Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
`IPR 2016-01262
`U.S. Patent No. 7,764,777 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`
`
`Case IPR2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
`
`

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`
`
`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`I. 
`
`II. 
`
`B. Materials Considered .......................................................................... ..2
`
`LEGAL PRINCIPLES USED IN THE ANALYSIS ................................... ..3
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`INTRODUCTION AND QUALIFICATIONS ............................................ ..l
`A. 
`Engagement Overview ......................................................................... 1 
`A.
`Engagement Overview ....................................................................... ..l
`B.  Materials Considered ............................................................................ 2 
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 3 
`A. 
`Legal Standards for Disclaimer of Claim Scope .................................. 3 
`A.
`Legal Standards for Disclaimer of Claim Scope ................................ ..3
`III.  THE INTERPRETATION OF “SWITCHING FACILITIES” ...................... 4 
`A. 
`The Introduction of “Switching Facilities” .......................................... 4 
`A.
`The Introduction of “Switching Facilities” ........................................ ..4
`B. 
`Patent Owner’s Arguments on Disclaimer ........................................... 9 
`B.
`Patent Owner’s Arguments on Disclaimer ......................................... ..9
`IV.  PATENT OWNER’S ARGUMENTS REGARDING ARCHER AND
`CHANG ........................................................................................................ 14 
`A. 
`Patent Owner’s Arguments Regarding Archer .................................. 14 
`A.
`Patent Owner’s Arguments Regarding Archer ................................ ..l4
`B. 
`Patent Owner’s Arguments Regarding Chang ................................... 21 
`B.
`Patent Owner’s Arguments Regarding Chang ................................. ..2l
`CONCLUSION ............................................................................................. 24 
`
`III.
`
`THE INTERPRETATION OF “SWITCHING FACILITIES” .................... ..4
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`IV.
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`PATENT OWNER’S ARGUl\/[ENTS REGARDING ARCHER AND
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`CHANG ...................................................................................................... ..l4
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`V. 
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`CONCLUSION ........................................................................................... ..24
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`1.
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`2.
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`I, Thomas F. La Porta, declare as follows:
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`I have personal knowledge of the facts stated in this declaration, and
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`could and would testify to these facts under oath if called upon to do so.
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`I.
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`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Bright House Networks, LLC,
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`WideOpenWest Finance, LLC, Knology of Florida,
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`Inc., and Birch
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`Communications, Inc. (Petitioners) in this case as an expert in the relevant art. I
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`previously provided a declaration in this case in support of the Petition setting forth
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`my opinions regarding the state of the art and invalidity of the challenged claims. I
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`am being compensated for my work at the rate of $550 per hour. No part of my
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`compensation is contingent upon the outcome of this petition.
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`4.
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`I was asked to study the Patent Owner’s October 19, 2016 Preliminary
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`Response to Petitioners’ Petition for Inter Partes Review of U.S. Patent No.
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`7,764,777 (“the ‘777 patent”), and its exhibits including the Declaration of Regis J.
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`“Bud” Bates, and to render opinions based on the testimony of Mr. Bates contained
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`in this Declaration.
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`5.
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`After studying the Preliminary Response, its exhibits including the
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`Declaration of Mr. Bates, the ‘777 patent, its file history, and the prior art, and
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`considering the subject matter of the claims of the ‘777 patent in light of the state
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`
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`1
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`
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`of technical advancement in the area of telephony in circuit-switched and packet-
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`switched networks in the mid-1990s to 2000 time frame, I reached the conclusions
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`discussed herein.
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`6.
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`This declaration, and the conclusions and opinions herein, provide
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`support for the Reply to Patent Owner’s Preliminary Response Pursuant to 37
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`C.F.R. § 42.108(c) filed by Petitioners in this case. I have reviewed the Reply in its
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`entirety as well as its corresponding exhibits.
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`B. Materials Considered
`7. My analysis is based on my education and experience as set out in my
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`June 24, 2016 Declaration in this case and in my curriculum vitae, including the
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`documents I have read and authored and systems I have developed and used since
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`then.
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`8.
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`In addition to the materials set forth in my June 24, 2016 Declaration
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`in this case, I have reviewed the following:
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`Description of Document
`
`Exhibit
`No.
