`IPR 2016-01263
`U.S. Patent No. 8,155,298
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
`
`Focal IP, LLC,
`Patent Owner
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`
`
`Case IPR2016-01263
`U.S. Patent No. 8,155,298
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`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
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`
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A.
`Engagement Overview ......................................................................... 1
`B. Materials Considered ............................................................................ 2
`LEGAL PRINCIPLES USED IN THE ANALYSIS ..................................... 3
`A.
`Legal Standards for Disclaimer of Claim Scope .................................. 3
`III. THE INTERPRETATION OF “SWITCHING FACILITIES” ...................... 4
`A.
`The Introduction of “Switching Facilities” .......................................... 4
`B.
`Patent Owner’s Arguments on Disclaimer ........................................... 9
`IV. PATENT OWNER’S ARGUMENTS REGARDING ARCHER AND
`CHANG ........................................................................................................ 14
`A.
`Patent Owner’s Arguments Regarding Archer .................................. 14
`B.
`Patent Owner’s Arguments Regarding Archer and Chang
`Combination ....................................................................................... 21
`CONCLUSION ............................................................................................. 25
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`V.
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`1.
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`2.
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`I, Thomas F. La Porta, declare as follows:
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`I have personal knowledge of the facts stated in this declaration, and
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`could and would testify to these facts under oath if called upon to do so.
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`I.
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`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Bright House Networks, LLC,
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`WideOpenWest Finance, LLC, Knology of Florida,
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`Inc., and Birch
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`Communications, Inc. (Petitioners) in this case as an expert in the relevant art. I
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`previously provided a declaration in this case in support of the Petition setting forth
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`my opinions regarding the state of the art and invalidity of the challenged claims. I
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`am being compensated for my work at the rate of $550 per hour. No part of my
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`compensation is contingent upon the outcome of this petition.
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`4.
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`I was asked to study the Patent Owner’s October 26, 2016 Preliminary
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`Response to Petitioners’ Petition for Inter Partes Review of U.S. Patent No.
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`8,155,298 (“the ‘298 patent”), and its exhibits including the Declaration of Regis J.
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`“Bud” Bates, and to render opinions based on the testimony of Mr. Bates contained
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`in this Declaration.
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`5.
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`After studying the Preliminary Response, its exhibits including the
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`Declaration of Mr. Bates, the ‘298 patent, its file history, and the prior art, and
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`considering the subject matter of the claims of the ‘298 patent in light of the state
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`1
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`of technical advancement in the area of telephony in circuit-switched and packet-
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`switched networks in the mid-1990s to 2000 time frame, I reached the conclusions
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`discussed herein.
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`6.
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`This declaration, and the conclusions and opinions herein, provide
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`support for the Reply to Patent Owner’s Preliminary Response Pursuant to 37
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`C.F.R. § 42.108(c) filed by Petitioners in this case. I have reviewed the Reply in its
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`entirety as well as its corresponding exhibits.
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`B. Materials Considered
`7. My analysis is based on my education and experience as set out in my
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`June 24, 2016 Declaration in this case and in my curriculum vitae, including the
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`documents I have read and authored and systems I have developed and used since
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`then.
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`8.
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`In addition to the materials set forth in my June 24, 2016 Declaration
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`in this case, I have reviewed the following:
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`Description of Document
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`Exhibit
`No.
`Patent Owner’s Preliminary Response
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`2001 Declaration of Regis J. “Bud” Bates
`2002 Ray Horak, Communications Systems and Networks (2nd ed. 2000)
`2003 Ray Horak, Webster’s New World Telecom Dictionary (2008)
`2004 Ray Horak, Telecommunications and Data Communications (2007)
`Prosecution History of U.S. Patent No. 7,764,777
`2005
`2006 Harry Newton, Newton’s Telecom Dictionary (23rd ed. 2007)
`2
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`Exhibit
`Description of Document
`No.
`1054 U.S. Patent No. 6,574,328
`1055 U.S. Patent No. 7,324,635
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`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`9.
