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 B2
`________________
`
`
`
`
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01262
`
`
`________________
`
`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 B2
`________________
`
`
`
`
`
`DECLARATION OF REGIS J. “BUD” BATES IN SUPPORT OF PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 1
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`TABLE OF CONTENTS
`
`
`I.
`
`QUALIFICATIONS ........................................................................................ 2
`
`II.
`
`LEGAL UNDERSTANDING ......................................................................... 4
`
`A. ANTICIPATION ................................................................................... 4
`
`B.
`
`OBVIOUSNESS ................................................................................... 5
`
`III.
`
`SUBSTITUTE CLAIM 49 IS PATENTABLE ............................................... 8
`
`IV. THE SUBSTITUTE CLAIM IS PATENTABLE OVER ARCHER .............. 8
`
`V.
`
`THE SUBSTITUTE CLAIM IS PATENTABLE OVER LEWIS ................ 12
`
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LAPIER .............. 15
`
`VII. THE SUBSTITUTE CLAIM IS PATENTABLE AND NOT OBVIOUS ... 16
`
`
`
`
`ii
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 2
`Bates Declaration
`IPR2016-01262
`
`
`
`I, Regis J. “Bud” Bates, declare as follows:
`1. My name is Regis J. “Bud” Bates, and I have been retained as an
`expert witness for Inter Partes Review of IPR2016-01262.
`2.
`This report contains statements of my opinions formed to date and the
`bases and reasons for those opinions. I may offer additional opinions based on
`further review of materials in this case, including opinions and/or testimony of other
`expert witnesses.
`3.
`I understand that this Declaration is being submitted along with Patent
`Owner’s Reply in Support of its Motion to Amend.
`4.
`Capitalized terms found in this Declaration that are not defined herein have
`the meaning given them in Patent Owner’s Reply in Support of Patent Owner’s
`Contingent Motion to Amend Claim 46 of U.S. Patent No. 7,764,777.
`5.
`In preparing this Declaration, I have reviewed the Petitions, the
`declarations that accompany the Petitions, the Institution Decision, Patent Owner’s
`Response to the Petitions, Petitioners’ Replies in Support of the Petitions, the
`Motions to Amend, Petitioner’s Oppositions to the Motions to Amend, and the
`exhibits that have been submitted in this IPR proceeding as well as the Related IPR
`Proceedings.
`6.
`This Declaration is a statement of my opinions on issues related to the
`validity of the Proposed Substitute Claim and the other issues raised in the Reply in
`Support of the Contingent Motion to Amend.
`7.
`I am of the opinion that the Proposed Substitute Claim is patentable over
`the IPR Art, as well as all other art about which I am aware.
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 3
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`I.
`
`QUALIFICATIONS
`8.
`This section summarizes my career history, education, publications, and
`other relevant qualifications.
`9.
`I have been involved in and with the telecommunications industry for 50
`years and have seen the development and growth of the various technologies,
`infrastructure, legal, regulatory, and technical services.
`10. Notably, I am the author of 20 books which outline the use of Voice and
`Data technologies used throughout the industry. As author of these books, I am
`situated to opine upon the state of the Telephone Networks, as well as the
`conclusions that both parties in this proceeding draw therefrom.
`11.
`I am the founder and president of TC International Consulting, Inc.
`(TCIC), based in Heber, Arizona. I have held this position since the inception of the
`company in October 1989. TCIC is a full service consulting and training firm
`specializing in communications and computer convergence.
`12. My role is to assist our client companies with the analysis of options,
`selection of vendors or products to meet their strategic goals, and training for
`technologies including voice, telephone systems, data networks, video, Internet,
`wireless, wireless local area networks (LAN), voice over Internet Protocol (VoIP)
`systems and services, fiber optics, and infrastructure. We have been responsible for
`selecting and implementing over 100 private branch exchange (PBX) systems for
`our client companies. TCIC develops and conducts training for corporate users,
`equipment manufacturers, and Telephone and Internet carriers.
`
`
`
`2
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 4
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`13. From September 1986 to October 1989, I was the chief information officer
`at Pepper, Hamilton, and Scheetz in Philadelphia, PA. My responsibilities included
`the complete automation of the law firm’s multiple offices around the country.
`14. From September 1979 to September 1986, I was the telecommunications
`manager at Air Products and Chemicals, Inc. My responsibilities were to design,
`select, analyze and implement voice and data communications projects at U.S. and
`international sites.