`Patent Owner’s Preliminary Response
`
`2001 Declaration of Regis J. “Bud” Bates
`2002 Ray Horak, Communications Systems and Networks (2nd ed. 2000)
`2003 Ray Horak, Webster’s New World Telecom Dictionary (2008)
`2004 Ray Horak, Telecommunications and Data Communications (2007)
`Prosecution History of U.S. Patent No. 7,764,777
`2005
`2006 Harry Newton, Newton’s Telecom Dictionary (23rd ed. 2007)
`2
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`

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`
`
`Exhibit
`Description of Document
`No.
`1055 U.S. Patent No. 6,574,328
`1056 U.S. Patent No. 7,324,635
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`9.
`In addition to the legal principles set forth in my June 24, 2016
`
`Declaration in this case, attorneys for the Petitioners explained additional legal
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`principles to me that I have relied upon in forming my opinions set forth in this
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`report.
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`A. Legal Standards for Disclaimer of Claim Scope
`10. As set forth in my June 24, 2016 Declaration in this case, I understand
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`that, in Inter Partes Review, the claim terms are to be given their broadest
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`reasonable interpretation (BRI) in light of the specification. See 37 C.F.R.
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`§ 42.100(b).
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`11.
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`I have been informed and understand that the plain meaning of a claim
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`term can be disclaimed or disavowed by the prosecution history or the
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`specification of the patent. Counsel has advised me that a disclaimer must be
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`“clear and unmistakable” to a person of ordinary skill in the art (“POSA”) in order
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`to take effect. I understand that such disavowal must be, among other things, so
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`unmistakable as to be unambiguous evidence of disclaimer.
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`12.
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`I understand that such disavowal does not arise merely by criticizing a
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`3
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`particular embodiment that is encompassed in the plain meaning of a claim term. I
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`further understand that such disavowal also does not arise merely because all the
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`embodiments of the invention disclosed in the specification contain a particular
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`limitation. I also understand that the Patent Owner bears the burden of establishing
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`the existence of a disclaimer.
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`III. THE INTERPRETATION OF “SWITCHING FACILITIES”
`13.
`In my opinion, a POSA would understand that, for each particular
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`claim of the challenged claims, “any point in the switching fabric of converging
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`networks” (whether it be an edge switch, tandem switch, hybrid switch, gateway,
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`STP, etc.) is a “switching facility” for such claim if it performs the recited
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`function, and is in the recited location, in such claim.
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`A. The Introduction of “Switching Facilities”
`14. The first time that “switching facilities” appears anywhere in the
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`intrinsic record of the ’777 patent, or of any of the patents in its family, is February
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`16, 2010, when Applicant introduced it in response to a Final Office Action. Ex.
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`1010, 66, 68-80, 84-88. Patent Owner and Mr. Bates acknowledge this fact.
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`Prelim Resp., 35; Ex. 2001, ¶70.
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`15. Specifically, in this February 16, 2010 response, the applicants
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`amended several existing claims to include this term for the first time, and added
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`new claims—including the challenged claims—reciting it. Ex. 1010, 68-80.
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`4
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`16.
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`In my opinion, a POSA, reading this response and the applicants’
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`concurrently filed Substance of Personal Interview with the Examiner (the
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`“Interview Summary”), understood
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`that the applicant intended “switching
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`facilities” to be interpreted broadly.
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`17. For example, in the February 16, 2010 response, the applicants first
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`state that “switching facilities” in the PSTN included both end office switches and
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`interconnected tandem switches:
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`Consistent with Newton’s definition, on which the Examiner relies,
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`Schwab’s “end office switch” could arguably be considered to be
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`“within” the PSTN. The PSTN is a configuration of switching
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`facilities for routing calls from calling parties to called parties,
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`comprising a plurality of end office switches (also referred to as
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`central office switches or edge switches (e.g., a class 5 switch)) and a
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`plurality of interconnected switching facilities (also referred to as
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`tandem switches). Ex. 1010, 86-87.
