Supplemental Brief in Response to Patent Owner’s Motion to Amend
`IPR 2016-01262
`U.S. Patent No. 7,764,777
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.,
`Petitioners
`v.
`
`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’ SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`DM2\8289348.5
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`IPR 2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`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’ SUPPLEMENTAL BRIEF IN RESPONSE TO PATENT
`OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`DM2\8289348.5
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`
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ............................................................................................... 1
`I.
`A. Preliminary Matters .......................................................................................... 1
`B. Petitioner’s Supplemental Briefing .................................................................. 2
`II. THE ’777 PATENT’S DESCRIPTION OF THE STATE OF THE ART AND
`THE ALLEGED INVENTION ................................................................................. 3
`III. CHALLENGES AND STATUTORY GROUNDS FOR CHALLENGES ........ 7
`A. Motivation to Combine Lewis or LaPier and AAPA. ...................................... 7
`B. Challenge 1: Lewis in View of AAPA ............................................................. 8
`1. Claim 49: “incoming call processing” .......................................................... 8
`2. Claim 49: “PSTN telecommunications network and switches” .................... 9
`3. Claim 49: “web-enabled” ...........................................................................10
`4. Claim 49: “conditional call blocking” ........................................................11
`A. Challenge 2: LaPier in View of the AAPA ....................................................12
`1. Claim 49: “incoming call processing” ........................................................12
`2. Claim 49: “PSTN telecommunications network and switches” .................13
`3. Claim 49: “web-enabled” ...........................................................................13
`4. Claim 49: “conditional call blocking” ........................................................15
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`PETITIONERS’ SUPPLEMENTAL BRIEF EXHIBIT LIST
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` Exhibit Number
`1001
`1002
`1003
`1057
`1058
`1059
`1060
`1065
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`1066
`
`2019
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`2020
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`2040
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`2041
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`2062
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`Document
`U.S. Patent No. 7,764,777 (“the ’777 Patent”)
`Expert Declaration of Dr. Thomas F. La Porta
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 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
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Reply to Patent Owner’s Response
`Expert Declaration of Dr. Thomas F. La Porta in Support of
`Opposition to Motion to Amend
`Deposition Transcript of Dr. La Porta, Feb. 24, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Deposition Transcript of Dr. La Porta, Feb. 23, 2017, for IPR
`2016-01259, -01261, -01262, and -01263.
`Expert Declaration of Regis “Bud” Bates in Support of Patent
`Owner’s Motion to Amend
`Section 112 Written Description Support for the Proposed
`Substitute Claim
`Clean and Redlined Versions of the Proposed Substitute Claim
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`INTRODUCTION
`I.
`Petitioners submit this supplemental brief pursuant to the Board’s October 19,
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`2017 order to address “the issue regarding the unpatentability of the proposed
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`substitute [Claim 49 of U.S. Pat. No. 7,764,777 (“the ’777 Patent”)]” and
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`specifically to “address[] original claim limitations not previously addressed by
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`Petitioners based on the prior art in the record.” Paper 65 (“Aqua Order”), 6.
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`Preliminary Matters
`A.
`Petitioners contend that the Board’s March 21, 2017 order (Paper 29, 4-6) was
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`correct that the burden of persuasion on the Motion to Amend (Paper 31) is
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`properly on the Patent Owner to show patentability of Claim 49. In Aqua Prods.,
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`Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed. Cir. Oct. 4, 2017), the
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`Federal Circuit shifted this burden onto Petitioners to show unpatentability.
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`Petitioners object to and reserve their rights to challenge the Aqua decision, and
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`any reliance on that decision by the Board.
