switching facility.” Pet., 48-49, 24-26; EX1066, ¶31.
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`These same components also correspond to the newly claimed “tandem access
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`controller (TAC) coupled to the particular PSTN tandem switch” that includes the
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`First and Second Added Features identified above. EX1066, ¶31.
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`A POSA would understand that Archer discloses the First and Second
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`Added Features as server processor 128 communicates with the tandem switch in
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`PSTN 118 (136) via gateway 126 and without passing through an edge switch.
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`EX1066, ¶32. As set forth below, a POSA would understand that Archer’s
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`gateway 126 is not an edge device or an edge switch and communicates on the
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`also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
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`gateway (i.e. converter 126) . . .”). Moreover, Patent Owner’s reliance on Archer’s
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`other nomenclature for the same component (“converter”) as indicating that
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`gateway 126 only converts signals between analog and digital formats is also false
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`as Archer explicitly discloses that gateway 126 may “convert” or “translate”
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`circuit-switched digital voice (PCM) into multiple encoding schemes and digital
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`packets suitable for packet networks (e.g. IP packets). See, e.g., id., 5:27-28; 5:59-
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`62; 6:7-9; 8:18-21; 9:14-15; 11:23-25; EX1066, ¶31, n.1.
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`PSTN using SS7 signaling and a digital voice protocol used by PSTN tandem
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`switches. EX1066, ¶¶32-38.
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`Specifically, Archer discloses that gateway 1262 passes information (e.g.
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`voice and signaling) through it, and sends and receives such information in digital
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`formats3 (e.g. PCM voice and IP voice packets). EX1003, 5:10-11 (“Circuit-
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`switched network 118 can be . . . a digital network”); 5:23-27 (“[T]he heart of most
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`telephone networks today is digital.”); 5:33-35; 5:42-46; 5:59-62 (“PSTN-to-IP
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`network gateway (i.e. converter 126) should be able to support the translation of
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`PCM to multiple encoding schemes to interwork with software from various
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`vendors.”); EX1066, ¶33.
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`2 Mr. Bates also testified that there is no such thing as an “edge switch” in IP
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`networks. EX1059, 110:9-13; 114:17-20; 178:21-24. Thus, gateway 126 (which
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`clearly has an IP address and is thus on an IP network) cannot be an edge switch.
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`EX1003, FIGS. 2, 6; 6:6-9; 6:51-53, 6:64-67, 9:10-14; EX1066, ¶33, n.2.
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`3 In its Motion to Amend, Patent Owner ignores the explicit disclosure in Archer
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`that the gateway receives digital voice (PCM) from the PSTN when it incorrectly
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`asserts that Archer discloses that gateway 126 only receives analog signals over
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`analog lines. Mot. to Amend., 17-18; EX2040, ¶¶84-86; EX1066, ¶¶33-35, n.3.
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` A POSA would understand that gateway 126 communicates both VoIP and
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`PSTN signaling (i.e. SS7) over PSTN 118 (136) and IP network 130 such as, for
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`example, when it receives VoIP call notification messages from server processor
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`128, and translates such messages into PSTN signaling to cause a called party
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`telephone (e.g. 120) to ring. EX1003, 9:7-19, 9:31-34, 11:20-25; EX1066, ¶34.
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`Additionally, for example, Mr. Bates testified that the digital format used by
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`Archer’s gateway 126 to communicate voice information with PSTN 118 (136)—
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`PCM—was typical for the “tandem level” in the PSTN, was used by PSTN tandem
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`switches (but not edge switches), and would “maintain the quality of the call.”
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`EX1059, 22:23-23:8; 26:7-15; EX2040, ¶44. As such, Mr. Bates acknowledged
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`that Archer’s gateway 126 would typically be connected to a PSTN tandem switch,
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`and not an edge switch, in PSTN 118 (136). Id.; see also EX2019, 267:19-268:4;
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`271:2-273:12; EX1066, ¶35.
