`Patent Owner’s Contingent Motion to Amend
`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
`
`Focal IP, LLC,
`Patent Owner
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`
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
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`
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`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S CONTINGENT
`MOTION TO AMEND
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`I.
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`II.
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`TABLE OF CONTENTS
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A.
`Engagement Overview ......................................................................... 1
`B.
`Summary of Opinions .......................................................................... 2
`C. Materials Considered ............................................................................ 3
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 5
`A.
`Legal Standards for Anticipation and Obviousness ............................. 5
`B.
`Legal Standards for Claim Interpretation ........................................... 14
`C.
`Legal Standards for a Motion to Amend ............................................ 15
`III. SUMMARY OF THE INSTITUTED GROUND AND MR. BATES’S
`OPINIONS .................................................................................................... 15
`IV. SUMMARY OF SUBSTITUTE CLAIM 49 ............................................... 16
`V. MR. BATES’S OPINIONS REGARDING THE PATENTABILITY
`OF SUBSTITUTE CLAIM 49 ..................................................................... 17
`VI. ARCHER DISCLOSES THE FIRST AND SECOND ADDED
`FEATURES .................................................................................................. 20
`VII. THE NEWLY CITED ART DISCLOSES THE FIRST AND
`SECOND ADDED FEATURES .................................................................. 28
`A.
`Lewis Discloses the First and Second Added Features ...................... 30
`B.
`LaPier Discloses the First and Second Added Features ..................... 36
`VIII. MR. BATES TESTIFIED THAT HIS ANALYSIS DID NOT
`CHANGE BETWEEN ORIGINAL CLAIM 1 AND SUBSTITUTE
`CLAIM 183 .................................................................................................. 42
`IX. CONCLUSION ............................................................................................. 44
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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 April 3, 2017 Contingent
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`Motion to Amend in Inter Partes Review of U.S. Patent No. 7,764,777 (“the ‘777
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`patent”), and its exhibits including the declaration of Regis J. “Bud” Bates dated
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`April 2, 2017 (Ex. 2040), the clean and redlined versions of the proposed substitute
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`claim (Ex. 2062), and the listing of Section 112 written description support for the
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`proposed substitute claim (Ex. 2041), and to render opinions based on the testimony
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`of Mr. Bates contained in his declaration (Id.) and in the transcripts of Mr. Bates’s
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`1
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`deposition taken on May 8-9, 2017 (Ex. 1059; Ex. 1060).
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`5.
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`After studying the Contingent Motion to Amend, its exhibits including
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`the declaration of Mr. Bates (Ex. 2040), the transcripts of his deposition (Ex. 2059;
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`Ex. 2060), the ‘777 patent (Ex. 1001), its file history (Ex. 1010), the prior art, and
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`considering the subject matter of the claims of the ‘777 patent in light of the state of
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`technical advancement in the area of telephony in circuit-switched and packet-
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`switched networks in May 2000, I reached the conclusions 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 Opposition to Patent Owner’s Contingent Motion to Amend filed by
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`Petitioners in this case. I have reviewed the Opposition in its entirety as well as its
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`corresponding exhibits.
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`B.
`7.
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`Summary of Opinions
`As set forth in my June 24, 2016 Declaration in this case, it is my
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`opinion that claims 18, 21, 23, 25, 26, 28-31, 37, 38, 41, 45, and 46 of the ‘777 patent
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`are obvious over Archer (Ex. 1003) in view of Chang (Ex. 1004) and the knowledge
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`and skill of a person of ordinary skill in the art (“POSA”). My opinions are
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`unchanged.
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`8.
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`As set forth herein, it is my opinion that Patent Owner has not made the
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`required showing that Substitute Claim 49 is patentable over the cited art in the
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`Petition and my June 24, 2016 Declaration.
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`9.
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`As set forth herein, it is my opinion that Patent Owner cannot show that
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`Substitute Claim 49 is patentable over newly cited U.S. Patent No. 6,442,169 to
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`Lewis (“Lewis”) (Ex. 1057) and U.S. Patent No. 6,333,931 to LaPier (“LaPier”) (Ex.
