Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
`IPR 2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`
`
`
`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 IPR2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
`
`DM2\7304079.3
`
`
`IPR 2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`
`
`
`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 IPR2016-01263
`U.S. Patent No. 8,155,298
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
`
`DM2\7304079.3
`
`
`
`TABLE OF CONTENTS
`
`PAGE
`
`
`I.
`INTRODUCTION ........................................................................................ 1
`II. APPLICANT DID NOT CLEARLY AND UNMISTAKABLY
`DISAVOW THE CLAIM SCOPE ASSERTED BY PATENT
`OWNER ......................................................................................................... 2
`A.
`Patent Owner Must Show a Clear and Unmistakable Disclaimer ....... 2
`B.
`Applicant Introduced and Broadly Defined “Switching
`Facilities” During the Prosecution of the ’777 Patent .......................... 2
`Applicant Did Not Clearly and Unmistakably Disavow its
`Broadly Defined Scope of “Switching Facility” .................................. 5
`III. PATENT OWNER’S ARGUMENTS REGARDING ARCHER
`AND CHANG SIMILARLY FAIL ............................................................. 8
`A.
`Patent Owner’s Assertions that Archer’s Converters 126, 132
`are Edge Switches or Edge Devices are Misleading and
`Inaccurate ............................................................................................. 8
`Patent Owner Misstates Petitioners’ Reading of a Web-Enabled
`Processing System Coupled to a Switching Facility of the
`PSTN or a Tandem Switch Onto a Combination of Archer and
`Chang .................................................................................................. 10
`
`C.
`
`B.
`
`
`
`i
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`
`
`List of Exhibits Cited in this Reply
`
`Exhibit Number
`1001
`1002
`1003
`1004
`1008
`1010
`1053
`
`1054
`1055
`
`Document
`U.S. Patent No. 8,155,298 (“the ’298 patent)
`Expert Declaration of Dr. Thomas La Porta
`U.S. Patent No. 6,683,870 to Archer (“Archer”)
`U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`File history of U.S. Patent No. 8,155,298
`File history of U.S. Patent No. 7,764,777
`Supplemental Expert Declaration of Dr. Thomas La Porta
`(“TLP”)
`U.S. Patent No. 6,574,328
`U.S. Patent No. 7,324,635
`
`
`
`ii
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`
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`
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`
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Board’s order of November 1, 2016, Petitioners respectfully
`
`submit this Reply to address Patent Owner’s arguments concerning disclaimer of
`
`claim scope in its Preliminary Response.
`
`Patent Owner’s Preliminary Response
`
`is an
`
`improper
`
` attempt
`
`to
`
`retroactively narrow the scope of a claim term (“switching facility”) that Applicant
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`introduced three years after it filed the related ’777 patent and ten years after it
`
`filed the earliest patent to which the ’777 patent claims priority. However,
`
`Applicant clearly intended this term to be interpreted broadly when it introduced
`
`this new claim term in an amendment and concurrently provided a definition with
`
`enumerated examples. Now, more than six years later, Patent Owner asks the
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`Board to ignore the previously provided definition and enumerated examples and
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`instead rely on a specification (presented years earlier) and arguments (presented
`
`months before the claim term was introduced by amendment) to find that
`
`Applicant disclaimed the broad scope that would otherwise be given to this claim
`
`term. Even if the Board considers Applicant’s “disclaimer” evidence, which it
`
`should not, it does not contain the requisite clear and unmistakable disavowal of
`
`claim scope asserted by Patent Owner. As a result, the Board should accept the
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`definition of the term “switching facility” that the Applicant provided during
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`1
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`prosecution when it introduced this term—“any point in the switching fabric of
`
`converging networks.”
`
`II. APPLICANT DID NOT CLEARLY AND UNMISTAKABLY DISAVOW THE
`CLAIM SCOPE ASSERTED BY PATENT OWNER
`A.
`The Federal Circuit has explained that the standard for finding a disclaimer
`
`Patent Owner Must Show a Clear and Unmistakable Disclaimer
`
`of claim scope is “exacting.” GE Lighting Solutions, LLC v. AgiLight, Inc., 750
`
`F.3d 1304, 1309 (Fed. Cir. 2014). Disavowal does not arise merely by
`
`criticizing a particular embodiment that is encompassed in the plain meaning
`
`of a claim term. See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321,
`
`1335 (Fed. Cir. 2009). Nor is it enough that all the embodiments of the
`
`invention disclosed in the specification contain a particular limitation. Thorner v.