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`18. Next, in this same response, the applicants broadly defined “tandem
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`switching facilities” as “any point in the switching fabric of converging networks”
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`and enumerated several examples of such “switching facilities”, namely “a signal
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`transfer point (STP), signal control point (SCP), session border controller (SBC),
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`gateway, access tandem, class 4 switch, wire center, toll office, toll center, PSTN
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`5
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`

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`switching center, intercarrier connection point, trunk gateway, hybrid switch, etc.”
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`Ex. 1010, 87, 87n.1.
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`19.
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`In my opinion, a POSA would understand that the applicants
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`identified that it is this location—in the switching fabric of converging networks
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`(e.g. at the convergence of a circuit switched network and a packet switched
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`network)—that avoids a call having to reach the local edge switch of a particular
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`subscriber before services for such subscriber (e.g. call forwarding) are invoked.
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`Ex. 1010, 86-88, 87n.1.
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`20. Notably, the applicants’ enumerated examples of “tandem switching
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`facilities” include a hybrid switch. A hybrid switch is a well-known combined
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`class 4/class 5 switch (i.e. combined tandem/edge switch). See, e.g., Ex. 2002 at 4
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`(“In many instances, a Class 4 office also serves as a Class 5 office; in other words,
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`a hybrid switch serving as both a Central Office and a tandem toll office, with the
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`separate functions provided through logical and physical partitioning within the
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`switch.”)
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`21.
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`It is also noteworthy that applicants’ enumerated examples include
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`devices that were well-known to receive call signaling but not voice media (e.g.
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`STP, SCP). Ex. 1010, 87n.1; Ex. 1038, 30-33, 57. Therefore, the applicants
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`expressly included a combination tandem/edge switch, and devices that only
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`receive call signaling, in its definition of “switching facilities.” Ex. 1010, 87n.1;
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`6
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`Ex. 2002, 4; Ex. 1038, 30-33, 57.
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`22.
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`In the Interview Summary concurrently filed on February 16, 2010
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`with its response to the Final Office Action, the applicants expressly referenced its
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`broad definition of “switching facilities”, including its expressly enumerated
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`examples:
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`Applicants and Applicants’ Representative presented the differences
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`between the rejected claims and Schwab et al., and other prior art.
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`The major difference lies in that Applicants’ architecture permits
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`subscribers to apply features via web access to a controlling device
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`that connects to a switching facility (tandem access switch also
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`referred by other terminology in the industry) so that the features are
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`not limited to a local geographic area. Ex. 1010, 66.
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`23. The applicants’ intended broad interpretation of “switching facility” is
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`also evident to a POSA from its concurrently filed claim amendments. Ex. 1010,
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`68-80, 84-88. For example, in this February 16, 2010 Final Office Action
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`response, the applicants broadened Claim 1 such that, instead of the “web-enabled
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`processing system” having to be “connected within the PSTN”, it merely had to be
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`“connected to operate at least in part with a communications network comprising”
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`both “edge switches” and “switching facilities for routing calls to other edge
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`switches”:
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`7
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`Ex. 1010, 68; see also Ex. 1010, 71 (amendments to Claim 19):
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`24. The applicants also amended dependent Claim 7 to specify that only
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`for this dependent claim is the “communication network” of Claim 1 limited to the
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`PSTN and the “switching facility” of Claim 1 is limited to “a PSTN tandem switch
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`within the [PSTN]”:
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`Ex. 1010, 69 (Claim 7).
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`25.
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`In contrast, when the applicants wanted narrow independent claims,
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`they used “tandem switch” instead of “switching facility” and “public switched
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`telephone network (PSTN)” instead of “communication network”:
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`8
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`
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`Ex. 1010, 72 (Claim 20).
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`26. Thus, in my opinion, a POSA, reading the concurrently filed February
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`16, 2010 Final Office Action response and Interview Summary, understood that the
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`applicants intended “switching facilities” to be interpreted broadly.
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`B.
`27.
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`Patent Owner’s Arguments on Disclaimer
`
` Mr. Bates asserts that “[a]ccording to the intrinsic record, a
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`‘switching facility’ (1) is a switch for routing calls to edge switches or other
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`‘switching facilities’ local or in other geographic areas; and (2) is not an edge
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`switch or an edge device.” Ex. 2001, ¶68; Prelim Resp., 34. I disagree for
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`several reasons.