`In addition to the legal principles set forth in my June 24, 2016
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`Declaration in this case, attorneys for the Petitioners explained additional legal
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`principles to me that I have relied upon in forming my opinions set forth in this
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`report.
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`A. Legal Standards for Disclaimer of Claim Scope
`10. As set forth in my June 24, 2016 Declaration in this case, I understand
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`that, in Inter Partes Review, the claim terms are to be given their broadest
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`reasonable interpretation (BRI) in light of the specification. See 37 C.F.R.
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`§ 42.100(b).
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`11.
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`I have been informed and understand that the plain meaning of a claim
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`term can be disclaimed or disavowed by the prosecution history or the
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`specification of the patent. Counsel has advised me that a disclaimer must be
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`“clear and unmistakable” to a person of ordinary skill in the art (“POSA”) in order
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`to take effect. I understand that such disavowal must be, among other things, so
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`unmistakable as to be unambiguous evidence of disclaimer.
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`12.
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`I understand that such disavowal does not arise merely by criticizing a
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`particular embodiment that is encompassed in the plain meaning of a claim term. I
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`further understand that such disavowal also does not arise merely because all the
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`embodiments of the invention disclosed in the specification contain a particular
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`limitation. I also understand that the Patent Owner bears the burden of establishing
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`the existence of a disclaimer.
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`III. THE INTERPRETATION OF “SWITCHING FACILITIES”
`13.
`In my opinion, a POSA would understand that, for each particular
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`claim of the challenged claims, “any point in the switching fabric of converging
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`networks” (whether it be an edge switch, tandem switch, hybrid switch, gateway,
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`STP, etc.) is a “switching facility” for such claim if it performs the recited
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`function, and is in the recited location, in such claim.
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`A. The Introduction of “Switching Facilities”
`14. The first time that “switching facilities” appears anywhere in the
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`intrinsic record of the ’298 patent, or of any of the patents in its family, is February
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`16, 2010, when Applicant introduced it in response to a Final Office Action during
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`prosecution of the related ’777 patent. Ex. 1010, 66, 68-80, 84-88. Patent Owner
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`and Mr. Bates acknowledge this fact. Prelim Resp., 35; Ex. 2001, ¶70.
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`15. Specifically, in this February 16, 2010 response, the applicants
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`amended several existing claims to include this term for the first time, and added
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`new claims reciting it. Ex. 1010, 68-80. The applicants introduced this term into
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`the intrinsic record of the ’298 patent eight months after it filed this response, and
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`after the ’777 patent had issued, on October 5, 2010. Ex. 1008, 97-102.
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`16.
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`In my opinion, a POSA, reading this February 16, 2010 response and
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`the applicants’ concurrently filed Substance of Personal Interview with the
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`Examiner (the “Interview Summary”), understood that the applicants intended
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`“switching facilities” to be interpreted broadly. Ex. 1010, 65-66, 68-80.
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`17. For example, in the February 16, 2010 response, the applicants first
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`state that “switching facilities” in the PSTN included both end office switches and
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`interconnected tandem switches:
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`Consistent with Newton’s definition, on which the Examiner relies,
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`Schwab’s “end office switch” could arguably be considered to be
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`“within” the PSTN. The PSTN is a configuration of switching
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`facilities for routing calls from calling parties to called parties,
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`comprising a plurality of end office switches (also referred to as
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`central office switches or edge switches (e.g., a class 5 switch)) and a
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`plurality of interconnected switching facilities (also referred to as
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`tandem switches). Ex. 1010, 86-87.
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`18. Next, in this same response, the applicants broadly defined “tandem
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`switching facilities” as “any point in the switching fabric of converging networks”
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`and enumerated several examples of such “switching facilities”, namely “a signal
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`5
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`transfer point (STP), signal control point (SCP), session border controller (SBC),
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`gateway, access tandem, class 4 switch, wire center, toll office, toll center, PSTN
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`switching center, intercarrier connection point, trunk gateway, hybrid switch, etc.”