`
`Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). Rather,
`
`a disclaimer of claim scope must be “clear and unmistakable.” Id. at 1366-67
`
`(emphasis added); see also Openwave Systems, Inc. v. Apple Inc., 808 F.3d 509,
`
`513 (Fed. Cir. 2015).
`
`B. Applicant Introduced and Broadly Defined “Switching Facilities”
`During the Prosecution of the ’777 Patent
`
`The first time that “switching facilities” appears anywhere in the intrinsic
`
`record of the ’298 patent, or any of the patents in its family, is February 16, 2010,
`
`when Applicant introduced it in response to a Final Office Action during
`
`prosecution of the related ’777 patent. EX. 1010, 66, 68-80, 84-88; TLP, ¶14;
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`2
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`Prelim Resp., 35; EX. 2001, ¶70. Specifically, in this response, Applicant amended
`
`several existing claims to include this term for the first time, and added new claims
`
`reciting it. EX. 1010, 68-80; TLP, ¶15. Applicant introduced this term into the
`
`intrinsic record of the ’298 patent eight months after it filed this response, and after
`
`the ’777 patent had issued, on October 5, 2010. EX. 1008, 97-102; TLP, ¶15.
`
`A Person of Ordinary Skill in the Art (“POSA”), reading this Feb. 16, 2010
`
`response and Applicant’s concurrently filed Substance of Personal Interview with
`
`the Examiner (the “Interview Summary”), understood that Applicant intended
`
`“switching facilities” to be interpreted broadly. EX. 1010, 65-66, 68-80; TLP, ¶16-
`
`17. For example, Applicant first states that “switching facilities” in the PSTN
`
`included both end office switches and interconnected tandem switches:
`
`Consistent with Newton’s definition, on which the Examiner relies,
`Schwab’s “end office switch” could arguably be considered to be
`“within” the PSTN. The PSTN is a configuration of switching
`facilities for routing calls from calling parties to called parties,
`comprising a plurality of end office switches (also referred to as
`central office switches or edge switches (e.g., a class 5 switch)) and a
`plurality of interconnected switching facilities (also referred to as
`tandem switches). EX. 1010, 86-87; TLP, ¶17.
`Next, Applicant broadly defined “tandem switching facilities” as “any point
`
`in the switching fabric of converging networks” and enumerated several examples
`
`of such “switching facilities”, namely “a signal transfer point (STP), signal control
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`3
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`point (SCP), session border controller (SBC), gateway, access tandem, class 4
`
`switch, wire center, toll office, toll center, PSTN switching center, intercarrier
`
`connection point, trunk gateway, hybrid switch, etc.” EX. 1010, 87, 87n.1; TLP,
`
`¶18. A POSA would understand that Applicant identified that it is this location—
`
`in the switching fabric of converging networks (e.g. at the convergence of a circuit
`
`switched network and a packet switched network)—that avoids a call having to
`
`reach the local edge switch of a particular subscriber before services for such
`
`subscriber (e.g. call forwarding) are invoked. EX. 1010, 86-88, 87n.1; TLP, ¶19.
`
`In this vein, it is noteworthy that Applicant’s enumerated examples of
`
`“tandem switching facilities” include a hybrid switch, which is a well-known
`
`combined class 4/class 5 switch (i.e. combined tandem/edge switch), and devices
`
`that were well-known to receive call signaling but not voice (e.g. STP, SCP). EX.
`
`1010, 87n.1; EX. 2002, 4; TLP, ¶¶20-21. Thus, Applicant expressly included a
`
`combination tandem/edge switch, and devices that only receive call signaling, in its
`
`definition of “switching facilities.” Id.
`
`Furthermore, Applicant expressly references its broad of definition of
`
`“switching facilities”, including its expressly enumerated examples, in its
`
`concurrently filed Interview Summary:
`
`The major difference lies in that Applicants’ architecture permits
`subscribers to apply features via web access to a controlling device
`that connects to a switching facility (tandem access switch also
`
`4
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`referred by other terminology in the industry) so that the features are
`not limited to a local geographic area. EX. 1010, 66; TLP, ¶22.