`15. From April 1977 to September 1979, I was the senior telecommunications
`manager for manufacturing and international sites at Data General Corporation in
`Westboro, MA. I was responsible for selecting telecommunications equipment for
`sites across the world, selecting services (voice, data and fax traffic) from common
`carriers, and selecting appropriate means and protocols to use these goods and
`services.
`16. From September 1974 to April 1977, I was the manager of administrative
`services at a retail chain in Canton, MA called Hills Department Stores. There, I
`was responsible for communications matters including voice, data, fax, telex, and
`teletype.
`17. From April 1972 to September 1974, I worked as the telecommunications
`and facilities manager at Damon Corporation, a conglomerate that included medical-
`biological development, veterinary products, clinical labs, security manufacturing,
`and hobby craft. My responsibilities included voice and data communications for a
`variety of locations across the country.
`
`
`
`3
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 5
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`18. From September 1966 to April 1972, I was a captain in the U.S. Army
`Signal Corps. My assignments took me to many locations, including a deployment
`in Vietnam, where I worked in mobile and fixed-site communication environments
`using radio-based VHF and troposcatter systems.
`19.
`In addition to these formal roles, I have consulted for and provided training
`courses to over 20 major organizations, including Cisco, Motorola Solutions, Nortel
`Networks, the University of California at Berkeley, and Fidelity Investments, as well
`as the U.S. Army, Electronic proving Grounds, Central Intelligence Agency, Federal
`Bureau of Investigation, and National Security Agency.
`20.
`I received a Bachelor of Sciences degree in Business Management in 1979
`from Stonehill College in Easton, MA with additional work towards my Masters of
`Business Administration from Lehigh University in Bethlehem, PA and St. Joseph’s
`College in Philadelphia, PA.
`21.
`I completed all the coursework but not the thesis for an MBA.
`
`II. LEGAL UNDERSTANDING
`22. Although I am not an attorney and do not intend to testify about legal
`issues, my opinions are also informed by my understanding of the relevant law. I
`understand that a patent claim can be found invalid in an inter partes review if the
`Patent Office concludes that it is more likely than not that the claim is invalid.
`
`A. ANTICIPATION
`23.
`I have read 35 U.S.C. §§ 102 (a)-(g) and understand the requirements to
`prove “anticipation” of a patented invention under these statutory provisions. I have
`
`
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`4
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 6
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`been advised that if each and every element or step of a claim is disclosed within the
`“four corners” of a single prior art reference, that claim is said to be anticipated by
`that prior art reference and is invalid under 35 U.S.C. § 102.
`24.
`I understand that anticipation requires that a single reference disclose all
`the elements, as arranged in the claim. I further understand that the prior art
`reference must clearly and unequivocally disclose the claimed invention or direct
`those skilled in the art to the claimed invention without any need for picking,
`choosing, and combining various disclosures not directly related to each other by the
`teachings of the cited reference.
`25.
`I also have been advised that a prior art reference can disclose a claim
`feature because the feature is expressly described, or because the feature is inherent
`in the disclosure. I understand that something is inherent in a prior art reference if
`the missing descriptive matter must be necessarily present, and it would be so
`recognized by one of ordinary skill in the art. I also understand that inherency cannot
`be established by probabilities or possibilities, and that the mere fact that something
`may result from a given set of circumstances is not sufficient to show inherency.
`
`B. OBVIOUSNESS
`26.
`I also understand the legal standards that apply to invalidity for
`obviousness under 35 U.S.C. § 103. I understand that a patent claim may be invalid
`under 35 U.S.C. § 103 if the differences between the claimed subject matter and the
`prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which the
`subject matter pertains. I understand that obviousness is a question of law and that
`5
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 7
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`the following factors must be evaluated to determine whether a party challenging a
`patent claim’s validity has met its burden of proof that the claimed invention is
`obvious: (1) the scope and content of the prior art; (2) the differences between the
`claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective
`indicia of non-obviousness.
`27.
`I understand that to reach a proper determination under 35 U.S.C. § 103,
`one must step backward in time and into the shoes worn by the hypothetical “person
`of ordinary skill in the art” (“POSA”) when the invention was unknown and just
`before it was made. In view of all factual information, one must then make a
`determination whether the claimed invention “as a whole” would have been obvious
`at that time to that person of ordinary skill in the art. Knowledge of the applicants’
`disclosure must be put aside in reaching this determination, yet kept in mind in order
`to determine the differences between the claimed subject matter as a whole and the
`content of the prior art.