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`Ex. 1010, 87, 87n.1.
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`19.
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`In my opinion, a POSA would understand that the applicants
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`identified that it is this location—in the switching fabric of converging networks
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`(e.g. at the convergence of a circuit switched network and a packet switched
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`network)—that avoids a call having to reach the local edge switch of a particular
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`subscriber before services for such subscriber (e.g. call forwarding) are invoked.
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`Ex. 1010, 86-88, 87n.1.
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`20. Notably, the applicants’ enumerated examples of “tandem switching
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`facilities” include a hybrid switch. A hybrid switch is a well-known combined
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`class 4/class 5 switch (i.e. combined tandem/edge switch). See, e.g., Ex. 2002 at 4
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`(“In many instances, a Class 4 office also serves as a Class 5 office; in other words,
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`a hybrid switch serving as both a Central Office and a tandem toll office, with the
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`separate functions provided through logical and physical partitioning within the
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`switch.”)
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`21.
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`It is also noteworthy that applicants’ enumerated examples include
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`devices that were well-known to receive call signaling but not voice media (e.g.
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`STP, SCP). Ex. 1010, 87n.1; Ex. 1038, 30-33, 57. Therefore, the applicants
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`expressly included a combination tandem/edge switch, and devices that only
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`receive call signaling, in its definition of “switching facilities.” Ex. 1010, 87n.1;
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`Ex. 2002, 4; Ex. 1038, 30-33, 57.
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`22.
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`In the Interview Summary concurrently filed on February 16, 2010
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`with its response to the Final Office Action, the applicants expressly referenced its
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`broad definition of “switching facilities”, including its expressly enumerated
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`examples:
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`Applicants and Applicants’ Representative presented the differences
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`between the rejected claims and Schwab et al., and other prior art.
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`The major difference lies in that Applicants’ architecture permits
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`subscribers to apply features via web access to a controlling device
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`that connects to a switching facility (tandem access switch also
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`referred by other terminology in the industry) so that the features are
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`not limited to a local geographic area. Ex. 1010, 66.
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`23. The applicants’ intended broad interpretation of “switching facility” is
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`also evident to a POSA from its concurrently filed claim amendments. Ex. 1010,
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`68-80, 84-88. For example, in this February 16, 2010 Final Office Action
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`response, the applicants broadened Claim 1 such that, instead of the “web-enabled
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`processing system” having to be “connected within the PSTN”, it merely had to be
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`“connected to operate at least in part with a communications network comprising”
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`7
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`both “edge switches” and “switching facilities for routing calls to other edge
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`switches”:
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`Ex. 1010, 68; see also Ex. 1010, 71 (amendments to Claim 19):
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`24. The applicants also amended dependent Claim 7 to specify that only
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`for this dependent claim is the “communication network” of Claim 1 limited to the
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`PSTN and the “switching facility” of Claim 1 is limited to “a PSTN tandem switch
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`within the [PSTN]”:
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`Ex. 1010, 69 (Claim 7).
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`25.
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`In contrast, when the applicants wanted narrow independent claims,
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`they used “tandem switch” instead of “switching facility” and “public switched
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`telephone network (PSTN)” instead of “communication network”:
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`Ex. 1010, 72 (Claim 20).
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`26. Thus, in my opinion, a POSA, reading the concurrently filed February
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`16, 2010 Final Office Action response and Interview Summary, understood that the
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`applicants intended “switching facilities” to be interpreted broadly.
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`B.
`27.
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`Patent Owner’s Arguments on Disclaimer
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` Mr. Bates asserts that “[a]ccording to the intrinsic record, a
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`‘switching facility’ (1) is a switch for routing calls to edge switches or other
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`‘switching facilities’ local or in other geographic areas; and (2) is not an edge
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`switch or an edge device.” Ex. 2001, ¶68; Prelim Resp., 34. I disagree for
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`several reasons.