`Applicant’s intended broad interpretation of “switching facility” is also
`
`evident from its concurrently filed claim amendments. EX. 1010, 68-80, 84-88;
`
`TLP, ¶23. For example, Applicant broadened Claim 1 such that, instead of “web-
`
`enabled processing system” having to be “connected within the PSTN”, it merely
`
`had to be “connected to operate . . . with a communications network comprising”
`
`“edge switches” and “switching facilities for routing calls to other edge switches”:
`
`
`
`Id., 68; see also id., 71 (amendments to Claim 19); TLP, ¶23. Applicant also
`
`amended dependent Claim 7 to specify that only for this dependent claim is the
`
`“communication network” of Claim 1 limited to the PSTN and the “switching
`
`facility” of Claim 1 limited to “a PSTN tandem switch within the [PSTN].” Id., 69;
`
`TLP, ¶24. In contrast, when Applicant wanted narrow independent claims, it used
`
`“tandem switch” instead of “switching facility.” Id., 72 (Claim 20); TLP, ¶25.
`
`C. Applicant Did Not Clearly and Unmistakably Disavow its Broadly
`Defined Scope of “Switching Facility”
`
`In its Preliminary Response, Patent Owner asserts:
`
`[A]ccording to the intrinsic record, a “switching facility” (1) is a
`
`5
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`switch for routing calls to edge switches or other “switching facilities”
`local or in other geographic areas; and (2) is not an edge switch or an
`edge device. Prelim Resp., 34 citing EX. 2001, ¶68.
`However, this assertion is unsupported for several reasons. TLP, ¶¶27-35.
`
`First, Patent Owner relies on portions of the ’298 patent specification as
`
`purportedly disclaiming Applicant’s broad definition of “switching facility.”
`
`Prelim Resp., 21-26, 32; EX. 2001, ¶¶51-57, 65. However, neither the ’298 patent
`
`specification (filed July 5, 2006), nor the specification of any of the patents to
`
`which it claims priority (filed Apr. 30, 2003, and May 4, 2000) include the term
`
`“switching facility”; thus there can be no clear and unmistakable disclaimer of this
`
`term that was introduced and defined years later on Feb. 16, 2010. EX. 1001; EX.
`
`1054; EX. 1055; EX. 1010, 66, 68-80, 84-88; TLP, ¶28, see also id., 31.
`
`Second, Patent Owner attempts to retroactively define this claim term by
`
`identifying specific architectures in a “preferred embodiment” or “one
`
`embodiment”, as opposed to “the invention” or all embodiments of the invention,
`
`or by describing benefits that “the invention allows . . . to be added” rather than
`
`using language of exclusion such as “the invention adds”. Prelim Resp., 23-25;
`
`EX. 1001, 1:65-67, , 2:66-3:7; 4:15-19, FIG. 1, 3:7-28; TLP, ¶29. Such
`
`description of a preferred or particular embodiment, and/or that lacks language of
`
`exclusion, does not provide a clear and unmistakable disclaimer to a POSA.
`
`6
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`Epistar, 566 F.3d at 1335; Honeywell Inc. v. Victor Co. of Japan, Ltd., 298 F.3d
`
`1317, 1326 (Fed. Cir. 2002); TLP, ¶30 .
`
`Third, in the portions of the Feb. 16, 2010 response relied upon by Patent
`
`Owner, Applicant always conditionally describes “switching facilities” to illustrate
`
`a specific function or a specific location. Prelim. Resp., 29-32, 34-36, 39; EX.
`
`2001, ¶¶63-64, 69-70, 78; TLP, ¶32. Indeed, Applicant’s arguments demonstrate
`
`that “switching facilities” can have varying functions and locations:
`
` 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; TLP, ¶32.
`Moreover, because the function and location of a “switching facility” can
`
`vary broadly (as shown by the enumerated examples and Applicant’s arguments),
`
`Applicant recited specific additional limitations to claim the function/location of
`
`the “switching facility” in its Feb. 16, 2010 amendments:
`
` for routing calls to other edge switches or other switching facilities
`local or in other geographic areas (Claim 1, 19) (emphasis added)
` for routing calls to edge switches or other switching facilities local or
`in other geographic areas (Claim 22) (emphasis added)
`
`7
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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` allowing access to local and other geographic areas within the PSTN
`(Claim 21) (emphasis added)
` for routing calls to other geographic areas (Claim 41, 46, 49, 50)
`EX. 1010, 68, 71, 73, 77-80; TLP, ¶33.