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`28. First, Mr. Bates relies on portions of the ’777 patent specification as
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`purportedly disclaiming the applicants’ broad definition of “switching facility.”
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`Ex. 2001, ¶¶51-57, 65; Prelim Resp., 22-27, 33; Section III.A. However, neither
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`the ’777 patent specification (filed Nov. 30, 2007), nor the specification of any of
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`the patents to which it claims priority (filed Apr. 30, 2003, and May 4, 2000)
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`include the term “switching facility”. Ex. 1001; Ex. 1055; Ex. 1056. Thus, there
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`can be no clear and unmistakable disclaimer of this term “switching facility” that
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`was introduced and defined years later by the applicants on February 16, 2010. Ex.
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`1010, 66, 68-80, 84-88. To say that the applicants used these specifications to
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`disclaim the scope of a term they first introduced between three and ten years after
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`9
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`the specifications were created is to posit a time machine.
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`29. Second, the portions of the ’777 patent specification relied upon by
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`Mr. Bates (Ex. 2001, ¶¶55-56; Prelim Resp., 24-26) all explicitly refer to a
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`“preferred embodiment”, “preferred system”, or “one embodiment”, as opposed to
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`“the invention” or all embodiments of the invention:
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`A preferred embodiment of the inventive system described herein
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`connects at the tandem, thereby eliminating these problems. Ex.
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`1001, 1:63-65;
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`In one embodiment, the system includes a processor (referred to
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`herein as a tandem access controller) connected to the PSTN which
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`would allow anyone to directly provision, that is to say set-up and
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`make immediate changes to, the configuration of his or her phone
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`line. In another embodiment, a tandem access controller (TAC)
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`subsystem is connected internally to the PSTN in a local service area.
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`The TAC provides features, selected by the subscriber, to all edge
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`switches connected to the PSTN tandem switch. Connecting directly
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`to the PSTN tandem switch (or embedding the system into the tandem
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`switch) eliminates
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`the signal degradation problems previously
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`described. Ex. 1001, 3:23-34;
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`FIG. 1 illustrates the tandem access controller (TAC) in one
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`10
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`embodiment of the present invention connected to the existing PSTN
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`tandem switch, the TAC providing features for the subscriber's
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`telephone as requested by the subscriber via the web. Ex. 1001, 3:61-
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`65, FIG. 1;
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`The preferred system described herein adds direct control of third
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`party call control features, but does not suffer from any of the
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`disadvantages listed above, and allows the subscriber to manage
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`his/her telephone system in a dynamic and exceptionally useful
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`manner that is not currently available through the existing PSTN. The
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`system allows enhanced direct third-party call control features, such
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`as selective call routing and remote dialing, to be added to the PSTN
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`(Public Switched Telephone Network) using local call control and
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`providing dynamic provisioning of the system by the subscriber.
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`Direct 3rd-party control means that the ability to provision the 3rd-
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`party features is directly available to a subscriber, eliminating the
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`need to go through the telephone company (telco) business office. Ex.
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`1001, 3:8-21.
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`30.
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`In my opinion, such description of a preferred or particular
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`embodiment does not provide a clear and unmistakable disclaimer to a POSA.
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`31. Third, Mr. Bates relies on the applicants’ arguments and claim
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`11
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`
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`amendments made in a September 25, 2009 response to a non-final Office Action
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`as purportedly disclaiming the applicants’ February 16, 2010 broad definition of
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`“switching facility”. Ex. 2001, ¶¶58-61; Prelim Resp., 27-29. However, none of
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`the claim amendments or arguments included or referenced the term “switching
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`facility”. Ex. 1010, 1585-1595. Thus, there can be no clear and unmistakable
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`disclaimer of this term “switching facility” that was introduced and defined months
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`later by the applicants on February 16, 2010. Ex. 1010, 66, 68-80, 84-88.
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`32. Fourth, in the portions of the February 16, 2010 response relied upon
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`by Mr. Bates, the applicants always conditionally describe “switching facilities” to
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`illustrate a specific function or a specific location. Ex. 2001, ¶¶63-64, 69-70, 78;
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`Prelim. Resp., 30-33, 35-37, 39-40. For example, the applicants’ arguments
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`demonstrate that “switching facilities” can have varying functions and locations:
`
` PSTN end office switches that connect calling parties to called parties
`only within a local geographic area
` PSTN tandem switching facilities that route calls received via end
`office switches or other tandem switching facilities to called parties
`within other geographic areas
` interconnect end office switches to other geographic areas that are not
`local to an end office switch.