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`1058).
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`C. Materials Considered
`10. 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 (Ex. 1002) and in my curriculum vitae (Ex.
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`1053), including the documents I have read and authored and systems I have
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`developed and used since then.
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`11.
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`In addition to the materials set forth in my June 24, 2016 Declaration
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`in this case (Ex. 1002), I have reviewed the following:
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`Exhibit
`No.
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`Description of Document
`Decision Granting Institution of Inter Partes Review No. IPR2016-
`01261, January 3, 2017 (“Institution Decision”)
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`Patent Owner’s Contingent Motion to Amend
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`1001 U.S. Patent No. 7,764,777 (“the ‘777 patent”)
`1003 U.S. Patent No. 6,683,870 to Archer (“Archer”)
`1004 U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`1006 U.S. Patent No. 8,457,113 (“the ‘113 patent”)
`1007 U.S. Patent No. 8,115,298 (“the ‘298 patent”)
`1010
`File history of U.S. Patent No. 7,764,777
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`3
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`Exhibit
`Description of Document
`No.
`1057 U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`1058 U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`1059 May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`1060 May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`1061 March 1, 2017 Transcript of Deposition of Mr. Willis in IPR2016-
`01254, IPR2016-01257
`1067 Claim Chart of Lewis Against Proposed Substitute Claim 49
`1068 Claim Chart of LaPier Against Proposed Substitute Claim 49
`2001 Declaration of Regis J. “Bud” Bates filed with Preliminary Response
`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)
`2005
`Prosecution History of U.S. Patent No. 7,764,777
`2006 Harry Newton, Newton’s Telecom Dictionary (23rd ed. 2007)
`2019 Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR 2016-
`01259, -01261, -01262, and -01263.
`2020 Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR 2016-
`01259, -01261, -01262, and -01263.
`2022 Declaration of Regis J. “Bud” Bates in Support of Patent Owner’s
`Response
`2040 Declaration of Regis “Bud” Bates in Support of Patent Owner’s
`Contingent Motion to Amend
`Section 112 Written Description Support for the Proposed Substitute
`Claim
`$200 Billion Broadband Scandal, Bruce Kushnick, 2006
`2057
`2061 Karen Kaplan, Can I Put You on Hold? Profits are Calling, Los
`Angeles Times, February 3, 1997
`2062 Clean and Redlined Versions of the Proposed Substitute Claim
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`2041
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`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`12.
`In addition to the legal principles set forth in my June 24, 2016
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`Declaration in this case (Ex. 1002, ¶¶25-38), attorneys for the Petitioners explained
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`additional legal principles to me that I have relied upon in forming my opinions set
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`forth in this declaration.
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`A. Legal Standards for Anticipation and Obviousness
`13. As set forth in my June 24, 2016 Declaration in this case, I have been
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`provided the following instruction from the Model Patent Jury Instructions for the
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`Northern District of California (July 16, 2014) for anticipation, and the Federal
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`Circuit Bar Association Model Instructions regarding obviousness, which are
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`reproduced in part below. I apply this understanding in my analysis, with the caveat
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`that I have been informed that the Patent Office will find a patent claim invalid in
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`Inter Partes Review if it concludes that it is more likely than not that the claim is
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`invalid (i.e., a preponderance-of-the- evidence standard), which is a lower burden of
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`proof than the “clear-and- convincing” standard that is applied in United States
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`district court (and described in the jury instruction below):
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`4.3a1 ANTICIPATION
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`A patent claim is invalid if the claimed invention is not new. For the
`claim to be invalid because it is not new, all of its requirements must
`have existed in a single device or method that predates the claimed
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`invention, or must have been described in a single previous publication
`or patent that predates the claimed invention. In patent law, these
`previous devices, methods, publications or patents are called “prior art
`references.” If a patent claim is not new we say it is “anticipated” by
`a prior art reference.