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`In order to preserve this right, Petitioners object to the Aqua Order (Paper 65,
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`pp. 6-7) on the ground that: (1) in view of the absence of rules issued by the PTO
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`addressing this burden, it is improper for the Board in the first instance to engage
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`in rulemaking in the Order, and (2) it violates Petitioners’ due process rights. The
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`Aqua Order does not account for the difference between the burden of showing
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`patentability and unpatentability. In order to meet its burden of patentability,
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`Patent Owner needed only to identify a single limitation that is missing from the
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`prior art. Under 37 C.F.R. §§ 42.20, 42.24 and 42.121, Patent Owner had 25 pages
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`to argue the either of the two alleged limitations in Claim 49 were missing from the
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`prior art, and the Board authorized Patent Owner to submit its §112 support in a
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`separate chart. Paper 29, 2-7; Paper 31, 12-13, 22. On the other hand, for a
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`petitioner to meet its burden of unpatentability, it needs to show where every
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`limitation of a claim is found in the prior art. In light of these different burdens, it
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`is improper and unduly prejudicial for the Board to issue a rule limiting Petitioners
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`to only 15 pages for this Supplemental Briefing, especially while prohibiting them
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`from: (1) using expert testimony, including in support of any Graham analysis, and
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`(2) incorporating by reference arguments from prior briefing. Aqua Order, 5-7.
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`Petitioner’s Supplemental Briefing
`B.
`In their Opposition (Paper 35), Petitioners addressed the two features that
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`Patent Owner asserted were not found in the prior art. Per the Board’s Aqua Order,
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`this Supplemental Briefing is directed to the remaining four limitations:
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`Proposed Substitute Claim 49 Limitation
`“A method for processing an incoming call from a
`particular PSTN tandem switch on a PSTN communication
`network using a tandem access controller”
`“wherein the PSTN communication network comprises
`edge switches connected to telephones on one side and
`PSTN tandem switches on the other side, wherein the
`PSTN tandem switches include the particular PSTN
`tandem switch, wherein the edge switches route calls
`within a local geographic area, wherein the PSTN tandem
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`Abbreviation
`“incoming call
`processing”
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`“PSTN
`telecommunications
`network and
`switches”
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`switches route calls to the edge switches or to the PSTN
`tandem switches in other geographic areas, wherein the
`PSTN tandem switches are not the edge switches, and
`wherein the PSTN tandem switches are not directly
`connected to any of the telephones”
`“identifying a control criteria previously associated with
`the specified recipient at the tandem access controller,
`wherein the control criteria is previously entered via a
`web-based interface”
`“wherein the control criteria . . . instructs the tandem
`access controller to block calls for the specified recipient;
`and blocking the incoming call received at the tandem
`access controller in accordance with the control criteria.”
`II. THE ’777 PATENT’S DESCRIPTION OF THE STATE OF THE ART
`AND THE ALLEGED INVENTION
`Based on the admissions in the specification and by Patent Owner’s expert
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`“conditional call
`blocking”
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`“web enabled”
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`described below, Petitioners have annotated Figure 2 to show the state of the art:
`
`Conventional PSTN
`tandem switch 16
`
`Conventional PSTN signaling (SS7) and voice
`
`Conventional PSTN
`tandem switch 16
`
`Well-known
`central office
`17
`
`Well-known
`central office
`18
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`Conventional VoIP
`signaling and voice
`
`Conventional
`Web /
`Internet
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`Conventional phones (14, at 20),
`computers, VoIP-capable phone 21
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`Subscriber 12
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`Calling party 20
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`The specification acknowledges that the alleged invention uses conventional
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`edge and tandem switches in the PSTN (shaded green); conventional SS7 signaling
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`that is communicated within the PSTN; and conventional calling devices:
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`The Public Switched Telephone Network (PSTN) consists of a plurality of
`edge switches connected to telephones on one side and to a network of
`tandem switches on the other. The tandem switch network allows
`connectivity between all of the edge switches, and a signaling system is
`used by the PSTN to allow calling and to transmit both calling and called
`party identity. (EX1001, 1:40-46, 4:44-51.)
`At the time of the invention, the PSTN utilized the Signaling System 7
`(“SS7”) protocol to set up calls. ‘Setting up’ calls refers to the exchange of
`control signaling that causes the establishment of a path over which voice
`data can flow. (EX2022, ¶40; EX2040, ¶40.)