`28. Because obviousness is determined from the perspective of a person of
`ordinary skill in the art at the time of the invention, I understand that to consider any
`distortion caused by hindsight bias, to guard against slipping into the use of
`
`hindsight, to be cautious of opinions that rely upon after‐the-fact reasoning, and to
`
`avoid the temptation to read into the prior art the teachings of the invention at issue.
`The determination of obviousness is not whether a person could, with full knowledge
`of the patented device, reproduce it from prior art or known principles. The question
`is whether it would have been obvious, without knowledge of the patentee’s
`achievement, to produce the same thing that the patentee produced. This judgment
`6
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 8
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`other devices and change them in light of the now‐known template of the patented
`
`must be made without the benefit of hindsight. It is improper to take concepts from
`
`device, without some direction that would render it obvious to do so.
`29.
`I understand that a claim is not proven obvious merely by demonstrating
`that each of the claim elements was independently known in the prior art. I
`understand that most, if not all, inventions rely on building blocks long since
`uncovered and claimed discoveries, and, almost of necessity, will likely be
`combinations of elements that were already known. A party challenging validity
`must show that a person of ordinary skill in the art would have had a reason to
`combine the teachings of the prior art to achieve the claimed invention and would
`have had a reasonable expectation of success in doing so.
`30.
`I also understand that an inference that a claimed combination would not
`have been obvious is especially strong where the prior art’s teachings undermine the
`very reason being proffered as to why a person of ordinary skill would have
`combined the known elements. A reference may be said to “teach away” when a
`person of ordinary skill, upon reading the reference, would be discouraged from
`following the path set out in the reference, or would be led in a direction divergent
`from the path that was taken by the applicant. Where a proposed modification or
`combination for the prior art would change the principle of operation of the prior art
`being modified or render the prior art unsatisfactory for its intended purpose then
`the teachings of the references are not sufficient to render the claims at issue obvious.
`31.
`I understand that a party challenging the claims of a patent must present
`evidence sufficient to establish some articulated, rational reason to select and
`7
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 9
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`combine the teachings of the prior art to produce the claimed invention with a
`reasonable expectation of success, which is sometimes referred to as a prima facie
`conclusion, or case, of obviousness.
`
`III. SUBSTITUTE CLAIM 49 IS PATENTABLE
`32.
`It is my opinion that Substitute Claim 49 is patentable over each of the
`references identified in Petitioner’s response. Notably, Petitioner failed to map
`numerous limitations of the Substitute Claim to each of the references, but rather
`focused on certain features without any context as to how it would read on the
`claimed invention as a whole. As explained below, it is my opinion each of the
`references fails to teach, suggest, or disclose several limitations of the Substitute
`Claim. Indeed, Petitioner failed to set forth any reasons supporting an obviousness
`argument. A POSA would not modify any of these references with a predictable
`result to reach the solution claimed in the Substitute Claim, and Petitioner does not
`explain how or why any of these references could be modified with a predictable
`result.
`
`IV. THE SUBSTITUTE CLAIM IS PATENTABLE OVER ARCHER
`33.
`In my opinion, Archer fails to teach, suggest, or disclose numerous
`limitations of the Substitute Claim. For example, Archer fails to disclose that
`“communications, including the first request to establish the incoming call, between
`the tandem access controller and the particular PSTN tandem switch, occur without
`passing through any of the edge switches,” as recited in the Substitute Claim. Archer
`does not use the term “tandem,” “class 4,” or any other term that refers to the claimed
`
`
`
`8
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 10
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`PSTN tandem switch. Mot. at 16. Rather, Archer teaches that data to and from the
`purported TAC and the PSTN tandem switch must first pass through an edge switch
`of the PSTN. Mot. at 16-18.
`34. Petitioner’s position that converter 126 receives digital signals in a PCM
`format directly from a PSTN tandem switch is wrong. As an initial matter,
`Petitioner’s use of the phrase “gateway 126” throughout its response and expert
`declaration is misleading. Archer consistently uses the terminology “converter 126”
`(at least 7 times). Archer never uses the terminology “gateway 126.” Although
`Archer states that “converter 126 can also be referred to as a gateway, a digitizer or
`an encoder,” there can be no legitimate dispute that “converter 126” is an edge device
`that receives analog voice signals from an edge switch of the PSTN where the
`converter then converts the analog signals to a digital format.