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`The description in the written reference does not have to be in the
`same words as the claim, but all of the requirements of the claim must
`be there, either stated or necessarily implied, so that someone of
`ordinary skill in the field of [identify field] looking at that one reference
`would be able to make and use the claimed invention.
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`Here is a list of the ways that [alleged infringer] can show that a
`patent claim was not new [use those that apply to this case]:
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`[– if the claimed invention was already publicly known or publicly
`used by others in the United States before [insert date of conception
`unless at issue];]
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`[– if the claimed invention was already patented or described in a
`printed publication anywhere in the world before [insert date of
`conception unless at issue]. [A reference is a “printed publication” if it
`is accessible to those interested in the field, even if it is difficult to
`find.];]
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`[– if the claimed invention was already made by someone else in the
`United States before [insert date of conception unless in issue], if that
`other person had not abandoned the invention or kept it secret;]
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`[– if the claimed invention was already described in another issued
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`U.S. patent or published U.S. patent application that was based on a
`patent application filed before [insert date of the patent holder’s
`application filing date] [or] [insert date of conception unless at issue];]
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`[– if [named inventor] did not invent the claimed invention but instead
`learned of the claimed invention from someone else;]
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`[– if the [patent holder] and [alleged infringer] dispute who is a first
`inventor, the person who first conceived of the claimed invention and
`first reduced it to practice is the first inventor. If one person conceived
`of the claimed invention first, but reduced to practice second, that
`person is the first inventor only if that person (a) began to reduce the
`claimed invention to practice before the other party conceived of it and
`(b) continued to work diligently to reduce it to practice. [A claimed
`invention
`is “reduced
`to practice” when
`it has been
`tested
`sufficiently to show that it will work for its intended purpose or when
`it is fully described in a patent application filed with the PTO].]
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`[Since it is in dispute, you must determine a date of conception for the
`[claimed invention] [and/or] [prior invention]. Conception is the
`mental part of an inventive act and is proven when the invention is
`shown in its complete form by drawings, disclosure to another or other
`forms of evidence presented at trial.]
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`Model Patent Jury Instructions for the Northern District of California at 30-31, §
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`4.3a1 (July 16, 2015); Ex. 1002, ¶37.
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`4.3a2 STATUTORY BARS
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`A patent claim is invalid if the patent application was not filed within
`the time required by law. This is called a “statutory bar.” For a patent
`claim to be invalid by a statutory bar, all of its requirements must have
`been present in one prior art reference dated more than one year before
`the patent application was filed. Here is a list of ways [alleged infringer]
`can show that the patent application was not timely filed: [choose
`those that apply]
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`[– if the claimed invention was already patented or described in a
`printed publication anywhere in the world before [insert date that is one
`year before effective filing date of patent application]. [A reference is
`a “printed publication” if it is accessible to those interested in the field,
`even if it is difficult to find.];]
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`[– if the claimed invention was already being openly used in the United
`States before [insert date that is one year before application filing
`date] and that use was not primarily an experimental use (a)
`controlled by the inventor, and (b) to test whether the invention worked
`for its intended purpose;]
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`[– if a device or method using the claimed invention was sold or
`offered for sale in the United States, and that claimed invention was
`ready for patenting, before [insert date that is one year before
`application filing date]. [The claimed invention is not being [sold] [or]
`[offered for sale] if the [patent holder] shows that the [sale] [or] [offer
`for sale] was primarily experimental.] [The claimed invention is ready
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`for patenting if it was actually built, or if the inventor had prepared
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`drawings or other descriptions of the claimed invention that were
`sufficiently detailed to enable a person of ordinary skill in the field to
`make and use the invention based on them.];]
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`[– if the [patent holder] had already obtained a patent on the claimed
`invention in a foreign country before filing the original U.S.
`application, and the foreign application was filed at least one year
`before the U.S. application.]
