Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.,
`Petitioners
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`DM2\7927069.5
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`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.,
`Petitioners
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`_____________________
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS,
`ADMINISTRATIVE PATENT JUDGES.
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
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`DM2\7927069.5
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`Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`
`TABLE OF CONTENTS
`
`Page
`
`A. Archer Discloses a Gateway Interconnecting a Controlling
`Device on an IP Network to a Tandem Switch in the PSTN ................ 4
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch
`or PSTN Edge Switch and Without any Technical Differences ........... 7
`C. Archer in view of Chang Discloses a Gateway Interconnecting
`a Controlling Device on an IP Network to a Tandem Switch in
`the PSTN ............................................................................................. 12
`D. Archer Discloses a Controlling Device Connecting First and
`Second Calls After the Second Call is Received by a
`Communication Device Associated with the Specified
`Recipient .............................................................................................. 14
`Conclusion: Archer in View of Chang and the Knowledge and
`Skill of a POSA Disclose All of the Limitations of the
`Challenged Claims Even Under Patent Owner’s Constructions ......... 16
`
`E.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this
`Case from All but One of the Cases Relied Upon by Patent
`Owner .................................................................................................. 18
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`B.
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`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification is Inapposite as it Refers to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention” ............................................................................. 20
`C. Applicant’s Broad Definition During Prosecution, and Varied
`Location and Function Between Claims, Confirms that the
`Scope of “Switching Facilities” is Not Limited to the Preferred
`Embodiment of a PSTN Tandem Switch ............................................ 22
`Patent Owner’s Disclaimer Arguments Do Not Limit the
`Recited Claim Terms ........................................................................... 26
`Conclusion: Archer in View of Chang and the Knowledge and
`Skill of a POSA Disclose All of the Limitations of the
`Challenged Claims Under the Broadest Reasonable
`Interpretation of the Claims or Patent Owner’s Constructions ........... 27
`
`D.
`
`E.
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`PETITIONERS’ REPLY EXHIBIT LIST
`
` Exhibit Number
`1001
`1002
`1003
`1004
`1006
`1007
`1010
`1057
`1058
`1059
`1060
`1061
`
`1062
`1063
`1064
`1065
`
`2019
`
`2020
`
`2022
`
`2042
`
`2043
`
`Document
`U.S. Patent No. 7,764,777 (“the ’777 Patent”)
`Expert Declaration of Dr. Thomas F. La Porta
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`U.S. Patent No. 8,115,298 (“the ’298 Patent”)
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`U.S. Patent No. 6,333,931 to LaPier (“LaPier”)
`May 8, 2017 Transcript of Deposition of Regis “Bud” Bates
`May 9, 2017 Transcript of Deposition of Regis “Bud” Bates
`March 1, 2017 Transcript of Deposition of Mr. Willis in
`IPR2016-01254, IPR2016-01257
`U.S. Patent No. 5,164,879 (Honeywell v. ITT)
`U.S. Patent No. 6,618,707 (Chi. Bd. Options)
`U.S. Patent No. 4,893,306 (Telcordia Techs.)
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Reply
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Declaration of Regis J. “Bud” Bates in Support of Patent
`Owner’s Response in IPR2016-01262
`U.S. Pat. App. No. 11/948, 965, filed on November 20, 2007
`(annotations added by Patent Owner)
`U.S. Pat. App. No. 10/426,279, filed on April 30, 2003
`(annotations added by Patent Owner)
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` Exhibit Number
`2044
`
`Document
`U.S. Pat. App. No. 09/565,565, filed on May 4, 2000
`(annotations added by Patent Owner)
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`I.
`
`INTRODUCTION
`Nothing in Patent Owner’s Response refutes the strong grounds for
`
`obviousness that led this Board to institute this Inter Partes review (“IPR”) on the
`
`Ground that Archer (EX1003) in view of Chang (EX1004) and the knowledge and
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`skill of a person of ordinary skill in the art (“POSA”) render obvious claims 18, 21,
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`23, 25, 26, 28-31, 37, 38, 41, 45, and 46 of U.S. Patent No. 7,747,777 (“the ’777
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`Patent”). Patent Owner’s arguments in response to this Ground include that:
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`
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`(1) a POSA understood in May 2000 that the only way to connect to the
`
`PSTN was through a PSTN edge switch and therefore a POSA would
`
`understand that Archer fails to disclose connecting a controlling device to
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`the PSTN through a PSTN tandem switch; and
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`
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`(2) Archer does not disclose a “controlling device” that performs the step of
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`“connecting the first and second calls” nor how this step is performed.