`35.
`In Fig. 2, telephone 114 is connected to circuit switched network 118,
`which may be the PSTN. Archer at 4:66-5:9. Archer explicitly notes that, while the
`core of the PSTN is digital, the lines connecting homes and business to COs are
`still predominantly analog. Id. at 5:25-32 (emphasis added). These analog lines are
`what connect Archer’s circuit switched network 118 to converter 126. Id. at Fig. 2.
`36. Figure 3 and its related disclosure remove any doubt that converter 126
`receives analog voice signals and converts them to a digital format. As shown in
`Fig. 3, converter 126 receives signals from PSTN 118. Archer at Fig. 3, 5:47-58.
`Converter 126 is comprised of modem bank 70, control circuitry 72, and router 74.
`Archer’s inclusion of modem bank 70 in the converter is particularly telling. Archer
`describes that modem 70 “translates the signals into digital signals which can be
`9
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 11
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`handled by router 74.” Id. This means that Archer’s modem receives analog signals
`via the PSTN and translates them to digital signals.
`37. Petitioner contends that converter 126 “communicates on the PSTN using
`SS7 signaling and digital voice protocol used by PSTN tandem switches.” Resp. at
`6-7. Petitioner further contends that converter 126 “passes information (e.g., voice
`and signaling) through it, and sends and receives such information in digital formats
`(e.g., PCM voice and IP voice packets).” Resp. at 7. In my opinion, this position
`does not square with the actual teachings of Archer.
`38. First, PCM stands for pulse coded modulation and simply assigns a digital
`value to the amplitude of an analog signal at regular intervals, and is used in
`everything from .wav files to DVDs to HDMI signaling – it is hardly unique to
`telephony products. Because PCM is a digital representation of an analog signal,
`there would be no reason for converter 126 to include modem bank 70 if it received
`information from the PSTN in a digital format. Indeed, the whole point of a modem
`(modulator / demodulator) is to convert an analog signal (e.g., from a telephone line)
`to a digital format or vice versa. In my opinion, a person of ordinary skill (POSA)
`would know that modem bank 70 that is external to the PSTN and would be coupled
`to an edge switch, not to a PSTN tandem switch.
`39. Second, Archer does not use the word “tandem” anywhere it its disclosure.
`Nor does Archer use the term “SS7 signaling” in its disclosure. Petitioner’s attempts
`to convince the Board that Archer’s modem receives digital voice directly from a
`PSTN tandem switch along with SS7 signaling is simply made up.
`
`
`
`10
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 12
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`40. Third, the only commercially available product Archer describes as
`performing the functionality of converter 126 is the Netspeak Webphone Gateway
`Exchange. Archer at 5:63-67. In my opinion, a POSA would know that the
`Netspeak product connects to the PSTN through an edge switch and is designed to
`receive analog signals from a PSTN edge switch, not a tandem switch. Finally, the
`terms used to describe to converter 126 – “converter,” “gateway,” and “digitizer” –
`make clear that converter 126 is responsible for converting voice signals received in
`a first format (analog) to a second format (digital), or vice versa. Archer at 5:33-36.
`It makes no sense to interpret Archer’s converter 126 as receiving digital signals and
`simply passing them along in digital format over the IP network. In such a scenario,
`a modem would not be used.
`41. Petitioner’s Response mischaracterizes my testimony. Petitioner asserts
`that I “testified that the digital format used by Archer’s gateway 126 to communicate
`voice information with PSTN 118 (136)— [is] PCM….” Resp. at 8. This assertion
`is false. I never testified that converter 126 communicated voice signals with PSTN
`118 in a PCM format. The citations in support of this statement contain no such
`testimony. Nor did I “acknowledge[] that Archer’s gateway 126 would typically be
`connected to a PSTN tandem switch, not an edge switch, in PSTN 118 (136).” Resp.