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`For a claim to be invalid because of a statutory bar, all of the claimed
`requirements must have been either (1) disclosed in a single prior art
`reference, (2) implicitly disclosed in a reference to one skilled in the
`field, or (3) must have been present in the reference, whether or not
`that was understood at the time. The disclosure in a reference does not
`have to be in the same words as the claim, but all the requirements
`must be there, either described in enough detail or necessarily implied,
`to enable someone of ordinary skill in the field of [identify field]
`looking at the reference to make and use the claimed invention.
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`Model Patent Jury Instructions for the Northern District of California at 32, § 4.3a2
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`(July 16, 2015); Ex. 1002, ¶37
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`4.3c OBVIOUSNESS
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`Even though an invention may not have been identically disclosed or
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`described before it was made by an inventor, in order to be patentable,
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`the invention must also not have been obvious to a person of ordinary
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`skill in the field of technology of the patent at the time the invention
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`was made.
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`[Alleged infringer] may establish that a patent claim is invalid by
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`showing, by clear and convincing evidence, that the claimed invention
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`would have been obvious to persons having ordinary skill in the art at
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`the time the invention was made in the field of [insert the field of the
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`invention].
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`In determining whether a claimed invention is obvious, you must
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`consider the level of ordinary skill in the field [of the invention] that
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`someone would have had at the time the [invention was made] or
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`[patent was filed], the scope and content of the prior art, and any
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`differences between the prior art and the claimed invention.
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`Keep in mind that the existence of each and every element of the
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`claimed invention in the prior art does not necessarily prove
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`obviousness. Most, if not all, inventions rely on building blocks of
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`prior art. In considering whether a claimed invention is obvious, you
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`may but are not required to find obviousness if you find that at the
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`time of the claimed invention [or the patent’s filing date] there was a
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`reason that would have prompted a person having ordinary skill in the
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`field of [the invention] to combine the known elements in a way the
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`claimed invention does, taking into account such factors as (1) whether
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`the claimed invention was merely the predictable result of using
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`prior art elements according to their known function(s); (2) whether the
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`claimed invention provides an obvious solution to a known problem in
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`the relevant field; (3) whether the prior art teaches or suggests the
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`desirability of combining elements claimed in
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`the invention; (4)
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`whether the prior art teaches away from combining elements in the
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`claimed invention; (5) whether it would have been obvious to try the
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`combinations of elements, such as when there is a design need or
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`market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions; and (6) whether the change resulted
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`more from design incentives or other market forces. To find it
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`rendered the invention obvious, you must find that the prior art
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`provided a reasonable expectation of success. Obvious to try is not
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`sufficient in unpredictable technologies.
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`In determining whether the claimed invention was obvious, consider
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`each claim separately. Do not use hindsight, i.e., consider only what
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`was known at the time of the invention [or the patent’s filing date].
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`In making these assessments, you should take into account any
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`objective evidence (sometimes called “secondary considerations”) that
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`may shed light on the obviousness or not of the claimed invention,
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`such as:
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`(a) Whether the invention was commercially successful as a result of
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`the merits of the claimed invention (rather than the result of design
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`needs or market-pressure advertising or similar activities);
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`(b) Whether the invention satisfied a long-felt need;
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`(c) Whether others had tried and failed to make the invention;
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`(d) Whether others invented the invention at roughly the same time;
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`(e) Whether others copied the invention;
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`(f) Whether there were changes or related technologies or market
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`needs contemporaneous with the invention;
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`(g) Whether the invention achieved unexpected results;
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`(h) Whether others in the field praised the invention;
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`(i) Whether persons having ordinary skill in the art of the
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`invention expressed surprise or disbelief regarding the invention;
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`(j) Whether others sought or obtained rights to the patent from
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`the patent holder; and
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`(k) Whether the inventor proceeded contrary to accepted wisdom
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`in the field.
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`Federal Circuit Bar Association Model Jury Instructions §4.3c (2014); Ex. 1002,
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`¶37.
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`14.