`
`Underlying these two arguments is Patent Owner’s third argument –
`
`essentially rehashing its disclaimer arguments in support of narrowing certain claim
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`terms. However, as described below, Archer and Chang disclose each of the
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`limitations in the Challenged Claims even if the claims are narrowed as urged by
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`Patent Owner.
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`Patent Owner’s first argument—that the only way to interconnect a packet
`
`network to the PSTN was through an edge switch—lacks any factual support and is
`
`simply inaccurate. For example, during his deposition, Patent Owner’s expert (Mr.
`
`Bates) acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Additionally, in May 2000, a POSA understood
`
`that PSTN and IP networks could be interconnected at the tandem level and doing
`
`so posed no technical challenges over interconnecting such networks at a different
`
`switch such as a PSTN end office switch. For example, as illustrated in LaPier
`
`(EX1058) and Lewis (EX1057), from two of the major industry players in
`
`converging networks (Cisco and Level 3, respectively), a POSA understood that
`
`interconnecting the PSTN to a packet switched network through a tandem switch, or
`
`an edge switch, provided maximum flexibility.
`
`Patent Owner’s second argument—Archer does not disclose that server
`
`processor 128 performs the step of “connecting the first and second calls . . . after
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`the second call is received by a communication device” or sufficient details of how
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`this step is performed—is also factually inaccurate. For example, Mr. Bates testified
`
`that the “connecting” step recited in the claims of the ’777 Patent is commensurate
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`in scope to the “establishing the voice communication . . . after the call is completed”
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`step recited in the claims of the related U.S. Patent No. 8,457,113 (“the ’113
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`Patent”). Archer expressly discloses that “FIG. 4 is a flowchart of the software
`
`which will execute on server processor 128” and FIG. 4 expressly describes such
`
`software executing the step of:
`
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`Moreover, Archer’s description of how software executing on server processor 128
`
`performs this step is at least as detailed as the description in the Shared Specification
`
`and Mr. Bates testified that further details were well-known to a POSA and not
`
`required to be described in a patent.
`
`Because Patent Owner’s first two arguments are unsupported and inaccurate,
`
`Archer in view of Chang disclose all of the limitations of the Challenged Claims
`
`even under Patent Owner’s proposed claim constructions of “switching facility”,
`
`“coupled to”/“in communication with”, and “controlling device.”
`
`However, the Challenged Claims are also obvious under the instituted Ground
`
`because Patent Owner’s third argument—that the specification and prosecution
`
`history of the ’777 Patent clearly and unmistakably narrow the scope of these claim
`
`terms—is also unsupported and inaccurate. Indeed, this third argument is simply a
`
`rehash of its disclaimer arguments that are without any legal or factual support and
`
`for which the Board has already twice rejected (see Papers 19, 23).
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`Accordingly, the Board should find that the instituted claims are obvious.
`
`II. ARCHER IN VIEW OF CHANG AND THE KNOWLEDGE AND
`SKILL OF A POSA DISCLOSE EACH LIMITATION OF THE
`CHALLENGED CLAIMS
`A. Archer Discloses a Gateway Interconnecting a Controlling Device
`on an IP Network to a Tandem Switch in the PSTN
`As set forth in the Petition, Archer discloses that gateway 1261, that is coupled
`
`to server processor 128, passes information (e.g. voice and signaling) between the
`
`
`1 Patent Owner’s position that Archer doesn’t use the term “gateway” with respect
`
`to component 126 (or 132) is simply false. See EX1003, 5:34-35 (“Converter 126
`
`can also be referred to as a gateway.”), 5:59-60 (“In general PSTN-to-IP network
`
`gateway (i.e. converter 126) . . .”). Moreover, Patent Owner’s reliance on Archer’s
`
`other nomenclature for the same component (“converter”) as indicating that
`
`gateway 126 only converts signals between analog and digital formats is also false
`
`as Archer explicitly discloses that gateway 126 may “convert” or “translate”
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`circuit-switched digital voice (PCM) into multiple encoding schemes and digital
`
`packets suitable for packet networks (e.g. IP packets). See id., 5:27-28; 5:59-62;
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`6:7-9; 8:18-21; 9:14-15; 11:23-25; EX1065, ¶24, n.2.
