Reply to Patent Owner’s Response
`IPR 2016-01263
`U.S. Patent No. 8,155,298
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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. IPR2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`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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`
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`DM2\7929240.5
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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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. IPR2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`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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`
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`DM2\7929240.5
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`Reply to Patent Owner’s Response
`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`
`TABLE OF CONTENTS
`
`Page
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`A.
`
`B.
`
`Archer Discloses a Gateway Interconnecting a Controller (e.g. “web-
`enabled processing system”) on an IP Network to a Tandem Switch in the
`PSTN ....................................................................................................................... 4
`
`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
`
`Archer in view of Chang and the Knowledge and Skill of a POSA
`Discloses a Gateway Interconnecting a Controller on an IP Network to a
`Tandem Switch in the PSTN................................................................................. 12
`
`Archer Discloses a Controller Configured to Complete the
`Communication Link Between the User Initiating the Communication and
`the Intended Recipient When the Intended Recipient Accepts the
`Communication ..................................................................................................... 14
`
`Conclusion: Archer in View of Chang and the Knowledge and Skill of a
`POSA Disclose All of the Limitations of the Challenged Claim Even
`Under Patent Owner’s Constructions.................................................................... 16
`
`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
`
`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
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`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
`
`D.
`
`E.
`
`Patent Owner’s Disclaimer Arguments Do Not Support Limiting 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 Claim Under the
`Broadest Reasonable Interpretation of the Claims or Patent Owner’s
`Constructions ........................................................................................................ 27
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`
`PETITIONERS’ REPLY EXHIBIT LIST
`
` Exhibit Number
`1001
`1002
`1003
`1004
`1006
`1007
`1008
`1010
`1054
`1055
`1058
`1059
`1060
`1061
`
`1062
`1063
`1064
`1065
`
`1066
`2019
`
`2020
`
`2022
`
`Document
`U.S. Patent No. 8,155,298 (“the ’298 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. 7,764,777 (“the ’777 Patent”)
`U.S. Patent No. 8,457,113 (“the ’113 Patent”)
`File history of U.S. Patent No. 8,155,298
`File history of U.S. Patent No. 7,764,777
`U.S. Patent No. 6,574,328
`U.S. Patent No. 7,324,635
`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
`U.S. Patent No. 6,442,169 to Lewis (“Lewis”)
`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 IPR2016-01263
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` Exhibit Number
`2042
`
`Document
`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)
`U.S. Pat. App. No. 09/565,565, filed on May 4, 2000
`(annotations added by Patent Owner)
`
`2043
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`2044
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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
`
`skill of a person of ordinary skill in the art (“POSA”)) render obvious claim 1 of
`
`U.S. Patent No. 8,155,298 (“the ’298 Patent”). Patent Owner’s arguments in
`
`response to this Ground include that:
`
`
`
`(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 web-enabled processing
`
`system to the PSTN through a PSTN tandem switch; and
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`
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`(2) Archer does not disclose a “web-enabled processing system” that is
`
`configured to perform the step of “complete the communication link” nor
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`how it is configured to perform this step.
`
`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 Claim even if the claim is narrowed as urged by Patent
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`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 (EX1066), 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 web-enabled
`
`server processor 128 is configured to perform the step of “complete the
`
`communication link . . . when the intended recipient . . . accepts the communication
`
`from the user initiating the communication” or sufficient details of how it is
`
`configured to perform this step—is also factually inaccurate. For example, Mr.
`
`Bates testified that the “complete the communication link” step recited in Claim 1
`
`of the ’298 Patent is commensurate in scope to the “establishing the voice
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`communication . . . after the call is completed” step recited in the claims of the
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`related U.S. Patent No. 8,457,113 (“the ’113 Patent”). Archer expressly discloses
`
`that “FIG. 4 is a flowchart of the software which will execute on server processor
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`128” and FIG. 4 expressly describes such software executing the step of:
`
`
`Moreover, Archer’s description of how software executing on server processor 128
`
`is configured to perform 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 Claim even
`
`under Patent Owner’s proposed claim constructions of “switching facility”, “coupled
`
`to”, and “web-enabled processing system.”
`
`However, the Challenged Claim is also obvious under the instituted Ground
`
`because Patent Owner’s third argument—that the specification of the ’298 Patent,
`
`and prosecution history of related U.S. Patent No. 7,764,777 (“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
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`disclaimer arguments that are without any legal or factual support and for which the
`
`Board has already twice rejected (see Papers 26, 30).
`
`II. ARCHER IN VIEW OF CHANG AND THE KNOWLEDGE AND
`SKILL OF A POSA DISCLOSE EACH LIMITATION OF THE
`CHALLENGED CLAIM
`A. Archer Discloses a Gateway Interconnecting a Controller (e.g.
`“web-enabled processing system”) 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”
`
`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;
`
`6:7-9; 8:18-21; 9:14-15; 11:23-25; EX1065, n.2.