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`Moreover, in his deposition, Mr. Bates defined an “edge device” as an “end
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`user device”, and testified that (1) like “edge switch”, there is no “edge device” in
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`an IP network such as the Web/Internet, and (2) a node interconnecting an IP
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`carrier network and the PSTN is not an “edge device.” EX1059, 54:14-55:15;
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`163:24-164:3; 172:2-9. Thus, contrary to Patent Owner’s arguments in its Motion
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`to Amend (Mot. to Amend, 17-18, EX2040, ¶¶84-86), Archer’s gateway 126 is not
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`an “edge device” because it: (1) communicates bi-directionally over PSTN 118
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`(136) using PCM, (2) communicates bi-directionally over IP network 130 using IP
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`packets, (3) has an IP address and is thus on an IP network 130 (where there are no
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`edge devices), and (4) is clearly not an end user device. EX1066, ¶37.
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`As illustrated in FIG. 2 of Archer (annotated below), Archer discloses a TAC
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`which includes gateway 126, server processor 128 and database 138. The TAC
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`communicates, including communication related to call requests, with the tandem
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`switch without passing through an edge switch. EX1066, ¶¶39-41. Specifically,
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`gateway 126 receives call requests in the form of SS7 signaling from a PSTN tandem
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`switch without passing through an edge switch. Id.
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`PSTN
`PSTN tandem
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`PCM
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`TAC
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`SS7
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`IP network
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` POSA would also understand that Archer discloses software executing on
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`server processor 128 communicates signaling with gateway 126 on IP network 130
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`and connects incoming and outgoing calls across IP network 130 and PSTN 118
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`(136) via gateway 126. EX1066, ¶¶42-52. Archer discloses software executing on
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`server processor 128 receiving call data from the call request received by gateway
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`126 which is associated with an incoming call via a circuit-switched network (118,
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`136), preferably the PSTN. EX1003, Fig. 2, 5:10-46, 8:27-34, 8:50-60, 9:62-64;
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`EX1066, ¶43. When a caller makes a first call to a called party using phone
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`equipment (114), the call request containing the call data from the incoming call, in
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`the form of the called party’s telephone number, is routed through PSTN 118 (136),
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`to gateway 126, which packages the call data into IP packets for transmission over
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`IP network 130 to server processor 128. EX1003, Figs. 2, 4, 5, 5:32-34, 5:59-63,
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`8:50-60; EX1006, cls. 134, 136 (call data includes the called party’s telephone
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`number); EX1066, ¶44. Server processor 128 receives the call packets from gateway
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`126 which contain subscriber information (e.g., the dialed telephone number) which
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`server processor 128 extracts and uses to query the database 138 for destination
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`addresses associated with the subscriber. EX1003, Figs. 2 (128), 4 (52, 54), 5, 2:45-
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`49, 6:33-38, 6:49-51, 6:57-62. 8:27-34, 8:50-60, 9:62-64, EX1066, ¶45.
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`Archer teaches the server processor 128 initiates a second call by creating and
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`multicasting IP call request packets addressed to the subscriber’s communication
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`devices based on the control criteria (device addresses and priorities) retrieved from
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`database 138. EX1003, Figs. 4 (54-66), 5, 7:3-13, 9:9-16, 6:57-59, 9:10-15; 11:1-
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`11; EX1066, ¶464 . Archer teaches that server processor 128 uses the call data to
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`initiate the second call because it uses the called telephone to search database 138 in
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`order to determine which destination addresses to use to generate the multicast call
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`packets. EX1003, 6:57-67, 8:61-65; EX1066, ¶47. For communications directed to
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`devices on PSTN 118 (136), server processor 128 generates packets with the IP
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`address of gateway 126 (132) which contain the telephone number of telephones
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`(120a, 120b). EX1003, 6:55-67; EX1066, ¶48. The gateway 126 then translates the
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`packets for transmission over PSTN 118 (136) and calls the telephone (120a, 120b).