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`PSTN 118 (136) and a packet network 130 (e.g. IP network)2. Pet., 21-26, 36-37,
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`39-40, 41, 42-45, 48-49; EX1002, ¶¶119, 129-134, 138-143, 191-194, 207, 213-220,
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`232-238. Specifically, Archer discloses that PSTN-to-IP network gateway 126
`
`would be connected to a tandem switch in the PSTN 118 (136) because it receives
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`voice from the PSTN as pulse coded modulation (PCM) which is used by a tandem
`
`switch but not an edge switch. Id.; EX1003, 5:59-62 (“PSTN-to-IP network gateway
`
`(i.e. converter 126) should be able to support the translation of PCM to multiple
`
`encoding schemes to interwork with software from various vendors.”)3; see 5:10-11
`
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`2 Mr. Bates defined a “tandem switch” as a “switch that passes some form of
`
`information through it” and stated that he used this definition in his analysis for
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`this proceeding. EX1060, 356:9-357:8. Thus, Archer’s gateway (126) cannot be
`
`an “edge switch” because it meets this definition and has an IP address such that it
`
`is on an IP network, where Mr. Bates acknowledged that there is no such thing as
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`an “edge switch.” EX1059, 110:9-13; 114:17-20; 178:21-24; EX1065, ¶24, n.3.
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`3 Patent Owner ignores the explicit disclosure in Archer when it incorrectly asserts
`
`that Archer discloses that PSTN-to-IP network gateway 126 only receives analog
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`signals over analog lines. Resp., 46-47, 56-60; EX2022, ¶¶74-76, 85-92, 94;
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`EX1065, ¶25, n.4.
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`(“Circuit-switched network 118 can be . . . a digital network”); 5:23-27 (“[T]he heart
`
`of most telephone networks today is digital.”); 5:33-35; 5:42-46; EX1065, ¶25. Mr.
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`Bates confirmed that digital PCM protocol is used by a tandem switch and would
`
`overcome the transmission loss and impairment problems identified in the Shared
`
`Specification associated with analog signals (’777 Patent, 1:54-62). EX1059, 22:23-
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`23:8; 26:7-15; EX2022, ¶45. Thus, Patent Owner’s arguments that Archer’s
`
`gateway 126 interconnecting the PSTN 118 (136) to a packet network 130 must be
`
`connected to an edge switch, ignores the express teaching of Archer and its own
`
`expert’s testimony. Id., Resp., 46-47, 56-60; EX2022, ¶¶74-76, 85-94; EX2019,
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`267:19-268:4; 271:2-273:12; EX1065, ¶¶24-27.
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`Rather, a POSA would understand that, as set forth in the Petition, Archer
`
`discloses that server processor 128 is coupled to a PSTN tandem switch in PSTN
`
`118 (136) via PSTN-to-IP network gateway 126. Pet., 21-26, 48-49; EX1002,
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`¶¶119, 129-134, 138-143, 232-238; EX2019, 267:19-268:4; 271:2-273:12; EX1059,
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`22:23-23:8; 26:7-15; EX2022, ¶45; EX1065, ¶28.
`
`Moreover, even if the claims are narrowed as urged by Patent Owner such that
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`“switching facility” can only be a PSTN tandem switch, and not a gateway, and that
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`“controlling device” must be directly connected to such a PSTN tandem switch,
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`Archer discloses this architecture. EX1065, ¶¶29-30. Archer discloses a tandem
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`access controller (gateway 126 and server processor 128 and database 138 purple)
`
`interconnecting an IP network (blue) to the PSTN (green) through a PSTN tandem
`
`switch (annotated in green below and as set forth supra)) as shown in annotated
`
`Figure 2:
`
`PSTN
`PSTN tandem
`switch
`PCM
`
`TAC
`
`SS7
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`IP network
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`EX1003, FIGS. 2 (annotated above), 6; Pet. 24, 26, 48-49; EX1002, ¶¶135-137, 145-
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`146, 232-238; EX2019, 267:19-268:4; 271:2-273:12; EX1059, 22:23-23:8; 26:7-15;
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`EX2022, ¶45; EX1065, ¶30.