`at 8. Again, the testimony pointed to by Petitioner contains no such statement,
`acknowledgement, or suggestion by me. To the contrary, I acknowledged that PCM
`is a digital format that could be used by a PSTN tandem switch. Archer only
`discusses PCM as being used by the IP network 130. Indeed, as previously
`discussed, Archer expressly contemplates that the PSTN voice signals are sent to
`11
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 13
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`converter 126 connection is an analog format, thus requiring the use of a modem in
`order to convert the analog signal into a digital format (i.e., PCM) that can be used
`by IP network 130. These analog signals could only come from an edge switch,
`which typically convey data in an analog format to external devices. As such, it is
`my opinion that Archer does not disclose the limitation “communications, including
`the first request to establish the incoming call, between the tandem access controller
`and the particular PSTN tandem switch, occur without passing through any of the
`edge switches.”
`42. Additionally, Archer fails to disclose “control criteria is previously entered
`via a web-based interface” that would allow a subscriber to set call control features.
`In the underlying Petition, Petitioner attempted to cure this deficiency with
`combination to Chang’s purported TAC. However, Chang’s purported TAC cannot
`receive a call request to establish the incoming call, as required by the Substitute
`Claim. Mot. at 19-21. It is unclear how or why a POSA would modify Archer with
`Chang, or vice versa, with a predictable result to reach the solution claimed in the
`Substitute Claim. Further, in my opinion, Archer fails to disclose a TAC that
`processes the calls in a manner required by the Substitute Claim of “blocking the
`incoming call received at the tandem access controller in accordance with the control
`criteria.”
`
`V. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LEWIS
`43. Petitioner’s characterization of Lewis is contrary to the reference’s actual
`disclosure. As set forth below, Lewis does not teach, suggest, or disclose (1) a
`tandem access controller, (2) the call processing steps, including blocking the
`12
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 14
`Bates Declaration
`IPR2016-01262
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`
`
`Declaration of Regis J. “Bud” Bates
`
`incoming call received at the TAC in accordance with the control criteria, and (3)
`receiving a first request to establish the incoming call to subsequently establish two
`way voice communication in the manner required by the Substitute Claim.
`44. On the first point, the descriptive language of the term “tandem access
`controller” indicates that it is a controller associated with a tandem switch, not an
`edge switch. Mot. at 3. Petitioner points to open architecture switch 502 as
`satisfying the TAC limitation. Resp. at 13-18. However, open architecture switch
`502 is associated with voice switch 506, which is an edge switch, not a tandem
`switch. Lewis at Fig. 5, 20:30-58, 27:3-18. As the name implies, an open
`architecture switch is simply a switch that determines whether a particular call is a
`voice call or a data call, where voice calls are terminated at the edge switch 506 in
`the conventional manner and data calls (non-voice calls) are terminated at a modem
`514, which routes the data to an ISP or private data network. There is no disclosure
`that open architecture switch 502 has any capabilities to apply call features. Nor is
`there any disclosure that open architecture switch has the capability to identify
`control criteria previously associated with the specified recipient where “the control
`criteria is previously entered via a web-based interface” that would allow a
`subscriber to set call control features. Petitioner did not even attempt to show that
`Lewis discloses these limitations.
`45. On the second point, Lewis does not teach, suggest, or disclose a TAC that
`processes the calls in a manner required by the Substitute Claim of “blocking the
`incoming call received at the tandem access controller in accordance with the control
`criteria.” Mot. at 25. Lewis is devoid of any teaching, suggestion, or disclosure that
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 15
`Bates Declaration
`IPR2016-01262
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`
`
`Declaration of Regis J. “Bud” Bates
`
`its purported TAC is capable of “blocking the incoming call received at the tandem
`access controller in accordance with the control criteria.” Petitioner did not even
`attempt to show that Lewis discloses these limitations.