`Ex. 1010, 87.
`33. Because the function and location of a “switching facility” can vary
`
`broadly (as shown by the enumerated examples and applicant’s arguments), in
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`12
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`their February 16, 2010 amendments to the claims, the applicants recited specific
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`additional limitations to claim the function/location of the “switching facility” for
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`each particular claim:
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` for routing calls to other edge switches or other switching facilities
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`local or in other geographic areas (Claim 1, 19) (emphasis added)
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` for routing calls to edge switches or other switching facilities local or
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`in other geographic areas (Claim 22) (emphasis added)
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` allowing access to local and other geographic areas within the PSTN
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`(Claim 21) (emphasis added)
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` for routing calls to other geographic areas (Claim 41, 46, 49, 50)
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`Ex. 1010, 68, 71, 73, 77-80.
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`34.
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`If
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`the
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`location and function of a “switching facility” was
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`unambiguously disavowed as Mr. Bates asserts, then the varying claim language
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`identifying the particular location and function of “switching facilities” in each
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`claim would be superfluous. Ex. 2001, ¶¶68-70, 75, 80; Prelim Resp., 34-40; Ex.
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`1010, 68, 71, 73, 77-80.
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`35. Rather, in my opinion, for each particular claim, “any point in the
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`switching fabric of converging networks” (whether it be an edge switch, tandem
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`switch, hybrid switch, gateway, STP, etc.) is a “switching facility” for such claim
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`if it performs the function, and is in the location, recited in such claim.
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`13
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`
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`IV. PATENT OWNER’S ARGUMENTS REGARDING ARCHER AND CHANG
`A.
`Patent Owner’s Arguments Regarding Archer
`36. Mr. Bates asserts that Archer’s converters 126 and 132 are both edge
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`switches or edge devices, and not “switching facilities”, because (1) each only
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`connects to circuit-switched network 118/PSTN 136 via analog lines, (2) neither
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`routes information on circuit-switched network 118/PSTN 136, and (3) a POSA
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`would not connect either to a tandem switch because of (1) and because neither
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`sends or receives call signaling. Ex. 2001, ¶¶86-89, 97-111; Prelim Resp., 43-44,
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`48-56. In my opinion, these assertions are misleading and/or inaccurate.
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`37. First, there is no dispute that Archer’s converters 126 and 132 are
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`respective points in the switching fabric of converging circuit-switched network
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`118/PSTN 136 and packet-switched network/IP network 130. See Ex. 2001;
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`Prelim. Resp.;
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`supra
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`Section
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`III.A;
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`Ex.
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`1003
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`at
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`FIG.
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`2:
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`14
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`PSTN
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`IP netwoork
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`Conveerter
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`PST
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`N
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`Converteer
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`3
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`8. Seconnd, Mr. BBates’ asse
`rtion that
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`converterss 126 andd 132 are eedge
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`devices
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`because tthey receivve analog ssignals is iirrelevant
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`to whetheer such devvices
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`are “swwitching faccilities” annd is basedd on an inaaccurate prremise. EEx. 2001, ¶¶¶87-
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`88, 1022. A “swiitching faccility” is ddefined by
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`its expresssly recitedd location
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`and
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`functionn in a netwwork, and
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`not by thee type of llines (e.g.
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`analog or
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`digital) thhat it
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`connectts to. Seee Section
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`III.B. MMoreover,
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`Archer cllearly disccloses thatt the
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`interconnnect betwween convverters 1226 and 1332 and ccircuit-swittched netwwork
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`118/PSTTN 136 can be eitherr analog orr digital:
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`Circuit-swittched netwwork 118
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`can be eiither an aanalog nettwork, a
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`digital netwwork, or
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`
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`a combinnation of
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`
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`both. EEx. 1003,
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`5:10-11
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`C d (
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`eemphasis aadded);
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`Inn general,
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`the PSTNN to IP-n
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`ter 126) e., convertetwork gaateway (i.e
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`15
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`should be able to support the translation of PCM to multiple encoding
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`schemes to interwork with software from various vendors. Ex. 1003,
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`5:59-62 (emphasis added).