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`28. First, Mr. Bates relies on portions of the ’298 patent specification as
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`purportedly disclaiming the applicants’ broad definition of “switching facility.”
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`Ex. 2001, ¶¶51-57, 65; Prelim Resp., 21-26, 32; Section III.A. However, neither
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`the ’298 patent specification (filed July 5, 2006), nor the specification of any of the
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`patents to which it claims priority (filed Apr. 30, 2003, and May 4, 2000) include
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`the term “switching facility”. Ex. 1001; Ex. 1054; Ex. 1055. Thus, there can be no
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`clear and unmistakable disclaimer of this term “switching facility” that was
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`introduced and defined years later by the applicants on February 16, 2010. Ex.
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`9
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`1010, 66, 68-80, 84-88; Ex. 1054; Ex. 1055. To say that the applicants used these
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`specifications to disclaim the scope of a term they first introduced between three
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`and ten years after the specifications were created is to posit a time machine.
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`29. Second, the portions of the ’777 patent specification relied upon by
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`Mr. Bates (Ex. 2001, ¶¶55-56; Prelim Resp., 23-25) all explicitly refer to a
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`“preferred embodiment”, “preferred system”, or “one embodiment”, as opposed to
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`“the invention” or all embodiments of the invention, or by describing benefits that
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`“the invention allows . . . to be added” rather than using language of exclusion
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`such as “the invention must add”:
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`A preferred embodiment of the inventive system described herein
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`connects at the tandem, thereby eliminating these problems. Ex.
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`1001, 1:65-67;
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`In one embodiment, the system includes a processor (referred to
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`herein as a tandem access controller) connected to the PSTN which
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`would allow anyone to directly provision, that is to say set-up and
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`make immediate changes to, the configuration of his or her phone
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`line. In one embodiment, a tandem access controller (TAC)
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`subsystem is connected internally to the PSTN in a local service area .
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`. . The TAC provides features, selected by the subscriber, to all edge
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`switches connected to the PSTN tandem switch. Connecting directly
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`to the PSTN tandem switch (or embedding the system into the tandem
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`switch) eliminates
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`the signal degradation problems previously
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`described. Ex. 1001, 3:7-28;
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`FIG. 1 illustrates the tandem access controller (TAC) in one
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`embodiment of the present invention connected to the existing PSTN
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`tandem switch, the TAC providing features for the subscriber's
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`telephone as requested by the subscriber via the web. Ex. 1001, 4:15-
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`19, FIG. 1;
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`The invention allows enhanced direct third-party call control features,
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`such as selective call routing and remote dialing, to be added to the
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`PSTN (Public Switched Telephone Network) using local call control
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`and providing dynamic provisioning of the system by the subscriber.
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`Direct 3rd-party control means that the ability to provision the 3rd-
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`party features is directly available to a subscriber, eliminating the
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`need to go through the telephone company (telco) business office. Ex.
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`1001, 2:66-3:7.
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`30.
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`In my opinion, and/or that lacks language of exclusion, such
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`description of a preferred or particular embodiment does not provide a clear and
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`unmistakable disclaimer to a POSA.
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`31. Third, Mr. Bates relies on the applicants’ arguments and claim
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`amendments made in a September 25, 2009 response to a non-final Office Action
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`as purportedly disclaiming the applicants’ February 16, 2010 broad definition of
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`“switching facility”. Ex. 2001, ¶¶58-61; Prelim Resp., 26-28. However, none of
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`the claim amendments or arguments included or referenced the term “switching
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`facility”. Ex. 1010, 1585-1595. Thus, there can be no clear and unmistakable
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`disclaimer of this term “switching facility” that was introduced and defined months
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`later by the applicants on February 16, 2010. Ex. 1010, 66, 68-80, 84-88.