`46. On the third point, Patent Owner construed a request to establish the
`incoming call as “signaling indicating a request to set up a connection that provides
`for a two way voice communication.” Mot. at 7. Petitioner did not contest this
`construction. Thus, the Substitute Claim requires that the tandem access controller
`receive “a first request to establish the incoming call” to set up a connection that
`provides for a two way voice communication. The entire invention of Lewis is
`directed to separating data calls from voice calls, and Petitioner relies exclusively on
`the data call embodiment (i.e., non-voice calls). The data call embodiment relied
`upon by Petitioner actually teaches away from the ability to provide voice
`communications because Lewis teaches that voice calls are diverted to the voice
`switch 506, which is an edge switch, not a tandem access controller. See, e.g., Lewis
`at 20:30-58, 27:3-18, Fig. 5, Fig. 10A (step 1008 “distinguish between data calls and
`voice calls”), Fig. 10C (step 1030 and 1042 where if the initial determination is
`whether the call is a data call or a voice call). Other than a generic definition of
`VoIP provided by Lewis at 2:50-55, the only other disclosure of VoIP in Lewis is at
`26:9-13, which corresponds to Fig. 9A. This disclosure is clear that Lewis is simply
`teaching that there are many ways to originate the initial call, such as the “calling
`party 914” being able to initiate a call using VoIP. After a VoIP call request is
`received, the invention in Lewis still operates in the same manner— where voice
`calls are diverted to voice switch 506 (edge switch) without ever being received by
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`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 16
`Bates Declaration
`IPR2016-01262
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`
`
`Declaration of Regis J. “Bud” Bates
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`the modem NAS bay 514. Additionally, a VoIP call from one VoIP caller to another
`VoIP caller would never even traverse through a PSTN tandem switch. Petitioner
`mischaracterizes the teachings of Lewis in a futile attempt to change the invention
`disclosed in Lewis. See, for example, block quote at page 17 of the Response where
`Petitioner intentionally omits the disclosure that “the technique distinguishes
`between data calls and voice calls” where the method transmits voice calls to voice
`switch 506. Lewis is clear that voice calls are never received at modem NAS bay
`514, as alleged by Petitioner.
`
`VI. THE SUBSTITUTE CLAIM IS PATENTABLE OVER LAPIER
`47. As set forth below, it is my opinion that LaPier does not teach, suggest, or
`disclose a tandem access controller or the call processing steps, as required by the
`Substitute Claim.
`48. On the first point, the descriptive language of the term “tandem access
`controller” indicates that it is a controller associated with a tandem switch. Mot. at
`3. The purported TAC in LaPier has no association with a tandem switch, but, rather,
`its function is to simply act as a protocol converter between protocols of any type of
`PSTN switch, including edge switches, and Internet protocols. LaPier at 4:56-67,
`Figs. 1B, 1C.
`49. On the second point, Petitioner presented no arguments that LaPier’s
`purported TAC teaches, suggests, or discloses the capability to identify control
`criteria previously associated with the specified recipient where “the control criteria
`is previously entered via a web-based interface” that would allow a subscriber to set
`call control features.
`
`
`
`15
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 17
`Bates Declaration
`IPR2016-01262
`
`
`
`Declaration of Regis J. “Bud” Bates
`
`50. Further, Petitioner made no efforts to indicate why these deficiencies of
`LaPier would be obvious. For LaPier to operate in the manner required by the
`Substitute Claim would require extensive and unreasonable modifications to the
`existing PSTN architecture, where it is unclear how or why a POSA would modify
`LaPier or the existing PSTN architecture with a predictable result to reach the
`solution claimed in the Substitute Claim.
`
`VII. THE SUBSTITUTE CLAIM IS PATENTABLE AND NOT OBVIOUS
`51.
`In my opinion, there is simply no evidence in the record that anyone, prior
`to the date of the invention, with all of the necessary tools in hand – PBXs, tandem
`switches, gateways, modem banks, IN equipment – had any reason to add call
`features and process calls in the manner recited in the Substitute Claim, or ever
`conceived of such a solution. Petitioner has not provided any reasons as to how or
`why any reference could be modified or combined to read on each of the limitations
`recited in the Substitute Claim. Further, Petitioner did not even attempt to address
`the majority of the claim limitations. Petitioner did not even attempt to show how
`any prior art reference could possibly render the Substitute Claim obvious. Indeed,
`to utilize these references in the manner required by the Substitute Claim would
`require extensive and unreasonable modifications to the existing PSTN architecture,
`such that a POSA would have no reason to modify the references in the manner
`required by the Substitute Claim. To modify or combine any of the art to read on
`the Substitute Claim would require impermissible hindsight by using the claimed
`invention as a blueprint.
`52. Thus, the invention recited in the Substitute Claim is patentable.
`16
`
`
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 18
`Bates Declaration
`IPR2016-01262
`
`
`
`BHN, et al. v. FOCAL IP, LLC
`FOCAL IP, LLC EX2070 - 19
`Bates Declaration
`IPR2016-01262
`
`
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