`
`B. A POSA Understood that an IP Network Converging with the
`PSTN Could Be Connected to Either a PSTN Tandem Switch or
`PSTN Edge Switch and Without any Technical Differences
`Patent Owner’s assertions that (1) Archer discloses gateway must be
`
`connected to the PSTN through a PSTN edge switch and therefore the gateway is an
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`“edge device” (Resp., 55-60); (2) Archer does not inherently disclose that its
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`gateway is connected to a tandem switch (Resp., 58-59); and (3) it would not be
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`obvious to connect Archer’s gateways to a tandem switch (Resp., 59-60), all stem
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`from its expert’s misrepresentation of the state of the art.
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`In May 2000, it was well-understood to a POSA to interconnect an IP network
`
`to the PSTN through an edge switch or a tandem switch to provide flexibility.
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`EX1065, ¶¶32-34. For example, Level 3’s patent to Lewis (EX1057) discloses a
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`tandem access controller (open architecture switch 502 annotated in purple)
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`interconnecting an IP network (blue) to the PSTN (green) through a PSTN tandem
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`switch (AT 106) (and separately also through an edge switch (EO 104)) as shown in
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`annotated Figures 4 and 5. EX1059, FIGS. 4-5 (annotated below), 9A, 10A, 10C,
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`18A-18B, 12:50-56, 15:7-23, 19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21,
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`26:9-14, 29:44-51, 30:4-35; EX1065, ¶¶33-35.
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`PSTN
`PSTN tandem
`switch 106
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`PSTN edge
`switch 104
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`SS7
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`PCM
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`TAC 502
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`IP network
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`PSTN
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`PCM
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`TAC 502
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`SS7
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`IP network
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` Likewise, Cisco’s patent to LaPier (EX1058) discloses a tandem access
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`controller (Network Access Server (NAS) 118a and Signaling Access Server 112
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`annotated in purple) interconnecting an IP network (blue) to the PSTN (green)
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`through a PSTN tandem switch 114 (and separately also through an edge switch 116)
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`as shown in annotated FIG. 1B. EX1058, FIGS. 1B (annotated below), 1C, 7A, 7B,
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`4:58-5:4, 6:55-62, 9:18-22, 8:61-9:7, 9:26-29, 14:3-11, 35:13-16, 35:54-62, 38:13-
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`40, 38:51-62; EX1065, ¶¶33, 36-37.
`
`TAC
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`SS7
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`PSTN
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`PSTN tandem
`switch 114
`PSTN edge
`switch 116
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`SS7
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`PCM
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`IP network
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` Mr. Bates’s contrary opinion—a POSA in May 2000 would understand that
`
`the state of the art taught that devices external to the PSTN must receive or send call
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`requests via the PSTN through an edge switch first, not a tandem switch—is simply
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`inaccurate. Id., Resp., 41; EX2022, ¶68; EX1065, ¶¶32-43. Notably, Mr. Bates
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`acknowledged that, in preparing his declarations, he did not actively research the
`
`state of the art with respect to converging IP and PSTN networks (as recited in the
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`Challenged Claims). EX1059, 192:11-14. It is also noteworthy that Mr. Bates cited
`
`no factual support for his own opinion (EX2022, ¶68), and his citations to the
`
`testimony of Petitioners’ expert, and the experts of other Petitioners in different
`
`IPRs, were taken out of context. Indeed, both Dr. La Porta (Petitioners’ expert) and
`
`Mr. Willis (expert in other IPRs) testified that Mr. Bates’s opinion that devices
`
`external to the PSTN must connect to the PSTN through an edge switch first is
`
`inaccurate with respect to converging PSTN and IP networks. See, e.g., EX2019,
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`350:4-24; EX1061, 80:9-20. When presented with this conflicting testimony, Mr.
`
`Bates acknowledged that it was well known to interconnect an IP carrier network
`
`and the PSTN at a tandem switch. Id.; EX1059, 201:22-202:11, 205:15-206:16,
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`211:21-213:14.
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`Therefore, Mr. Bates’s factually inaccurate and unsupported opinion should
`
`be entitled to little weight. Indeed, the state of the art prior to May 2000 included
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`systems in which devices external to the PSTN (e.g. on an IP network) sent and
`
`received call requests via the PSTN through (1) controlling devices on IP networks
`
`connected to PSTN tandem switches (and not PSTN edge switches) via gateways
`
`(e.g. Archer) or (2) controlling devices connected to PSTN tandem switches (and
`
`not PSTN edge switches) (e.g. Lewis, LaPier). EX1065, ¶¶32-41. Moreover, as
`
`demonstrated by LaPier (EX1058) and Lewis (EX1057), interconnecting PSTN and
`
`IP networks at the tandem level was well known and posed no technical challenges
`
`over interconnecting such networks at a different switch such as a PSTN end office
`
`switch. EX1057, FIGS. 4, 5, 15:7-23, 19:24-28, 19:54-61; EX1058, 1B, 1C, 6:55-
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`62; EX1065, ¶42. Moreover, a POSA understood the advantages of connecting a
`
`controlling device to a tandem switch as taught in LaPier and Lewis including that
`
`doing so allows efficient control of the routing of calls using standard switching
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`protocols and equipment and achieves Archer’s stated goal of reducing switching
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`traffic of the PSTN. EX1065, ¶¶43-46.