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`I am also informed that the United States Patent Office supplies its
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`examining corps with a Manual of Patent Examining Procedure that provides
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`exemplary rationales that may support a conclusion of obviousness and I apply
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`these principles in my analysis below, including:
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`(a) Combining prior art elements according to known methods to yield
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`predictable results;
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`(b) Simple substitution of one known element for another to obtain
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`predictable results;
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`(c) Use of known technique to improve similar devices (methods, or
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`products) in the same way;
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`(d) Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`(e) “Obvious to try” – choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`(f) Known work in one field of endeavor may prompt variations of it
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`for use in either the same field or a different one based on design
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`incentives or other market forces if the variations are predictable to
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`one of ordinary skill in the art; or
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`(g) Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference
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`or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`MPEP § 2143; Ex. 1002, ¶38.
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`B.
`Legal Standards for Claim Interpretation
`15. As set forth in my June 24, 2016 Declaration in this case, I have been
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`informed and understand that, in Inter Partes Review, the claim terms are to be given
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`their broadest reasonable interpretation (BRI) in light of the specification. Ex. 1002,
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`¶36.
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`14
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`C. Legal Standards for a Motion to Amend
`16.
`I have been informed and understand that, in Inter Partes Review, the
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`patent owner has the burden to show its entitlement to the proposed claim
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`amendments, including written description support in the original disclosure and
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`patentability over the prior art.
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`III. SUMMARY OF THE INSTITUTED GROUND AND MR. BATES’S OPINIONS
`17.
`I understand that the Patent Trial and Appeal Board (“Board”) instituted
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`this Inter Partes review (“IPR”) on the Ground that 18, 21, 23, 25, 26, 28-31, 37, 38,
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`41, 45, and 46 of the ‘777 patent are obvious over Archer (Ex. 1003) in view of
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`Chang (Ex. 1004) and the knowledge and skill of a person of ordinary skill in the art
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`(“POSA”). Institution Decision, Paper 19, January 3, 2017.
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`18.
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`In his declaration in support of Patent Owner’s Response, Mr. Bates
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`opined that Archer does not disclose a “controlling device” for several reasons:
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`(a) There is no disclosure that server processor 128 performs the step
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`of connecting the first and second calls nor how this step is performed; and
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`(b)
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` There is no disclosure of a controlling device coupled to/in
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`communication with a switching facility because Archer’s gateways are edge
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`devices not switching facilities (and thus are necessarily connected to a PSTN edge
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`switch).
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`15
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`19.
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`In his declaration in support of Patent Owner’s Contingent Motion to
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`Amend, Patent Owner, Mr. Bates’s opinions overlap with his opinions in his
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`declaration in support of Patent Owner’s Response regarding Archer with respect to
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`substitute Claim 49. In his declaration in support of Patent Owner’s Contingent
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`Motion to Amend, Mr. Bates opines 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 access
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`controller or “TAC” (controlling device) external to the PSTN and thus necessarily
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`connected to an edge switch of the PSTN, or (2) discloses a TAC (controlling device)
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`internal to the PSTN that does not receive call requests or initiate call requests to
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`establish a call.
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`20. Thus, Mr. Bates’s opinions regarding the patentability of Claim 46 of
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`the ‘777 patent and substitute Claim 49 largely overlap.
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`IV. SUMMARY OF SUBSTITUTE CLAIM 49
`21.
`In its Motion to Amend, Patent Owner proposes to amend current Claim
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`46 of the ‘777 patent by making the following amendments:
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`(a)
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` Changing “a communication network”
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`to “a PSTN
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`communication network.”
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`(b) Changing the “switching facility” and “one of the switching
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`facilities” to “the particular PSTN tandem switch.”
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`16
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`(c) Changing “controlling device” to “tandem access controller.”
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`(d) Adding the limitations that the PSTN communication network
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`includes “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 the
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`particular PSTN tandem switch”, “wherein the PSTN tandem switches are not the
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`edge switches”, and “wherein the PSTN tandem switches are not directly connected
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`to any of the telephones.”
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`(e) Adding the limitation “wherein communications, including the
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`first request to establish the incoming call, between the tandem access controller and
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`the particular PSTN tandem switch occur without passing through any of the edge
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`switches.”