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`EX1003, 7:3-15, 9:7-16. For communications addressed to communications devices
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`(134a) on IP network 130 server processor 128 generates packets with the IP address
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`of the IP communications devices (134a). EX1003, Figs. 2 (128, 132, 134), 4 (54,
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`62), 5 (108), 6:57-59, 6:64-7:4, 9:10-15, 11:15-17; EX1066, ¶49.
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`Archer discloses that “FIG. 4 is a flowchart of the software which will
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`4 Neither Patent Owner nor its expert attribute patentability to the call “blocking”
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`limitations recited in original Claim 46 or Substitute Claim 49. Rather, like the
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`’777 Patent Specification, both acknowledge that these limitations were well-
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`known. Mot. to Amend, 22; EX2040, ¶146; EX1001, 5:22-30, 6:44-51. As set
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`forth in the Petition, the instituted Ground discloses these “blocking” limitations.
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`Pet., 33-35, 38-40; EX1002, ¶¶180-190, 200-206; EX1066, ¶46, n.4.
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`execute on server processor 128” and Figure 4 expressly describes such software
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`executing the step of:
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`EX1066, ¶50; EX1003, 6:47-48, Figure 4 (68), 7:14–21. Mr. Bates testified that
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`the “connecting” step recited in the claims of the ’777 Patent is commensurate in
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`scope to the “establishing the voice communication . . . after the call is completed”
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`step recited in the claims of the ’113 Patent. EX1059, 250:23-251:17; EX1060,
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`331:9-332:20. Archer also discloses that software executing on server processor
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`128 performs this step after receiving signaling that the called party has answered
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`the second call (e.g. “response”, “pick-up notification”), which Mr. Bates
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`acknowledged is when the second call is completed. Id.; see also EX1003, Figure
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`4 (64), 6:30-32, 8:43-45, 9:31-36; EX1059, 250:23-251:17; EX1060, 331:17-
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`332:20; EX1066, ¶¶52-53.
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`Thus, in its Motion to Amend, Patent Owner fails to properly address the art
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`of record in the Petition, including Archer. Indeed, as set forth supra, Archer
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`discloses Patent Owner’s First and Second Added Features in Substitute Claim 49.
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`EX1066, ¶53. By failing to properly address this prior art of record, Patent Owner
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`has failed to meet its burden that Substitute Claim 49 is patentable.
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`VII. THE NEWLY CITED ART DISCLOSES THE FIRST AND SECOND
`ADDED FEATURES
`The Lewis (EX1057) and LaPier (EX1058) patents were filed by two of the
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`major industry players in converging networks (Level 3 Communications and
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`Cisco Systems, respectively) in the late 1990s. EX1066, ¶55, n.5. Patent Owner’s
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`arguments in its Motion to Amend hinge on its expert’s unsupported opinion that
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`no technology being developed by third parties disclosed or involved “something
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`akin to a TAC connected to a tandem switch that does not communicate call
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`requests through an edge switch.” Mot. to Amend., 22-25; EX2040, ¶¶145, 148-
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`151. However, this opinion is directly refuted by both patents which show the use
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`of a TAC connected to a PSTN tandem switch without first going through an edge
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`switch. EX1066, ¶¶54-56. The prior art discussed below clearly show that the
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`features that Patent Owner added in its contingent amendment and asserts provide
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`patentability to Substitute Claim 49 were undisputedly in the prior art—and in use
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`by major telecommunications companies—years before the May 2000 priority date
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`of the ’777 Patent. Id.
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`A. Lewis Discloses the First and Second Added Features
`Lewis is titled “System and Method for Bypassing Data From Egress
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`Facilities” and was filed November 20, 1998 and issued on August 27, 2002. It
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`qualifies as prior art under 102(e). Lewis was not cited by the examiner during
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`prosecution of the ’777 Patent. Lewis is directed to a telecommunications
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`architecture that routes a call from a calling party to a called party by bypassing the
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`edge switch connected to a called party in order to avoid the cost associated with
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`sending the call through an edge switch. EX1057, 7:6-27; 12:50-56; EX1066, ¶58.