`
`C. Archer in view of Chang Discloses a Gateway Interconnecting a
`Controlling Device on an IP Network to a Tandem Switch in the
`PSTN
`As set forth in the Petition, Chang discloses that PSTN tandem switch (11T),
`
`that is coupled to service control point (SCP) 19, passes information (e.g. voice and
`
`signaling) through it, is a digital switch and sends and receives such information in
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`a digital format. Pet., 16-17, 34-35, 56-58; EX1002, ¶¶108, 170-171, 187, 262, 265-
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`269; EX1004, Fig. 1; 8:2-6; 8:29-33; 8:37-40; 8:66-9:3, 9:8-13; 9:31-34 (“The SSP
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`tandem 11T then communicates with the SCP via an SS7 type CCIS link . . . The
`
`SSP capable tandem switches are digital switches.”); EX1065, ¶47. Mr. Bates’s
`
`testimony is that “handling calls at the tandem level”, as Chang does, “maintains the
`
`quality of the call as it is processed within the PSTN where the signal will most
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`likely be in digital form.” EX2022, ¶45.
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`As also set forth in the Petition, Petitioners detailed how Chang discloses a
`
`controlling device coupled to PSTN switching facilities including tandem switches
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`(11T). Id. Petitioners further detailed the motivation for a POSA to modify Archer’s
`
`server processor 128 and database 138 with the teaching of Chang to include a web
`
`server 525, and to connect the controlling device to a tandem switch (11T) in the
`
`PSTN. Pet., 16-17, 31-32, 34-35; EX1002, ¶¶108, 166-179, 170-171, 187, 244-246,
`
`262, 265-269; EX1065, ¶48.
`
`As further set forth in the Petition, a POSA would be motivated to combine
`
`the teachings of Archer and Chang to connect Archer’s gateway 126 to a tandem
`
`switch to allow Archer to efficiently control routing of calls using standard switching
`
`protocols and equipment and achieve Archer’s stated goal of reducing switching
`
`traffic of the PSTN. Pet., 36-39; EX1002, 124-127, 145-146, 246; EX1065, ¶¶49-
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`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`51. Moreover, motivation to connect Archer’s gateway 126 to a tandem switch (11T)
`
`in the PSTN is found expressly in Archer which states that gateway 126 preferably
`
`receives PCM voice from PSTN 118 (136) which a POSA understood as a protocol
`
`used by a tandem switch but not an edge switch. §II.A supra. Furthermore, a POSA
`
`would understand that the specific transmission loss and impairment problems
`
`identified in the Shared Specification (for ’777 Patent at EX1001, 1:54-624) could
`
`be solved using the system disclosed in Archer in view of Chang and the knowledge
`
`and skill of a POSA. EX2022, ¶45; EX1059, 16:6-20; 21:25-22:7, 26:7-15; 30:17-
`
`31:6; EX1060, 355:4-12; 356:16-22; EX1065, ¶¶51-52.
`
`D. Archer Discloses a Controlling Device Connecting First and Second
`Calls After the Second Call is Received by a Communication Device
`Associated with the Specified Recipient
`As set forth in the Petition, a POSA reading Archer would understand that the
`
`reference discloses a controlling device connecting first and second calls after the
`
`second call is received by a communication device associated with the specified
`
`
`4 Mr. Bates testified that a POSA would understand that these identified
`
`transmission losses and impairments were from certain prior art PSTN switches
`
`that used analog end lines and connected two analog end lines together. EX2022,
`
`¶45 (“Running an analog voice signal from an edge switch to an edge device over
`
`copper wire degrades the quality of the signal.”); EX1059, 15:23-16:5.