`The specification also acknowledges that it uses the conventional Web (e.g. the
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`Internet) (shaded blue); conventional equipment within the Web (e.g. servers); and
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`conventional devices (e.g. computers, VoIP-capable phones)–in conventional ways
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`(e.g. using a web portal to enter or change call control information, VoIP):
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`Today, there are web-based companies managing 3rd-party call control, via
`the toll-switch network, which allow users to enter call control information
`through a web portal. (EX1001, 1:29-32, 5:10-12; EX1060, 271:8-18.
`Patent Owner’s expert also confirmed that the use of a web-enabled processing
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`system to enter call control information was known:
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`Q: “[I]t's your testimony that entering . . . call control information for
`telephone features through a web portal was known; is that right?” A: “It
`was disclosed as those things known in the industry.” EX1060, 271:12-18.
`Q: “A web portal would include a web server; correct?” A: “Typically, it
`would, yes.”); EX1060, 272:18-20; EX1059, 54:14-21, 55:6-15, 55:23-25.
`The specification also acknowledges that signaling and voice between
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`converging networks (e.g. PSTN and the Internet) was done in a conventional
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`manner—indeed, the only disclosure of communications between convergent
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`networks is the bi-directional arrow labeled “VoIP” in Figure 2 (see above).
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`Likewise, Patent Owner’s expert repeatedly confirmed that making a VoIP call
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`and the systems that allowed VoIP to PSTN calls were conventional and known:
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`“Q. Does the patent talk about how to connect a VoIP call to a circuit
`switch call? A. Not specifically in terms of how to do that . . . But once
`again, if a person of skill in the art knows that we're going to take a packet
`call and we're going to convert it into a PSTN or vice-versa, they would
`understand that.” EX1059, 137:6-11
`“Q. [N]one of the patents describe how to convert between IP signaling and
`circuit switch signaling, correct? A. Correct.” Id., 135:14-23
`“Q. [T]his conversion protocol, because the patent doesn't describe it, it
`would have to be well-known to a person of ordinary skill in the art; is that
`correct? A. []–[T]hese are all networks that have already been known, and
`one of skill in the art would understand it.” Id., 134:20-135:13.
`Against that background, the specification describes the “tandem access
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`controller” (TAC 10 in Figure 2, shaded purple) as the only allegedly new
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`component in this otherwise conventional architecture. However, the specification
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`twice acknowledges that the TAC does not include any new hardware, firmware,
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`or software, and that its software/firmware is programmed conventionally:
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`The TAC 10 may use any combination of hardware, firmware, or software
`and, in one embodiment, is a conventional computer programmed to carry
`out the functions described herein. (EX1001, 4:36-39.)
`The TAC 10 may be implemented using conventional processor hardware. .
`. Devising the software/firmware used to control the TAC 10 is well within
`the capability of those skilled in the art since the various control features
`that can be made available are generally already known. (Id., 6:44-51.)
`Moreover, the programming was so well known that the TAC is described as
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`implementing well-known call processing using known software techniques:
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`Examples of features that can be selected by the subscriber include:
`conditional call blocking, call forwarding, call altering, time of day
`conditions, day of week conditions, follow-me, caller recognition/
`password, caller ID, call screening/retrieval from voice mail, speed dialing
`. . . and speech recognition. Any other feature could be added. These
`features can be implemented in the TAC 10 using known software
`techniques since such features are known. (Id., 5:22-30; EX2041, 5-7.)
`Indeed, according to Patent Owner’s expert, the invention of the ’777 Patent is
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`not the TAC’s hardware or software or programming, but the idea of controlling
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`conventional call processing from a more centralized network location than the
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`Class 5 switch serving the subscriber:
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`Handling calls at the tandem level maintains the quality of the call, as it is
`processed within the PSTN, where the signal may be in digital form and/or
`carried over high-quality lines (as opposed to the end lines that carry a call
`from a CO to a phone. (EX2040, ¶46; see also EX1059, 18:21-19:24.)