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`In one embodiment, using an architecture that is virtually identical to the ’777
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`Patent, a call request from a calling party through the PSTN can be converted into
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`a protocol suitable for a data network to complete the call to the called party as a
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`VOIP called party. EX1057, FIGS. 1, 4, 5, 9A 12:50-56, 25:9-10, 25:35-44;
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`EX1066, ¶59.
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`As illustrated in FIG. 4 (annotated below), Lewis discloses a PSTN network
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`including edge switches EO 104 and tandem access switches 106 connected to a
`
`packet network (e.g. IP network) with an intelligent interconnection between the
`
`two networks called an open architecture switch 502, within open architecture
`
`PSTN
`PSTN tandem
`switch 106
`
`PSTN edge
`switch 104
`
`SS7
`
`PCM
`
`TAC 502
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`IP network
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`DM2\7928364.2
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`14
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`
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`platform 402, coupled to the PSTN through the tandem switch 106. EX1057,
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`FIGS. 4, 5, 9A, 12:50-56, 19:54-67, 25:9-10, 25:35-44; EX1066, ¶60. The edge
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`switches 104 are connected to telephones 102 on one side and PSTN tandem
`
`switches 106 on the other side, wherein the edge switches route calls from and to
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`subscribers within a local geographic area and the PSTN tandem switches route
`
`calls to the edge switches or the PSTN tandem switches local or in other
`
`geographic areas. EX1057, FIGS. 1, 4, 15:7-23; EX1066, ¶61. Tandem switch
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`106 is not directly connected to any telephones. Id.
`
`Open architecture switch 502 receives call requests in the form of SS7
`
`signaling and receives voice from tandem switch 106 and converts the voice and
`
`SS7 signaling to formats suitable for use on the packet network. EX1057, FIGS. 1,
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`PSTN
`
`PCM
`
`SS7
`
`TAC 502
`
`IP network
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`DM2\7928364.2
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`15
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`
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`4, 5, 9A, 10A, 27:2-14, 27:19-38, 27:59-61, 29:1-8; EX1066, ¶62. As further
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`illustrated above, in annotated FIG. 5 from Lewis, open architecture switch 502,
`
`including gateway 508, tandem Network Access Server (NAS) Bays 504 and
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`modem NAS bays 514 are the claimed TAC that includes the First and Second
`
`Added Features identified above. EX1057, FIGS. 4, 5, 9A; EX1066, ¶63.
`
`Lewis discloses the First and Second Added Features as a TAC (gateway
`
`508 and tandem NAS Bays 504) that communicates SS7 signaling and voice
`
`directly with the tandem switch AT 106 without passing communications through
`
`an edge switch EO 104. EX1057, FIGS. 4, 5, 9A, 27:2-15, 27:59-61, 29:1-8;
`
`EX1066, ¶64.
`
`Lewis further discloses that gateway 508 receives a first call request
`
`associated with an incoming call and tandem NAS bay 504 and modem NAS bay
`
`514 process a second call associated with a second call request and connects the
`
`incoming call with the second call across both a packet network and a network of
`
`tandems after the second call is answered. Id.; EX1057, FIG. 10A-10C, 12:50-56,
`
`29:44-51, 30:4-37, 30:48-50, 26:9-14; EX1066, ¶65. Specifically, gateway 508
`
`receives signaling information to set up data calls and voice calls from a calling
`
`party to a called party. EX1057, FIGS. 4, 5, 9A, 10A-10C, 27:3-5, 27:50-52,
`
`27:59-62, 28:15-22, 28:26-30, 29:1-11, 29:44-51; EX1066, ¶66. Gateway 508
`
`converts the signaling information into an open architecture protocol format for
`
`DM2\7928364.2
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`16
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`
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`
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`delivery in a packet network. Id.; EX1057, 25:35-39, 27:3-14, 30:13-19; EX1066,
`
`¶66. Lewis references a VOIP call as voice traffic over a data network or data
`
`connection. EX1057, 12:50-56; 26:9-13; EX1066, ¶67. In a call from the PSTN to
`
`the packet network as a VOIP call, the PSTN call is terminated at modem NAS bay
`
`514 for conversion to a VOIP format:
`
`Definitions: packetized voice or voice-- One example of packetized
`voice is voice over a backbone over internet protocol (VOIP). Voice
`over packet refers to the carrying of telephony or voice traffic over a
`data network, e.g. voice over frame, voice over ATM, voice over
`Internet Protocol (IP), over virtual private networks (VPNs), voice
`over a backbone, etc. EX1057, 12:50-56.