`
`PCM was well known as a digital representation of an analog signal; thus, a POSA
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`understood that Archer’s converters 126 and 132 can receive digital voice.
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`39. Third, contrary to Mr. Bates’ assertions (Ex. 2001, ¶¶102, 104, 108-
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`111), in my opinion, Archer discloses that converters 126 and 132 both route call
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`information, including both voice and call signaling, on both of these converging
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`networks and to/from multiple locations or geographic areas. Mr. Bates’
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`acknowledges that Archer discloses converters 126 and 132 route call information
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`on packet-switched network/IP network 130 but asserts that Archer’s converters
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`126 and 132 are limited to only routing in that direction. Ex. 2001, ¶102.
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`However, Figures 2 and 6 clearly show that Archer’s converters 126 and 132
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`communicate bi-directionally (i.e. over both only packet-switched network/IP
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`network 130 and circuit-switched network 118/PSTN 136):
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`Ex. 10003, FIG. 2
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`(reproduceed and annnotated aboove), FIG.
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`6. Moreoover, withinn the
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`preferreed embodimment of Arrcher’s connverters 1226 and 1322, router 774 is conneected
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`to a moodem bankk 70, whicch impliess to a POSSA that roouter 74 iss connecteed to
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`multiplee modems::
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`Ex. 1003, FIG. 3 (reproduced above). Thus, within converters 126 and 132, the
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`router 74 must pick the path to the correct modem within the modem bank 70 in
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`the direction from the packet-switched network/IP network 130 to circuit-switched
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`network 118/PSTN 136.
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`40. Archer also expressly discloses that server processor 128 can address
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`IP packets to converter 126 (132), and that converter 126 (132) (1) decodes
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`multiple destination telephone numbers from IP packets, (2) causes multiple
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`destination telephone numbers to ring, and (3) routes call information to the
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`responding destination number. Ex. 1003, 9:7-19, 9:31-34, 9:51-55, 11:23-25.
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`Therefore, a POSA would understand that Archer’s converters 126 and 132 can
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`select a path that call information takes in both directions. See Ex. 1032, 14
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`(“route”).
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`41. Archer additionally discloses that these multiple destination telephone
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`numbers (that converters 126 and 132 cause to ring and route call information to)
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`can be in different geographic areas. Indeed, one of the primary benefits Archer
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`described as being provided is to allow calls placed to a called party to be
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`forwarded to such party no matter where he/she is in the world. Ex. 1003, 2:66-
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`3:3; 3:53-55; 5:23-26; FIGS. 2, 6.
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`42. Furthermore, Mr. Bates’ assertion that converters 126 and 132 neither
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`send nor receive call signaling is inaccurate. Ex. 2001, ¶¶108-110. Indeed, while
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`Mr. Bates asserts that converters 126 and 132 “will never receive or be expected to
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`process” call signaling such as SS7, earlier in his report he acknowledges that these
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`devices “utilize[]
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`signaling
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`information
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`to generate packet addressing
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`information.” Ex. 2001, ¶¶89, 109-110.
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`43. Archer also expressly describes that converters 126 and 132 receive
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`call notification messages, use such messages to cause telephones to ring, receive
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`pick-up notifications, and route call information to the responding destination
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`number. Ex. 1003, 9:7-19, 9:31-34, 9:51-55, 11:23-25. It was well known to a
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`POSA that telephones ring as a result of call request signaling. Ex. 1002, ¶¶56-60,
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`72-76; Ex. 1037, 131-36, Fig. 8-1, 133 (shown below); see also 4:27-30 (call
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`originate messages).
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`It was also well known to a POSA that call accept signals were used to finalize the
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`path, or circuit, over which the voice traffic (i.e. media) of the call traveled. Ex.
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`1002, ¶¶56-60, 72-76; Ex. 1037, 95-102, Fig. 3-8, 131-35, Fig. 8-1 (above); Ex.
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`1027, 9-10. Thus, a POSA would understand that Archer’s converters 126 and 132
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`send, receive, and process call signaling.