`
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`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`recipient. Pet., 40-41; see id. at 21-23, 25-26, 36-37, 42-45; EX1002, ¶¶129-134,
`
`138-143, 191-194, 207, 213-220; EX1065, ¶54. For example, Mr. Bates testified that
`
`the “connecting” step recited in the claims of the ’777 Patent is commensurate in
`
`scope to the “establishing the voice communication . . . after the call is completed”
`
`step recited in the claims of the ’113 Patent. EX1059, 250:23-251:17; EX1060,
`
`331:9-332:20; EX1065, ¶55. As identified in the Petition, Archer expressly discloses
`
`that “FIG. 4 is a flowchart of the software which will execute on server processor
`
`128” and Figure 4 expressly describes such server processor software executing the
`
`step of:
`
`
`Id.; EX1003, 6:47-48, Figure 4 (68), see id. at 7:14–21. Archer also expressly
`
`discloses that software executing on server processor 128 performs this step after
`
`receiving signaling that the specified recipient has answered the second call (e.g.
`
`“response”, “pick-up notification”), which Mr. Bates acknowledged is when the
`
`second call is completed. Id.; see EX1003, Figure 4 (64), 6:30-32, 8:43-45, 9:31-
`
`36; EX1065, ¶¶54-57; EX1059, 155:13-19, 250:23-251:17; EX1060, 331:17-
`
`332:20.
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`Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`
`Patent Owner’s additional arguments (Resp., 52, 54) that Archer does not
`
`describe sufficient details regarding how software executing on sever processor 128
`
`performs this “connecting” step are also misplaced as Mr. Bates acknowledged that
`
`no details of how the recited “connecting the first and second calls” claim step is
`
`performed need be disclosed in a patent specification because such details were well-
`
`known to a POSA prior to May 2000. EX1059, 155:13-158:11; see also, e.g.,
`
`EX1001, 4:64-67 (“[T]he TAC 10 . . . connects the two calls.”); 6:9 (“The TAC 10
`
`links the two calls.”); 9:53-55 (“When the subscriber answers the phone, TAC 10
`
`completes the connection between the two parties.”); 11:4-6 (“When a party answers
`
`one of the ringing lines, the answering party is connected to the calling party, and
`
`the other calls are abandoned.”). Thus, a POSA would understand that Archer
`
`discloses a controlling device (server processor 128 and database 138) connecting
`
`the first and second calls after the second call is received by a communication device
`
`associated with the specified recipient. EX1065, ¶¶58-60.
`
`E. Conclusion: Archer in View of Chang and the Knowledge and Skill
`of a POSA Disclose All of the Limitations of the Challenged Claims
`Even Under Patent Owner’s Constructions
`As set forth in the Petition and supra, a POSA would understand that Archer
`
`in view of Chang and the knowledge and skill of a POSA discloses a gateway (126)
`
`interconnecting a server processor 128 and database 138 on a packet network (IP
`
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`Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`network 130) to a tandem switch in the PSTN (tandem switch (e.g. 11T) in PSTN
`
`118 (136)). §§II.A-C.
`
`Thus, even if the Board adopts Patent Owner’s constructions of a “switching
`
`facility” as a PSTN tandem switch (Resp., 32-37), of “coupled to”/“in
`
`communication with” as being connected to without an intervening edge switch
`
`(Resp., 37-40), and of “controlling device” as a controller connected to a PSTN
`
`tandem switch without an intervening edge switch (Resp., 21, 34, 37), the
`
`Challenged Claims are invalid as obvious over Archer in view of Chang and the
`
`knowledge and skill of a POSA because a POSA would understand this ground
`
`discloses a controlling device connected to a PSTN tandem switch without an
`
`intervening edge switch. Id.; see EX1060, 303:15-304:4; 325:10-15; 326:11-
`
`327:12; 356:16-357:8; 365:25-366:6; 367:25-368:11; 369:5-370:17; 380:4-381:17;
`
`EX1065, ¶¶61-62. Furthermore, the Challenged Claims are invalid as obvious over
`
`the instituted ground because all of the limitations of the Challenged Claims are
`
`disclosed. §§II.A-D; EX1065, ¶63.
`
`
`
`
`
`
`
`
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`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`III. THE CHALLENGED CLAIMS ARE ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY” AS
`ASSERTED BY PATENT OWNER
`The Challenged Claims are also obvious over both grounds because Patent
`
`Owner’s disclaimer arguments regarding “switching facility” are factually and
`
`legally unsupported.