`But the hardware, software, programming, and architecture necessary for
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`implementing this control was known. Indeed, Patent Owner’s expert
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`acknowledged during his deposition that “the network as it existed” “prior to May
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`4, 2000” included a “connecting node between an IP carrier [network] and the
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`PSTN . . . at a higher switch level, like a tandem switch” and that this “higher level
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`switch, like a tandem switch” would communicate with “PCM” or “TDM” on “the
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`PSTN side.” EX1059, 155:13-158:11; 250:23- 251:17. Similarly, during his
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`deposition, Petitioners’ expert confirmed that converging IP and PSTN telephone
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`networks typically connected at tandem (Class 4) switches and not edge (Class 5)
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`switches. EX2019, 350:4-24; EX1059, 202:3-11, 211:21-212:3.
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`We will refer to the foregoing as Applicant’s Admitted Prior Art (“AAPA”).
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`III. CHALLENGES AND STATUTORY GROUNDS FOR CHALLENGES
`Ground
`Basis for Challenge
`1
`Obvious under §103(a) by Lewis in view of AAPA
`2
`Obvious under §103(a) by LaPier in view of AAPA
`A. Motivation to Combine Lewis or LaPier and AAPA.
`Like proposed Claim 49, Lewis and LaPier are directed to processing incoming
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`calls, and both describe doing so for telephony across converging VoIP and PSTN
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`networks. EX1057, FIGS. 4-5, 12:50-56, 25:9-10, 26:4-14; EX1058, FIG. 1B,
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`35:13-16, 35:54-62; EX1066, ¶¶59, 76. Lewis and LaPier show that it was known
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`to control call processing in a more centralized network location than a Class 5
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`switch. EX1058, 2:25-31, FIG. 1B; EX1057, FIGS. 4-5, 19:24-28; cf. EX2040,
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`¶46. Lewis and LaPier also demonstrate that interconnecting PSTN and IP
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`networks at the tandem level was well known and posed no technical challenges
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`over interconnecting such networks at a different switch (e.g. an end office switch).
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`EX1057, FIGS. 4-5, 19:24-28; EX1058, FIG. 1B, 6:55-62; EX1065, ¶¶31-34, 42.
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`Lewis and LaPier were filed by two of the major players in converging IP and
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`PSTN networks in the late 1990s (Level 3 and Cisco Systems). EX1066, ¶55, n.5.
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`Both Patent Owner’s and Petitioners’ expert testified in their depositions that
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`converging IP carrier and PSTN networks typically connected at tandem (Class 4)
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`switches and not at edge (Class 5) switches. See §II infra. A POSA understood
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`the advantages of connecting a controller to a tandem switch as taught in LaPier
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`and Lewis, including that doing so: (1) allows efficient control of the routing of
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`calls using standard switching protocols and equipment, and (2) reduces switching
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`traffic of the PSTN. EX1002, ¶¶125-127, 145-146, 246; EX1065, ¶¶42-46.
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`B. Challenge 1: Lewis in View of AAPA
`Claim 49: “incoming call processing”
`1.
`Lewis discloses a TAC (open architecture switch 502 within open architecture
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`platform 402 including gateway 508, tandem Network Access Server (NAS) Bays
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`504 and modem NAS bays 514) that performs the steps of the method recited in
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`proposed Claim 49. EX1057, FIGS. 4, 5, 9A, 10A, 12:50-56, 14:65-15:1, 19:24-
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`28, 19:54-61, 25:35-39, 26:4-14, 27:3-5, 27:50-52, 27:59-62, 28:26-30, 29:1-11,
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`29:44-41, 30:13-19, 30:24-43; EX1066, ¶¶57-72. Using an architecture that is
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`virtually identical to the ’777 Patent, Lewis describes the TAC receives incoming
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`call requests as SS7 signaling, and incoming voice, from tandem switch AT 106
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`and converts the voice and SS7 signaling to formats suitable for use on IP network
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`408 to ensure that PSTN to VoIP calls are routed properly to the VoIP called party.