`
`In step 1002 of FIG. 10A, the technique receives signaling
`information to set up data calls and voice calls from a calling party to
`a called party. In step 1004, the technique converts the signaling
`information into an open architecture protocol format. In step 1006 [of
`FIG. 10A], data calls . . . are received at open architecture switch 502 .
`. . In step 1012, the method terminates data calls to modems in a
`modem NAS bay, e.g., in modem NAS 514, for conversion to a
`packetized data format for transmission to network nodes. Id., 27:3-
`14; EX1066, ¶67.
`
`After the incoming call is made to modem NAS bay 514, a second call is
`
`placed to the end user. EX1057, FIG. 10C, 20:44-53; EX1066, ¶68. Gateway 508
`
`looks up the called party number in internal or external database 516 to determine
`
`how to route the call and informs modem NAS bay 514. EX1057, 29:44-51;
`17
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`DM2\7928364.2
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`
`
`
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`EX1066, ¶68. NAS bay 514 converts the PSTN call to data packets in a VOIP
`
`protocol using the routing information provided by gateway 508. EX1057, FIG.
`
`10C, 24:5-19, 25:35-39, 30:13-19; EX1066, ¶68. Gateway 508 then sends an
`
`address complete (ACM) message out over SS7 network and edge switch plays a
`
`ringing signal for calling party 102. EX1057, 30:24-35; EX1066, ¶69. After the
`
`called party answers the second call, NAS bay 514 connects the incoming call to
`
`the second call across both the packet network and the PSTN. EX1057, FIGS.
`
`10C, 18A, 18B, 30:36-43, 30:48-50, 26:9-14; EX1066, ¶69.
`
`As shown in FIG. 4 (annotated above), tandem switch 106 is different than
`
`edge switch 104 and tandem switch 106 is not directly connected to the telephones
`
`of subscribers. EX1066, ¶70. Thus, Lewis describes the features that Patent Owner
`
`seeks to add in Substitute Claim 49. Specifically, Lewis is an example of
`
`intelligent call processing system that was connected into the PSTN through a
`
`tandem switch, without the need to access the PSTN only through an edge switch.
`
`EX1066, ¶¶71-72. Patent Owner’s expert is unaware of the work like Lewis that
`
`happened at a major telecom company (Level 3 Communications) prior to May
`
`2000 and even acknowledged that, in preparing his declarations, he did not actively
`
`research the state of the art with respect to converging IP and PSTN networks.
`
`EX1059, 192:11-14.
`
`DM2\7928364.2
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`18
`
`
`
`
`
`Therefore, Patent Owner has failed to meets its burden for showing the
`
`patentability of Substitute Claim 49 over Lewis. Although the burden is on Patent
`
`Owner to show the patentability of Substitute Claim 49, attached as Exhibit 1067 is
`
`a claim chart identifying where Lewis discloses each of the claimed limitations.
`
`B.