`
`The term “switching facility” does not appear in the specification of any of
`
`the claimed priority documents5, but was instead introduced for the first time during
`
`prosecution of the application leading to the ’777 Patent in February 2010. EX1010,
`
`66, 68-80, 84-88. Specifically, Applicant amended several existing claims to include
`
`“switching facility” and added new claims reciting the term. EX1010, 68-80.
`
`A. Applicant’s Introduction of “Switching Facilities” for the First
`Time During Prosecution of the ’777 Patent Distinguishes this Case
`from All but One of the Cases Relied Upon by Patent Owner
`As a threshold matter, the undisputed fact that “switching facilities” was not
`
`used in the Shared Specification distinguishes this case from all but one6 of the cases
`
`
`5 The ‘777 Patent application (EX2042), App. No. 09/565,565 (EX2044; EX1055),
`
`and App. No. 10/426,279 (EX2043; EX1056). EX1001, 1.
`
`6 Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006); §III.B
`
`infra.
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`Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`relied upon by Patent Owner for its disclaimer arguments. EX1006; Resp., 11-15,
`
`26-28. In each of these cases, the claim terms at issue were used throughout the
`
`specification to provide evidence as to their meaning. In re Man Mach. Interface
`
`Techs. LLC, 822 F.3d 1282, 1286-1287 (Fed. Cir. 2016); OpenWave Systems, Inc.
`
`v. Apple Inc., 808 F.3d 509, 511-516 (Fed. Cir. 2015); Chi. Bd. Options Exch., Inc.
`
`v. Int’l Secs. Exch., LLC, 677 F.3d 1361, 1363-1365, 1371-1373 (Fed. Cir. 2014);
`
`Telcordia Techs., Inc. v. Cisco Sys., 612 F.3d 1365, 1367-1370, 1374-1375 (Fed.
`
`Cir. 2010); Akamai Techs. Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1323-
`
`1328 (Fed. Cir. 2010); Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1132-1137
`
`(Fed. Cir. 2003); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`
`F.3d 1337, 1339-1340, 1342-1343 (Fed. Cir. 2001).
`
`Notwithstanding the boundaries of its own cited cases, Patent Owner argues
`
`that the Shared Specification, despite the Applicant not using “switching facility”
`
`therein, retroactively limits the meaning of this term because it identified (1) various
`
`problems in prior art systems and (2) directly connecting the controlling device to a
`
`PSTN tandem switch as the preferred embodiment. Resp., 9, 15-19, 21, 34.
`
`However, such retroactive narrowing is only permitted if the Shared Specification
`
`clearly and unmistakably identified “the invention” or “the present invention” as: (1)
`
`directly connecting the controller to a PSTN tandem switch (which it does not), or
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`Reply to Patent Owner’s Response
`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`(2) solving all of identified prior art problems (which it does not). See Honeywell
`
`Int’l, 452 F.3d at 1315-1316, 1318; Honeywell Inc. v. Victor Co. of Japan, LTD.,
`
`298 F.3d 1317, 1323-1326 (Fed. Cir. 2002).
`
`B.
`
`Patent Owner’s Alleged Evidence of Disclaimer in the Shared
`Specification
`is
`Inapposite as
`it Refers
`to “Preferred”
`Embodiments or Systems Rather Than “the Invention” or the
`“Present Invention”
`In the only case relied upon by Patent Owner in which a claim term was
`
`introduced for the first time during prosecution (Honeywell Int’l, Inc.), the
`
`specification characterized, on several occasions, the “invention” or “the present
`
`invention” as the narrower meaning adopted by the Federal Circuit for the newly
`
`introduced term. 452 F.3d at 1315-1316, 1318; EX1062 at 1:8-9; 1:40-43; 1:43-49;
`
`3:41-43. In contrast, here, the identified solutions to prior art problems in the Shared
`
`Specification explicitly refer to a “preferred”, “one”, or “another” embodiment or
`
`system:
`
`A preferred embodiment of the inventive system described herein
`connects at the tandem, thereby eliminating these problems. EX1001,
`1:63-65;
`In one embodiment, the system includes a processor (referred to
`herein as a tandem access controller) connected to the PSTN which
`would allow anyone to directly provision, that is to say set-up and
`make immediate changes to, the configuration of his or her phone
`line. In another embodiment, a tandem access controller (TAC)
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`IPR 2016-01262
`U.S. Patent No. 7,747,777
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`
`subsystem is connected internally to the PSTN in a local service area.
`The TAC provides fea
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