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`Id., see also EX1057, Figures 4, 10A, 25:9-10, 27:3-5, 27:50-52, 27:59-62, 28:26-
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`30, 29:1-11, 29:44-51, 29:66-30:9, 30:13-19; EX1066, ¶¶59, 62. Lewis discloses
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`the PSTN including edge switches EO 104 and tandem switches AT 106 connected
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`to IP network 408 with the TAC 502 serving as an intelligent interconnection
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`between the two converging networks and coupled to the particular tandem switch
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`AT 106. EX1057, FIGS. 4, 5, 9A, 12:47-49, 12:50-56, 14:65-15:1, 15:6-10, 15:13-
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`16, 15:21-23, 15:44-47, 19:54-67, 25:9-10, 25:35-44, 26:4-14; EX1066, ¶60. It
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`was well known, as acknowledged by the ’777 Patent and Patent Owner’s expert,
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`that the conventional PSTN described in Lewis included a network of PSTN
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`tandem switches, including a particular tandem switch AT 106. Id., §II infra;
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`EX1066, ¶¶61, 64; EX1060, 298:3-13; 299:12-17.
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`2.
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`Claim 49: “PSTN telecommunications network and switches”
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`It was well known, as acknowledged by the ’777 Patent and Patent Owner’s
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`expert, that the conventional PSTN described in Lewis includes edge switches EO
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`104 connected to telephones 110 on one side and tandem switches AT 106, which
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`are not directly connected to telephones 110, on the other side, where tandem
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`switches AT 106 are not edge switches EO 104, where edge switches route calls
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`from and to subscribers within a local geographic area and tandem switches route
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`calls to edge switches or PSTN tandem switches local or in other geographic areas.
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`EX1057, FIGS. 4, 5, 9A, 15:7-23; §II infra; EX2041, p. 2-3; EX1066, ¶¶60-61.
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`Claim 49: “web-enabled”
`3.
`Like the ’777 Patent TAC, Lewis describes that the TAC implements well-
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`known call processing for well-known “class functions” of intended recipients of
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`incoming calls, and stores, identifies and accesses control criteria for such
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`recipients from a database 516 (716). §II infra; EX1057, FIGS. 5, 7, 9A-9B, 11,
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`13, 20:64-21:2 (“GW 508 comprises SS7 gateway (SS7 GW) 512, control server
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`510, and database 516 communicating with control server 510.”), 22:36-42, 22:50-
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`57 (“OAP database 716 contains the destination of the call, any class functions
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`associated with the call, the type of routing algorithm that should be used.”),
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`22:64-23:9. Lewis describes that subscribers can interface and communicate with
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`ISP 112, which is coupled to the TAC 502, using a Web browser (Netscape) on a
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`computer. EX1057, FIGS. 4, 5, 14:65-15:6, 15:44-55, 15:60-63, 20:50-53. Web
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`browsers allow users to view web pages provided on the Internet 112 by web
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`servers. EX1002, ¶¶81-83, 89-90; EX1049, 123-27. It would have been obvious
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`to a POSA to allow Lewis’s subscribers to enter or change control criteria for well
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`known “class functions” such as conditional call blocking for storage in Lewis’s
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`database 516 (716) in Lewis’s TAC 502, and by coupling the Web servers
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`communicating with Lewis’s Web interface to the TAC, because, as the ’777
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`Patent and Patent Owner’s expert acknowledge, doing so is the conventional
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`approach, widely supported by conventional web portals and web browsers. §II
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`infra; EX1002, ¶¶65-69. Doing so was also well understood to achieve various
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`predictable benefits. EX1002, ¶¶65-69, 84-85, 159-163.
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`Claim 49: “conditional call blocking”
`4.
`Lewis describes stored control criteria which instruct the TAC to implement
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`well-known call processing for “class functions” of intended recipients of
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`incoming calls, including rejecting a call. §III.B.3 supra; see also EX1057, FIGS.