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`32. Fourth, in the portions of the February 16, 2010 response relied upon
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`by Mr. Bates, the applicants always conditionally describe “switching facilities” to
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`illustrate a specific function or a specific location. Ex. 2001, ¶¶63-64, 69-70, 78;
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`Prelim. Resp., 29-32, 34-36, 39. For example, the applicants’ arguments
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`demonstrate that “switching facilities” can have varying functions and locations:
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` PSTN end office switches that connect calling parties to called parties
`only within a local geographic area
` PSTN tandem switching facilities that route calls received via end
`office switches or other tandem switching facilities to called parties
`within other geographic areas
` interconnect end office switches to other geographic areas that are not
`local to an end office switch.
`Ex. 1010, 87.
`33. Because the function and location of a “switching facility” can vary
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`broadly (as shown by the enumerated examples and applicant’s arguments), in
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`12
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`their February 16, 2010 amendments to the claims, the applicants recited specific
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`additional limitations to claim the function/location of the “switching facility” for
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`each particular claim:
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` for routing calls to other edge switches or other switching facilities
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`local or in other geographic areas (Claim 1, 19) (emphasis added)
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` for routing calls to edge switches or other switching facilities local or
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`in other geographic areas (Claim 22) (emphasis added)
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` allowing access to local and other geographic areas within the PSTN
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`(Claim 21) (emphasis added)
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` for routing calls to other geographic areas (Claim 41, 46, 49, 50)
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`Ex. 1010, 68, 71, 73, 77-80.
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`34.
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`If
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`the
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`location and function of a “switching facility” was
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`unambiguously disavowed as Mr. Bates asserts, then the varying claim language
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`identifying the particular location and function of “switching facilities” in each
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`claim would be superfluous. Ex. 2001, ¶¶68-70, 75, 80; Prelim Resp., 33-39; Ex.
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`1010, 68, 71, 73, 77-80.
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`35. Rather, in my opinion, for each particular claim, “any point in the
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`switching fabric of converging networks” (whether it be an edge switch, tandem
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`switch, hybrid switch, gateway, STP, etc.) is a “switching facility” for such claim
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`if it performs the function, and is in the location, recited in such claim.
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`13
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`PATENT OWWNER’S AR
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`RGUMENTS
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`S REGARDIING ARCH
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`ER AND CHHANG
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`Patennt Owner’’s Argumeents Regarrding Arccher
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`A 3
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`IV. P
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`A.
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`6. Mr. BBates asserrts that Arrcher’s connverters 1226 and 1322 are both e
`edge
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`switches or edge
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`devices,
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`and not “switching
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`facilities””, because
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`(1) each
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`only
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`connectts to circuiit-switchedd network
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`118/PSTNN 136 via
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`analog linnes, (2) ne
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`ither
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`routes iinformationn on circuuit-switched networkk 118/PSTNN 136, annd (3) a POOSA
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`would nnot connecct either too a tandemm switch bbecause of f (1) and bbecause ne
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`ither
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`sends oor receivess call signnaling. Exx. 2001, ¶¶¶87-89, 996-101, 1112-113; Prrelim
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`leading annd/or
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`Resp., 442-44, 49--50, 56. IIn my opinnion, thesee assertionns are mis
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`inaccuraate.
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`37. First,, there is
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`no disputee that Arccher’s convverters 1266 and 1322 are
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`respectiive points
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`in the swwitching fabbric of connverging ccircuit-swiitched netwwork
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`118/PSTTN 136 aand packeet-switchedd network//IP netwoork 130. SSee Ex. 22001;
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`Prelim.
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`Resp.;
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`supra
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`Section
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`III.A;
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`Ex.
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`1003
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`att
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`FIG.
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`2:
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`PSTN
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`Converteer
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`IP netwoork Conveerter
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`PSTTN
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`14
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`3
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`8. Seconnd, Mr. BBates’ asse
`rtion that
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`converterss 126 andd 132 are eedge
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`devices
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`because tthey receivve analog ssignals is iirrelevant
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`to whetheer such devvices
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`are “swwitching faccilities” annd is basedd on an inaaccurate prremise. EEx. 2001, ¶¶¶87-
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`89, 99-1100. A “switching ffacility” is
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`defined byy its expreessly reciteed locationn and
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`functionn in a netwwork, and
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`not by thee type of llines (e.g.