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`PSTN 118 (136) and a packet network 130 (e.g. IP network)2. Pet., 22-25, 33-35,
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`46-49, 50-60, EX1002, ¶¶117-122, 124, 162-163, 210-221, 232-238, 248-254, 257-
`
`261; EX1065, ¶24. 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 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
`
`
`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
`
`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
`
`an “edge switch.” EX1059, 110:9-13; 114:17-20; 178:21-24.
`
`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
`
`signals over analog lines. Resp., 43-44, 54-58; EX2022, ¶¶73-75, 86-89, 91-92;
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`EX1065, ¶25, n.3.
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`5:10-11 (“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. 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 (’298 Patent,
`
`1:56-64). EX1059, 22:23-23:8; 26:7-15; EX2022, ¶45. Thus, Patent Owner’s
`
`argument 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., 43-44, 53-57; EX2022, ¶¶73-75,
`
`86-89; EX2019, 267:19-268:4; 271:2-273:12; EX1065, ¶¶23-27.
`
`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., 22-25, 33-35, 46-49; EX1002,
`
`¶¶151, 154, 156, 158, 161-163, 210-221; EX2019, 267:19-268:4; 271:2-273:12;
`
`EX1059, 22:23-23:8; 26:7-15; EX2022, ¶45; EX1065, ¶28.
`
`Moreover, even if the claim is narrowed as urged by Patent Owner such that
`
`“switching facility” can only be a PSTN tandem switch, and not a gateway, and that
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`“web-enabled processing system” must be directly connected to such a PSTN
`
`tandem switch, Archer discloses this architecture. EX1065, ¶¶29-30. Archer
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`discloses a tandem 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
`
`IP network
`
`EX1003, FIGS. 2 (annotated above), 6; Pet. 46-49, 53-60; EX1002, ¶¶155-163, 212-
`
`213, 217–20, 224; EX2019, 267:19-268:4; 271:2-273:12; EX1059, 22:23-23:8;
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`26:7-15; 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 126 must be
`
`connected to the PSTN through a PSTN edge switch and therefore the gateway is an
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`“edge device” (Resp., 52-55); (2) Archer does not inherently disclose that its
`
`gateway is connected to a tandem switch (Resp., 55-56); and (3) it would not be
`
`obvious to connect Archer’s gateways to a tandem switch (Resp., 56-57), all stem
`
`from its expert’s misrepresentation of the state of the art. 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. EX1065, ¶¶32-33. For example,
`
`Level 3’s patent to Lewis (EX1066) discloses a tandem access controller (open
`
`architecture switch 502 annotated in purple) interconnecting an IP network (blue) to
`
`the PSTN (green) through a PSTN tandem switch (AT 106) (and separately also
`
`through an edge switch (EO 104)) as shown in annotated Figures 4 and 5.
`
`PSTN
`PSTN tandem
`switch 106
`
`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
`
`PCM
`
`SS7
`
`TAC 502
`
`IP network
`
`EX1059, FIGS. 4-5 (annotated below), 9A, 10A, 10C, 18A-18B, 12:50-56, 15:7-23,
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`19:24-28, 19:54-61; 20:60-63, 25:10-13, 25:16-21, 26:9-14, 29:44-51, 30:4-35;
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`EX1065, ¶¶33-35.
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` Likewise, Cisco’s patent to LaPier (EX1058) discloses a tandem access
`
`controller (Network Access Server (NAS) 118a and Signaling Access Server 112
`
`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
`
`SS7
`
`PSTN
`
`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
`
`requests via the PSTN through an edge switch first, not a tandem switch—is simply
`
`inaccurate. Id., Resp., 39; EX2022, ¶68; EX1065, ¶37. 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. EX1059, 192:11-
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`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, 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,
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`201:22-202:11, 205:15-206:16, 211:21-213:14.
`
`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
`
`systems in which devices external to the PSTN (e.g. on an IP network) sent and
`
`received call requests via the PSTN through (1) controllers on IP networks connected
`
`to PSTN tandem switches (and not PSTN edge switches) via gateways (e.g. Archer)
`
`or (2) controllers connected to PSTN tandem switches (and not PSTN edge switches)
`
`(e.g. Lewis, LaPier). EX1065, ¶¶38-41. Moreover, as demonstrated by LaPier
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`(EX1058) and Lewis (EX1066), 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. EX1066, FIGS. 4, 5, 15:7-23, 19:24-28, 19:54-61; EX1058, 1B, 1C, 6:55-
`
`62; EX1065, ¶¶42-43. Moreover, a POSA understood the advantages of connecting
`
`a controller 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 protocols
`
`and equipment and achieves Archer’s stated goal of reducing switching traffic of the
`
`PSTN. EX1065, ¶¶43-46.
`
`C. Archer in view of Chang and the Knowledge and Skill of a POSA
`Discloses a Gateway Interconnecting a Controller on an IP
`Network to a Tandem Switch in the PSTN
`As set forth in the Petition, Chang discloses a 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
`
`a digital format. Pet., 20, 30, 36-38; EX1002, ¶¶106, 139-140, 169-170; EX1004,
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`Fig. 1; 8:2-6; 8:29-33; 8:37-40; 8:66-9:3, 9:8-13; 9:31-34 (“The SSP tandem 11T
`
`then communicates with the SCP via an SS7 type CCIS link . . . The SSP capable
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`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
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`call as it is processed within the PSTN where the signal will most likely be in digital
`
`form.” EX2022, ¶45.