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`(f) Changing the limitation “receiving a first call” to “receiving a
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`first request to establish an incoming call.” Mot. To Amend, Paper 31, 2-3.
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`V. MR. BATES’S OPINIONS REGARDING THE PATENTABILITY OF SUBSTITUTE
`CLAIM 49
`In Patent Owner’s Motion to Amend, Mr. Bates opined that the prior
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`22.
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`art of record and prior art known to him and the Patent Owner should be grouped
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`into two categories, external art (EXT Art) and internal art (INT Art). Ex. 2040,
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`¶¶62-64.
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`23.
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`In his declaration in support of the Motion to Amend, Mr. Bates opined
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`that EXT Art teaches devices external to the PSTN that “were designed to
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`communicate with edge switches and were not designed to communicate using SS7
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`protocol.” Ex. 2040, ¶¶151, 116, 125-127. Mr. Bates also opined that INT Art
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`teaches “a closed system, such that its tandem switches and SCPs are not even
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`capable of processing a call that is sent over a network other than the PSTN.” Ex.
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`2040, ¶¶141-142.
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`24.
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`In his declaration in support of the Motion to Amend, Mr. Bates stated
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`that he did “not believe Petitioners have come forward with a single document that
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`shows something akin to a TAC connected to a tandem switch that does not
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`communicate call requests through an edge switch.” Ex. 2040, ¶145. Mr. Bates also
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`stated that he was “not aware of any such system.” Id.
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`25.
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`In his declaration, Mr. Bates also provides testimony regarding the state
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`of the art in May 2000 and what third parties were developing, including the “Baby
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`Bells”, but does not provide factual support for any of this testimony. Id., ¶¶146-
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`150. Mr. Bates’s opinion that Substitute Claim 49 is patentable over the prior art is
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`focused on the following two features that Mr. Bates opines are not known or
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`suggested in any known prior art:
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`(a) A tandem access controller (TAC) coupled to a tandem switch
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`(the “First Added Feature”). Ex. 2040, ¶152.
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`18
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`
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`(b) The TAC communicates, including a call request to establish a
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`call, with the tandem switch without passing through an edge switch (the “Second
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`Added Feature”). Id.
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`26. Regarding the First Added Feature, neither Patent Owner nor Mr. Bates
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`expressly construe the term “tandem access controller”. Mot. to Amend., 2-8; Ex.
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`1040. Rather, Patent Owner’s addition of the Second Added Feature to Substitute
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`Claim 49—that it is a controller communicating with a PSTN tandem switch without
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`an intervening edge switch—is the focus of the Patent Owner’s arguments (and Mr.
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`Bates’s opinions) on patentability. Mot. to Amend., 12-13; Ex. 2040, ¶¶116, 145,
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`152. Thus, although Mr. Bates identifies them as distinctly added features (Ex. 2040,
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`¶152), it appears that any distinction is one without a difference.
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`27. Notwithstanding, whether one or two features, in my opinion, these two
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`features are present in the prior art already of record in the Petition in this IPR, as
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`well as newly cited art that I discuss below.
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`28. Specifically, it is my opinion that Archer, which serves as the basis for
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`the instituted Ground includes both of these features.
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`29. Likewise, it is my opinion that the newly cited art of U.S. Patent No.
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`6,442,169 to Lewis (“Lewis”) (Ex. 1058) and U.S. Patent No. 6,333,931 (“LaPier”)
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`(Ex. 1057) both disclose these two features.
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`19
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`VI. ARCHER DISCLOSES THE FIRST AND SECOND ADDED FEATURES
`30.
`In his declaration, Mr. Bates opines that Archer’s gateway 126
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`interconnecting the PSTN 118 (136) to a packet network 130 must be connected to
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`an edge switch. Ex. 2040, ¶¶84-86, 120. I disagree with his opinion.
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`31.