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`analog or
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`digital) thhat it
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`connectts to. Seee Section
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`III.B. MMoreover,
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`Archer cllearly disccloses thatt the
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`interconnnect betwween convverters 1226 and 1332 and ccircuit-swittched netwwork
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`118/PSTTN 136 can be eitherr analog orr digital:
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`Circuit-swittched netwwork 118
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`can be eiither an aanalog nettwork, a
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`digital netwwork, or
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`a combinnation of
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`both. EEx. 1003,
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`5:10-11
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`C d (
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`eemphasis aadded);
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`Inn general,
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`the PSTNN to IP-n
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`ter 126) e., convertetwork gaateway (i.e
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`15
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`should be able to support the translation of PCM to multiple encoding
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`schemes to interwork with software from various vendors. Ex. 1003,
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`5:59-62 (emphasis added).
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`PCM was well known as a digital representation of an analog signal; thus, a POSA
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`understood that Archer’s converters 126 and 132 can receive digital voice.
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`39. Third, contrary to Mr. Bates’ assertions (Ex. 2001, ¶¶87-88, 99-101,
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`112-113), in my opinion, Archer discloses that converters 126 and 132 both route
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`call information, including both voice and call signaling, on both of these
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`converging networks and to/from multiple locations or geographic areas. Mr.
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`Bates’ acknowledges that Archer discloses converters 126 and 132 route call
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`information on packet-switched network/IP network 130 but asserts that Archer’s
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`converters 126 and 132 are limited to only routing in that direction. Ex. 2001, ¶99.
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`However, Figures 2 and 6 clearly show that Archer’s converters 126 and 132
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`communicate bi-directionally (i.e. over both only packet-switched network/IP
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`network 130 and circuit-switched network 118/PSTN 136):
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`16
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`PSTN
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`IP netwoork
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`Converteer
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`PST
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`N
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`Conveerter
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`Ex. 10003, FIG. 2
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`(reproduceed and annnotated aboove), FIG.
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`6. Moreoover, withinn the
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`preferreed embodimment of Arrcher’s connverters 1226 and 1322, router 774 is conneected
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`to a moodem bankk 70, whicch impliess to a POSSA that roouter 74 iss connecteed to
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`multiplee modems::
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`17
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`Ex. 1003, FIG. 3 (reproduced above). Thus, within converters 126 and 132, the
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`router 74 must pick the path to the correct modem within the modem bank 70 in
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`the direction from the packet-switched network/IP network 130 to circuit-switched
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`network 118/PSTN 136.
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`40. Archer also expressly discloses that server processor 128 can address
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`IP packets to converter 126 (132), and that converter 126 (132) (1) decodes
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`multiple destination telephone numbers from IP packets, (2) causes multiple
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`destination telephone numbers to ring, and (3) routes call information to the
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`responding destination number. Ex. 1003, 9:7-19, 9:31-34, 9:51-55, 11:23-25.
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`Therefore, a POSA would understand that Archer’s converters 126 and 132 can
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`select a path that call information takes in both directions. See Ex. 1032, 14
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`(“route”).
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`41. Archer additionally discloses that these multiple destination telephone
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`numbers (that converters 126 and 132 cause to ring and route call information to)
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`can be in different geographic areas. Indeed, one of the primary benefits Archer
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`described as being provided is to allow calls placed to a called party to be
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`forwarded to such party no matter where he/she is in the world. Ex. 1003, 2:66-
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`3:3; 3:53-55; 5:23-26; FIGS. 2, 6.