`
`As also set forth in the Petition, Petitioners detailed how Chang discloses a
`
`web-enabled processing system coupled to PSTN switching facilities including
`
`tandem switches (11T). Pet., 20, 29-31, 36-38; EX1002, ¶¶105-106, 113-114, 135-
`
`140, 168-171; EX1065, ¶49. 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 web-enabled processing
`
`system to a tandem switch (11T) in the PSTN 118 (136). Pet., 20-21, 31-32, 37-41,
`
`49-50; EX1002, ¶¶106, 113-114, 141-149, 173-181, 225-231; EX1065, ¶49.
`
`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., 37-41, 49-50; EX1002, ¶¶173-181, 225-231;
`
`EX1065, ¶50. 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.
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`Furthermore, a POSA would understand that the specific transmission loss and
`
`impairment problems identified in the Shared Specification (for ’298 Patent at
`
`EX1001, 1:56-644) 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, ¶¶52.
`
`D. Archer Discloses a Controller Configured to Complete the
`Communication Link Between
`the User
`Initiating
`the
`Communication and the Intended Recipient When the Intended
`Recipient Accepts the Communication
`As set forth in the Petition, a POSA reading Archer would understand that the
`
`reference discloses a controller (web-enabled server processor 128 and database
`
`138) configured to complete the communication link between the user initiating the
`
`communication and the intended recipient when the intended recipient accepts the
`
`communication. Pet., 59; see id. at 22-25, 33-35, 46-49, 50-60; EX1002, ¶¶117-122,
`
`124, 162-163, 210-221, 232-238, 248-254, 257-261; EX1065, ¶¶53-54. For
`
`
`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 2016-01263
`U.S. Patent No. 8,155,298
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`example, Mr. Bates testified that the “complete the communication link” step recited
`
`in Claim 1 of the ’298 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. 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 when
`
`receiving signaling that the intended recipient has answered the communication (e.g.
`
`“response”, “pick-up notification”), which Mr. Bates acknowledged is when the
`
`“intended recipient . . . accepts the communication.” Id.; see EX1003, Figure 4 (64),
`
`6:30-32, 8:43-45, 9:31-36; EX1065, ¶¶55-57; EX1059, 250:23-251:17; EX1060,
`
`331:17-332:20.
`
`Patent Owner’s additional arguments (Resp., 49, 51, EX2022, ¶¶80-82) that
`
`Archer does not describe sufficient details regarding how software executing on
`
`server processor 128 is configured to perform this “complet[ing]” step are also
`
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`misplaced, as Mr. Bates acknowledged that no details of how the recited “complete
`
`the communication link” 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, 5:17-20 (“[T]he TAC 10 . . .
`
`connects the two calls.”); 6:29 (“The TAC 10 links the two calls.”); 10:7-9 (“When
`
`the subscriber answers the phone, TAC 10 completes the connection between the
`
`two parties.”); 11:25-27 (“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 controller
`
`(web-enabled server processor 128 and database 138) configured to complete the
`
`communication link between the user initiating the communication and the intended
`
`recipient when the intended recipient accepts the communication. 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 Claim
`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 disclose a gateway (126)
`
`interconnecting a web-enabled server processor 128 and database 138 on a packet
`
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`network (IP 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., 30-35), of “coupled to” as being
`
`connected to without an intervening edge switch (Resp., 35-38), and of “web-
`
`enabled processing system” as a web-enabled controller connected to a PSTN
`
`tandem switch without an intervening edge switch (Resp., 38), the Challenged Claim
`
`is 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 web-enabled
`
`processing system 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 Claim is invalid as obvious over this ground because
`
`all of the limitations of the Challenged Claim are disclosed. §§II.A-D; EX1065, ¶61.
`
`III. THE CHALLENGED CLAIM IS ALSO OBVIOUS BECAUSE
`APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISCLAIM THE CLAIM SCOPE OF “SWITCHING FACILITY” AS
`ASSERTED BY PATENT OWNER
`The Challenged Claim is also obvious over the instituted ground because
`
`Patent Owner’s disclaimer arguments regarding “switching facility” are factually
`
`and legally unsupported.
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`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`
`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.
`
`Thirteen months later, on March 7, 2011, Applicant amended the existing claims in
`
`the application leading to the ’298 Patent, a continuation of the ’777 Patent, to recite
`
`“switching facility” instead of “PSTN tandem switch.” EX1008, 97-102.
`
`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
`
`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
`
`
`5 The ‘777 Patent application (EX2042), App. No. 09/565,565 (EX2044; EX1054),
`
`and App. No. 10/426,279 (EX2043; EX1055). 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 2016-01263
`U.S. Patent No. 8,155,298
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`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 controller to a PSTN
`
`tandem switch as the preferred embodiment. Resp., 9, 14-18, 20, 32; EX2022, ¶¶42-
`
`51, 62, 65. 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 (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).
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`Reply to Patent Owner’s Response
`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`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 d
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