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`44. Thus, in my opinion, Mr. Bates’ premise as to why converters 126 and
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`132 are not “switching facilities”, and as to why a POSA would not connect them
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`to a tandem switch, is inaccurate.
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`B.
`Patent Owner’s Arguments Regarding Chang
`45. Mr. Bates asserts that Chang does not meet the claim element of
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`“receiving a first call…at a controlling device” because the SCP disclosed in
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`Chang does not have the same functionality as the TAC described in the ’777
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`patent. Ex. 2001, ¶112-114; Prelim. Resp. 56-59. I disagree with Mr. Bates.
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`46. Mr. Bates asserts that the ’777 patent discloses this claim element at
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`Figure 5 and 5:53-6:16 by “having the TAC receive a call from a tandem switch.”
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`Ex. 2001, ¶112; Prelim. Resp. 56-57. In this embodiment, the only “call”
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`described as being received by the TAC in
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`communication with a PSTN tandem switch is
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`SS7 call signaling.
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` Ex. 1001, 5:53-6:16
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`(“Receives SS7 data indicating an incoming
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`call”). This same embodiment describes that the TAC controls routing of the call
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`via the tandem switch again using SS7 call
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`signaling. Ex. 1001, 5:53-6:16; FIG. 5 (right).
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`Thus, in the ’777 patent embodiment identified by Mr. Bates as disclosing
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`“receiving a first call…at a controlling device”, the TAC receives and sends only
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`SS7 call signaling.
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`447. Simillarly, Chaang disclooses SCP
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`19/ISCP
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`242 rece
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`ives SS7
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`call
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`signalinng from PSSTN tandeem switch
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`(11T) andd another oof Applicaant’s expreessly
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`switchinng facilitiees, STP 15, and sendding call coontrol signnals using
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`routing
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`of the calll via tandeem switchh (11T) andd STP 15.
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` Petition,
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` 56-59, 133-14;
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`1004, FIGG. 1 (annottated
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`Ex. 10002, ¶¶59-660, 62-64,
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`265-266,
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`268-269,
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`271; Ex.
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`below).
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`Therefoore, like thee TAC in tthe ’777 ppatent emboodiment iddentified b
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`SS7 to conntrol
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`y Mr. Batees as
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`disclosing “receiving a first call…at a controlling device”, Chang describes SCP
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`19/ISCP 242 receives and sends SS7 call signaling.
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`48. Additionally, in the preferred embodiment of the ’777 patent,
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`subscriber selections to his/her call control features are entered using the Web 22,
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`transmitted to the TAC “preferably . . . us[ing] a secure protocol,” and stored in a
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`database accessible by the TAC. Ex. 1001, 5:13-22, 5:41-43, 5:58-59. Similarly,
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`Chang discloses that subscriber selections to his/her call control features are
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`entered using the Web, transmitted to SCP 19/ISCP 242 using Secure Access
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`Platform 25, and stored in the subscriber’s specific call-processing record (CPR) in
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`the MSAP database accessible by SCP 19/ISCP 242. Petition, 31, 56-59; Ex.
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`1002, ¶¶166-171, 266-267; Ex. 1004, FIG. 1 (annotated below).
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`23
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`449. Thereefore, in mmy opinionn, Mr. Battes assertioons that CChang doess not
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`disclosee “receivinng a first caall . . . at a controllingg device” sshould be ddisregardedd.
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`V. CCONCLUSSION
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`I reseerve the rigght to offerr testimonyy in supporrt of this DDeclarationn.
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`5 5
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`0.
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`1.
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`In siggning this
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`Declaratioon, I reco
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`gnize that t the Declaaration willl be
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`filed as
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`evidence
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`in a conteested case bbefore thee Patent Trrial and Apppeal Boarrd of
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`the Uniited States Patent annd Trademmark Officee. I also
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`to cross-eexaminatioon in the
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`case. If
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`required,
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`24
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`subject
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`recognize
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`y be
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`I will apppear for crross-
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`examination at the appropriate time.
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`52.
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`I hereby declare that all
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`statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true and,
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`further,
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`that
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`these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under 18 U.S.C. § 1001.
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`Dated:
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`/l/.1 ll. Mil
`j_m'__j.___j
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`Respectfully submitted,
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`25