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`13 (1310, 1344, 1346, 1348), 16 (1610, 1632, 1626, 1628), 31:53-57, 32:1-5,
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`41:63-42:15, 47:61-48:16 (identifying TAC control message to reject an inbound
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`call). As acknowledged by Patent Owner, the only disclosure of this limitation in
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`the specification is including “conditional call blocking” in a list of well-known
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`call features implemented by the TAC using known software techniques. §II infra;
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`Ex. 2041, 5-7, 11-13, 17-19. It would have been obvious to a POSA for Lewis’s
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`TAC 502 to store and access well-known access control lists in database 516 (716)
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`and utilize well-known software techniques to reject an incoming call in
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`accordance with such lists (e.g. calling party IP address or telephone number is not
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`on the screening list) because, as the ’777 Patent and Patent Owner acknowledge,
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`implementing such call processing is widely supported by conventional software
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`and firmware. §II infra; EX1002, ¶¶61, 77, 79, 91, 183-184. Doing so was also
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`well understood to achieve various predictable benefits including increased
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`subscriber privacy from unwanted incoming calls, including at particular times of
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`the day. EX1002, ¶¶71, 185, 202.
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`A. Challenge 2: LaPier in View of the AAPA
`Claim 49: “incoming call processing”
`1.
`LaPier discloses a TAC (Network Access Server (NAS) 118 and Signaling
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`Access Server (SAS) 112) that performs the steps of the method recited in
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`proposed Claim 49. EX1058, FIGS. 1B, 7A, 4:58-5:4, 8:61-9:7, 35:54-62, 38:1-4,
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`35:13-22, 35:26-40; EX1066, ¶¶75-89. The SAS 112 of the TAC in LaPier
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`receives incoming call requests in the form of SS7 signaling, NAS 118 of the TAC
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`receives incoming voice from tandem switch 106, and the TAC converts the voice
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`and SS7 signaling to formats suitable for use on IP network 122 to ensure that
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`voice calls are routed properly. EX1066, ¶¶76-77, 80-84; EX1058, FIG. 1B, 4:58-
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`5:4, 5:28-43, 6:4-9, 6:49-54, 6:60-62, 8:61-9:7, 9:18-22, 35:13-16, 35:54-62,
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`38:13-40, 38:51-62. LaPier discloses the PSTN including edge switches 116 and
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`tandem switches 114 connected to IP network 122 with the TAC serving as an
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`intelligent interconnection between the two converging networks and coupled to
`
`the particular tandem switch 114. EX1058, FIGS. 1B-1C, 4:58-5:4, 5:28-35, 6:60-
`
`62, 8:61-9:7, 35:13-16, 35:54-62; EX1066, ¶¶77-79. The ’777 Patent and Patent
`
`Owner’s expert acknowledge that the conventional PSTN (described in LaPier)
`
`included a network of PSTN tandem switches, including a particular tandem
`
`switch 114. Id., §II infra; EX1066, ¶77; EX1060, 298:3-13; 299:12-17.
`
`Claim 49: “PSTN telecommunications network and switches”
`2.
`It was well known, as acknowledged by the ’777 Patent and Patent Owner’s
`
`expert, that the conventional PSTN described in LaPier includes edge switches 116
`
`connected to telephones 105 on one side and tandem switches 114, which are not
`
`directly connected to telephones 105, on the other side, where tandem switches 114
`
`are not edge switches 116, where edge switches route calls from and to subscribers
`
`within a local geographic area and tandem switches route calls to edge switches or
`
`tandem switches local or in other geographic areas. EX1058, Figures 1B-1C, 5:28-
`
`35, 6:60-62, 7:1-3; §II infra; EX2041, pp. 2-3; EX1066, ¶¶78-79.
`
`Claim 49: “web-enabled”
`3.