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`42. Furthermore, Mr. Bates’ assertion that converters 126 and 132 neither
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`send nor receive call signaling is inaccurate. Ex. 2001, ¶¶100, 112-113. Indeed,
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`18
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`while Mr. Bates asserts that converters 126 and 132 “will never receive or be
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`expected to process” call signaling such as SS7, earlier in his report he
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`acknowledges that these devices “utilize[] signaling information to generate packet
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`addressing information.” Ex. 2001, ¶¶89, 112-113.
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`43. Archer also expressly describes that converters 126 and 132 receive
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`call notification messages, use such messages to cause telephones to ring, receive
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`pick-up notifications, and route call information to the responding destination
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`number. Ex. 1003, 9:7-19, 9:31-34, 9:51-55, 11:23-25. It was well known to a
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`POSA that telephones ring as a result of call request signaling. Ex. 1102, ¶¶57-61,
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`73-77; Ex. 1037, 131-36, Fig. 8-1, 133 (shown below); see also Ex. 1003, 4:27-30
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`(call originate messages).
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`19
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`It was also well known to a POSA that call accept signals were used to finalize the
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`path, or circuit, over which the voice traffic (i.e. media) of the call traveled. Ex.
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`1102, ¶¶57-61, 73-77; Ex. 1037, 95-102, Fig. 3-8, 131-35, Fig. 8-1 (above); Ex.
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`1027, 9-10. Thus, a POSA would understand that Archer’s converters 126 and 132
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`send, receive, and process call signaling.
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`44. Thus, in my opinion, Mr. Bates’ premise as to why converters 126 and
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`20
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`132 are not “switching facilities”, and as to why a POSA would not connect them
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`to a tandem switch, is inaccurate.
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`B.
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`Patent Owner’s Arguments Regarding Archer and Chang
`Combination
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`45.
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`In my opinion, Mr. Bates misstates Petitioners’ reading of the
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`limitation “the web enabled processing system coupled to at least one of the
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`switching facilities of the network” onto Archer and a combination of Archer and
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`Chang. Ex. 2001, ¶¶103-117; Prelim. Resp. 51-58.
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`46. Rather, as set forth in the Petition and my earlier expert declaration in
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`this case, Petitioners detailed how a POSA understood that Archer’s preferred
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`embodiment in which server processor 128 is coupled to switching facilities in the
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`PSTN 118 (136) via converters 126/132, including well-known tandem switch,
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`SCP, and STP switching facilities, discloses, and renders obvious, “the web
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`enabled processing system coupled to at least one of the switching facilities of the
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`network.” Pet., 46-49; Ex. 1102, ¶¶210-221; see also Section III.A.
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`47. Archer’s preferred server processor 128 and converter 126/132
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`embodiment closely mimics the embodiment in FIG. 2 of the ’298 patent in which
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`TAC 10 interfaces with an IP network for VoIP calls and the PSTN:
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`21
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`48. As set forth in the Petition and my earlier expert declaration in this
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`case, Archer discloses inherently, but not explicitly, that PSTN 118 (136) includes
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`tandem switches. Pet., 46-48; Ex. 1102, ¶¶215-217. Nevertheless, a POSA would
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`understand that the tandem switch of Chang (11T) could be used in the PSTN 118
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`(136) of Archer.
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`49. Mr. Bates inaccurately characterizes Petitioners’ application of
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`Chang. Ex. 2001, ¶¶106-116; Prelim Resp. 53-58. For example, in the Petition
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`and my earlier expert declaration in this case, Petitioners detailed how Chang
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`discloses a web-enabled processing system coupled to PSTN switching facilities
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`including tandem switches (11T). Pet., 38-41, 49-50; Ex. 1102, ¶¶167-181, 222-
`22
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`231. Further by way of example, in my earlier declaration, I described the
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`operation of Chang’s web-enabled processing system including how such system
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`routes communications and completes communication links based on user control
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`selections:
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` Chang discloses that the web server (525) and Secure Access
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`Platform
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`(25) enable a direct user access for providing control selections to
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`switching facilities by providing the user control selections to the SCP
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`(19). Ex. 1004, 18:66-19:12, Figs. 2 (19, 25), Fig. 5 (55), Abstract. A
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`subscriber, while viewing the web page interface provided by web
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`server (525) can modify the displayed service features or enter
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`specific “detailed information in fields of the service control
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`templates.” Ex. 1004, 21:1-10. The information is forwarded from the
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`subscriber computer (29), over the Internet (27), to proxy server (523)
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`and, if “legal,” to WSMS application (527) on Secure Access Platform
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`(25). Ex. 1004, 21:1-10, Fig. 2. The Secure Access Platform (25)
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`provides the control selections to the SCP (19) controlling the
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`particular service. Ex. 1004, 21:12-27, Fig. 2.