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`In my June 24, 2016 Declaration, I identified server processor 128 in
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`conjunction with database 138 and gateway 1261 coupled to a tandem switch in
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`PSTN 118 (136) as described in Archer as the claimed “call processing system
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`coupled to a switching facility.” Ex. 1002, ¶¶232-238, 114, 117, 119, 122-127, 131,
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`
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` 1
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` Mr. Bates incorrectly states that Archer does not use the term “gateway” with
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`respect to component 126 (or 132) is inaccurate. See Ex. 1003, 5:34-35
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`(“Converter 126 can also be referred to as a gateway.”), 5:59-60 (“In general
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`PSTN-to-IP network gateway (i.e. converter 126) . . .”). Moreover, Mr. Bates’s
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`reliance on Archer’s other nomenclature for the same component (“converter”) as
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`indicating that gateway 126 only converts signals between analog and digital
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`formats is also incorrect as Archer explicitly discloses that gateway 126 may
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`“convert” or “translate” circuit-switched digital voice (PCM) into multiple
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`encoding schemes and digital packets suitable for packet networks (e.g. IP
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`packets). See id., 5:27-28; 5:59-62; 6:7-9; 8:18-21; 9:14-15; 11:23-25.
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`20
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`
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`134-137, 140, 141, 144-146; Pet., 48-49, 24-26. It is my opinion that these same
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`components also correspond to the newly claimed “tandem access controller (TAC)
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`coupled to the particular PSTN tandem switch” that includes the two newly added
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`features identified above.
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`32.
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`In my opinion, a POSA would understand that Archer discloses the
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`First and Second Added Features as server processor 128 communicates with the
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`tandem switch in PSTN 118 (136) via gateway 126 and without passing through an
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`edge switch. As I outline below, a POSA would understand that Archer’s gateway
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`126 is not an edge device or an edge switch and communicates on the PSTN using
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`SS7 signaling and a digital voice protocol used by PSTN tandem switches.
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`33.
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`In my opinion, Archer discloses that gateway 1262, passes information
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`(e.g. voice and signaling) through it, and sends and receives such information in
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`
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` 2
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` During his deposition, which I attended, Mr. Bates acknowledged that there is no
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`such thing as an “edge switch” in IP networks. Ex. 1059, 110:9-13; 114:17-20;
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`178:21-24. Thus, in my opinion, gateway 126 (which clearly has an IP address
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`and is thus on an IP network) cannot be an edge switch. Ex. 1003, Figures 2, 6;
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`6:6-9; 6:51-53, 6:64-67, 9:10-14.
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`21
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`
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`digital formats3 (e.g. PCM voice and IP voice packets). Ex. 1003, 5:10-11 (“Circuit-
`
`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.”); Ex. 1002, ¶¶232-238, 114, 117, 119, 122-127, 131, 134-137, 140, 141,
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`144-146; Pet., 48-49, 24-26.
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`34.
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`In my opinion, a POSA would understand that gateway 126
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`communicates both VoIP and PSTN signaling (i.e. SS7) over PSTN 118 (136) and
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`IP network 130 such as, for example, when it receives VoIP call notification
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`messages from server processor 128, and translates such messages into PSTN
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`signaling to cause a called party telephone (e.g. 120) to ring. Ex. 1003, 9:7-19, 9:31-
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`34, 11:20-25.
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`35.
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`In his declaration and during his deposition, Mr. Bates testified that the
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`
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` 3
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` In my opinion, Mr. Bates ignores the explicit disclosure in Archer that the
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`gateway receives digital voice (PCM) from the PSTN when he incorrectly asserts
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`that Archer discloses that PSTN-to-IP network gateway 126 only receives analog
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`signals over analog lines. Ex. 2040, ¶¶84-86; Ex. 1003, 5:59-62, 5:33-35, 5:42-46.
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`
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`22
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`
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`digital format used by Archer’s gateway 126 to communicate voice information with
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`PSTN 118 (136)—PCM—was typical for the “tandem level” in the PSTN, was used
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`by PSTN tandem switches (but not edge switches), and would “maintain the quality
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`of the call.” Ex. 105