`Like the TAC of the ’777 Patent, LaPier describes that the TAC implements
`
`well-known call processing for various call features, including conditional call
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`DM2\8289348.5
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`13
`
`
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`
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`blocking, of intended recipients of incoming calls, and stores, identifies and
`
`accesses control criteria for such recipients from a database. EX1058, 16:1-16
`
`(“The computer system used to implement the [SAS] 112 may also execute one or
`
`more other intelligent network applications. In this configuration, one or more
`
`separate applications execute on the SAS host . . . For example, a separate
`
`application may carry out intelligent routing to the appropriate [NAS] based on the
`
`type of service that is required.”), 16:17-32, 16:44-51, 35:13-16, 36:54-64 (“[SAS]
`
`112 can store access control lists of network addresses. The access control lists
`
`may be used to block messages that contain calling numbers identified in the lists .
`
`. . [SAS] 112 can store access control lists of destination point codes . . . [that] may
`
`be used to block call processing messages that are directed to one of the point
`
`codes identified in the lists.”), cls. 9, 11-13, 22:5-9.
`
`LaPier describes that users can interface and communicate with the TAC using
`
`a Web browser and HTTP messages. EX1058, Fig. 1C (computer 126), 24:41-52,
`
`25:5-9 (“A user or client software element 1101, which may be co-located with
`
`platform 1102 or remote from it, communicates with the platform, for example,
`
`using a Web browser and HTTP messages.”) Web browsers allow users to view
`
`web pages provided on the Internet by web servers and HTTP was the protocol that
`
`managed communications between web servers and web browsers. EX1002, ¶¶80,
`
`88-89; EX1049, 123-27. Thus, LaPier describes one or more web servers coupled
`
`DM2\8289348.5
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`14
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`
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`to the TAC. It would have been obvious to a POSA to allow users to enter or
`
`change call control information for access by LaPier’s TAC, and via LaPier’s web
`
`interface to the TAC, because, as the ’777 Patent and Patent Owner’s expert
`
`acknowledge, doing so is the conventional approach, widely supported by
`
`conventional web portals and web browsers. §II supra; EX1002, ¶¶65-69. Doing
`
`so was also well understood to achieve the readily apparent and predictable
`
`benefits of improving the system’s function by providing an easy-to-use interface
`
`for users with 24-hour access to the TAC from anywhere in the world using
`
`standard computer software. EX1002, ¶¶65-69, 159-162.
`
`Claim 49: “conditional call blocking”
`4.
`LaPier describes stored access control criteria, which instruct the TAC to block
`
`calls to an intended recipient. §III.B.3 supra; EX1058, 36:54-64, cl. 9 (“[c]reating
`
`and storing an access control policy that specifies that the [SAS] shall block calls
`
`based upon one or more predefined call criteria selected from among . . .
`
`destination.”, cl. 11, cl. 12 (“[C]reating and storing at the [SAS] one or more
`
`access control lists of network addresses . . . determining that the called party has a
`
`network address . . . in one of the access control lists . . . [b]locking the call from
`
`entering the data network when the called party has a network address . . . in one of
`
`the access control lists.”), cl. 13, 22:5-9; cf. EX2041, 5-7 (Patent Owner relies
`
`solely on AAPA for this limitation.)
`
`DM2\8289348.5
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`15
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`Dated: October 31, 2017
`
`
`
`Respectfully submitted,
`
`By: /Patrick D. McPherson/
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`Duane Morris LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
`LEAD COUNSEL FOR
`PETITIONERS
`
`DM2\8289348.5
`
`16
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6(e)
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on the 31st
`
`day of October 2017, a complete and entire copy of this Supplemental Brief to
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`Petitioners’ Opposition to Patent Owner’s Motion to Amend and all supporting
`
`exhibits not already of record in this proceeding were provided via the Patent Trial
`
`and Appeal Board End to End (PTAB E2E) System as well as delivering a copy
`
`via email on the following counsel for Patent Owner at:
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`Dated October 31, 2017
`
`LEAD COUNSEL FOR PETITIONERS
`
`
`DM2\8289348.5
`
`1
`
`
`
`By: /Patrick D. McPherson/
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`Duane Morris LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
`
`
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