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`The SCPs (19) in turn control tandem switches (11T) in the PSTN
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`using SS7 signaling. Ex. 1004, 8:29-63, 9:18-36, Fig. 1 (11T, 19, 25).
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`23
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`Chang discloses that the Secure Access Platform (25) connects to
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`SCPs (19) through the OSN (21) to provide the user control features
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`to tandem switching offices (11T, switching facilities) through STPs
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`(15) using SS7 signaling. Ex. 1004, 14:39-48, 16:17-26, 18:66-19:12,
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`21:1-27, Fig. 1 (11T, 15, 19, 21, 25, annotated in red below
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`and designated path A), Fig. 5 (525).
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`Ex. 1102, ¶¶169-170; see also Pet., Section VII.A.2, 22, 36, 51, 53.
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`50. Earlier in my report, I also summarized this operation as follows:
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`Chang teaches that users access a web server (525) through a secure
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`access platform (25) over the Internet (27) to set call features in the
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`service control point (SCP) 19 of the PSTN. Ex. 1004, 8:55-63, 11:9-
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`12:30, 16:1-11, 18:66-19:11, 22:33-49, Fig. 1, Fig. 2. Chang’s SCP
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`controls calls by coupling to both tandem switches (11T) and
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`terminating central office edge switches 11E through the service
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`transfer point (STP) 15 using standard SS7 signaling. Ex. 1004, 8:23-
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`9:7, 10:33-60, Fig. 1.
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`Ex. 1102, ¶106; see also ¶¶138 (“In my opinion, a POSA would understand the
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`web server (525) on Secure Access Platform (25) constitutes the claimed web
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`server of a web-enabled processing system.”) 141 (“In my opinion, the web page
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`interface of Chang provided by Secure Access Platform (25), which controls the
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`24
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`SCPs (19), discloses the claimed user control selections provided by a user via
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`access to a web server.”) ; see also Pet., VII.A.2, 22, 36, 51, 53.
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`51. Mr. Bates also inaccurately characterizes Petitioners’ combination of
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`Archer and Chang. Ex. 2001, ¶¶106-116; Prelim Resp. 53-58. In the Petition and
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`my earlier expert declaration in this case, Petitioners further detailed the
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`motivation for a POSA to modify Archer’s server processor 128 and database 138
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`to include Chang’s web server 525, and modify Archer’s PSTN 118(136) to
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`include Chang’s tandem switches (11T). Pet., 34-41, 49-50; Ex. 1102, ¶¶138, 174-
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`181, 224-231.
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`52. Thus, in my opinion, Mr. Bates misstates Petitioners’ reading of the
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`limitation “the web enabled processing system coupled to at least one of the
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`switching facilities of the network” onto Archer and a combination of Archer and
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`Chang.
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`V. CONCLUSION
`53.
`I reserve the right to offer testimony in support of this Declaration.
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`54.
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`In signing this Declaration, I recognize that the Declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office. I also recognize that I may be
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`subject to cross-examination in the case. If required, I will appear for cross-
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`examination at the appropriate time.
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`25
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`55.
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`I hereby declare that all
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`statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true and,
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`further,
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`that
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`these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under 18 U.S.C. § 1001.
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`Dated:
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`ll/W‘
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`ii. ION
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`Respectfully submitted,
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`Dr. Thomas La Porta
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`26