`LaPier Discloses the First and Second Added Features
`LaPier is titled “Method and System for Interconnecting a Circuit-Switched
`
`Telephony Network and a Packet-Switched Data Network, And Applications
`
`Therefor” and was filed December 28, 1998 and issued on December 25, 2001. It
`
`qualifies as prior art under 102(e). LaPier was not cited by the examiner during
`
`prosecution of the ’777 Patent. LaPier is directed to interconnecting voice calls
`
`between the PSTN and a packet switched network. EX1058, FIGS. 1B (annotated
`
`below), 1C, 4:58-5:4, 8:61-9:7, 35:13-16, 35:54-62; EX1066, ¶¶75-77. LaPier
`
`discloses an intelligent interconnection architecture between the PSTN and the
`
`packet-switched network including a Signaling Access Server (SAS) and the
`
`Network Access Server (NAS). Id. The SAS converts the signaling into the
`
`proper protocol suitable for the PSTN and the packet-switched network to ensure
`
`that the voice call is routed properly. Id.; EX1058, 4:67-5:2, 6:4-9, 6:49-54, 9:18-
`
`22, 9:26-29, 38:13-25, 38:51-62; EX1066, ¶77. The SAS and NAS interconnect
`
`the voice calls between the PSTN and the packet-switched network. EX1058, 5:8-
`
`16, 5:28-35, 6:10-27, 6:55-62, 8:61-9:7, 38:26-40, 38:51-62; EX1066, ¶77.
`
`DM2\7928364.2
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`19
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`
`
`
`
`TAC
`
`SS7
`
`PSTN
`
`PSTN tandem
`switch 114
`PSTN edge
`switch 116
`
`SS7
`
`PCM
`
`IP network
`
`As illustrated in annotated FIG. 1B (above), LaPier discloses a PSTN
`
`network including edge switches 116 and tandem access switches 114 connected to
`
`a packet network 122 with an intelligent interconnection between the two networks
`
`as a TAC (Network Access Server (NAS) 118 and Signaling Access Server (SAS)
`
`112) coupled to the tandem switch 114. EX1058, FIGS. 1B-1C, 5:28-35, 6:60-62
`
`(“The Network Access Servers 118 are coupled by voice links V to one or more
`
`switches such as . . . tandem switch 114.”); EX1066, ¶78. The edge switches 116
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`DM2\7928364.2
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`20
`
`
`
`
`
`are connected to telephones 105 on one side and PSTN tandem switches 114 on the
`
`other side, wherein the edge switches route calls from and to subscribers within a
`
`local geographic area and the PSTN tandem switches route calls to the edge
`
`switches or the PSTN tandem switches local or in other geographic areas. Id.,
`
`EX1058, 7:1-3; EX1066, ¶79. Tandem switch 114 is not directly connected to any
`
`telephones (e.g. 105, 107). Id.; EX1066, ¶79.
`
`Signaling Access Server (SAS) 112 receives call requests in the form of SS7
`
`signaling and NAS 118a receives voice from tandem switch 106 and converts the
`
`voice and SS7 signaling to formats suitable for use on the packet network 122.
`
`EX1058, 4:67-5:4, 5:8-16, 5:28-43, 6:49-54, 6:60-62, 35:54-62, 38:13-40, 38:51-
`
`62; EX1066, ¶80. NAS 118a and SAS 112 are the claimed TAC that include the
`
`newly added features identified above. EX1066, ¶81. LaPier discloses the First
`
`and Second Added Features as SAS 112 and NAS 118a (collectively the TAC)
`
`communicate directly with the tandem switch 114 without passing through an edge
`
`switch 116. EX1066, ¶81.
`
`LaPier also discloses that SAS 112 receives a first call request associated
`
`with an incoming call, SAS 112 and NAS 118a process a second call associated
`
`with a second call request, and NAS 118a connects the incoming call with the
`
`second call across both a packet network and a network of tandems after the
`
`second call is answered. EX1066, ¶82. Specifically, SAS 112 receives signaling
`
`DM2\7928364.2
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`21
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`
`
`
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`information to set up voice calls from a calling party to a called party. EX1058,
`
`FIGS. 1B (SS7 signaling from tandem switch 114 to STP 106 to SAS 112), 7A
`
`(704), 5:39-43; 16:57-60; 38:13-18 (“[SS7 trunk
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