`
`If the location and function of a “switching facility” was unambiguously
`
`disavowed as Patent Owner asserts, then the varying claim language identifying
`
`the particular location and function of “switching facilities” in each claim would be
`
`superfluous. Prelim Resp., 34-40, EX. 2001, ¶¶68-70, 75, 80; EX. 1010, 68, 71,
`
`73, 77-80; TLP, ¶34. Rather, for each particular claim, “any point in the switching
`
`fabric of converging networks” (whether it be an edge switch, tandem switch,
`
`hybrid switch, gateway, STP, etc.) is a “switching facility” for such claim if it
`
`performs the recited function, and is in the recited location. TLP, ¶¶13, 35.
`
`III. PATENT OWNER’S ARGUMENTS REGARDING ARCHER AND CHANG
`SIMILARLY FAIL
`A.
`
`Patent Owner’s Assertions that Archer’s Converters 126, 132 are
`Edge Switches or Edge Devices are Misleading and Inaccurate
`
`Patent Owner asserts Archer’s converters 126 and 132 are both edge
`
`switches or edge devices, and not “switching facilities”, because (1) each only
`
`connects to circuit-switched network 118/PSTN 136 via analog lines, (2) neither
`
`routes information on circuit-switched network 118/PSTN 136, and (3) a POSA
`
`would not connect either to a tandem switch because of (1) and because neither
`
`sends or receives call signaling. Prelim Resp., 42-44, 49-50, 56; EX. 2001, ¶¶87-
`
`8
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`
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`89, 96-101, 112-113. These assertions are misleading and/or inaccurate. TLP,
`
`¶¶36-44.
`
`First, there is no dispute that Archer’s converters 126 and 132 are respective
`
`points in the switching fabric of converging circuit-switched network 118/PSTN
`
`136 and packet-switched/IP network 130. TLP, ¶37; see Prelim. Resp.; EX. 2001;
`
`supra §II.B. Second, Archer clearly discloses that the interconnect between
`
`converters 126 and 132 and circuit-switched network 118/PSTN 136 can be either
`
`analog or digital. EX. 1003, 5:10-11 (“Circuit-switched network 118 can be either
`
`an analog network, a digital network, or a combination of both.”); 5:59-62 (“PSTN
`
`to IP-network gateway (i.e., converter 126)” receives PCM, i.e., digital voice);
`
`TLP, ¶38.
`
`Third, a POSA understood that Archer discloses converters 126 and 132
`
`both route call information, including both voice and call signaling, on both of
`
`these converging networks and to/from multiple locations or geographic areas.
`
`TLP, ¶39-44. For example, server processor 128 addresses IP packets to converter
`
`126/132 which decodes multiple destination telephone numbers from IP packets,
`
`causes multiple destination telephone numbers to ring, and routes call information
`
`to responding destination number. 8:63-66, 9:7-19, 9:31-34, 9:51-55; EX. 1002,
`
`¶¶56-60, 72-76; TLP, ¶40; cf. EX. 2001, ¶¶93, 95. Patent Owner’s arguments that
`
`Archer’s converters 126 and 132 would not be considered “switching facilities”
`
`9
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`thus all fail.
`
`B.
`
`Patent Owner Misstates Petitioners’ Reading of a Web-Enabled
`Processing System Coupled to a Switching Facility of the PSTN or
`a Tandem Switch Onto a Combination of Archer and Chang
`
`Patent Owner misstates Petitioners’ reading of the limitation “the web
`
`enabled processing system coupled to at least one of the switching facilities of the
`
`network” onto Archer and a combination of Archer and Chang. Prelim. Resp. 51-
`
`58; EX. 2001, ¶¶103-117; TLP, ¶¶45-52. Rather, Petitioners detailed how a POSA
`
`understood that Archer’s preferred embodiment in which server processor 128 is
`
`coupled to switching facilities in the PSTN 118 (136) via converters 126/132,
`
`including well-known tandem switch, SCP, and STP switching facilities, discloses,
`
`and renders obvious, “the web enabled processing system coupled to at least one of
`
`the switching facilities of the network.” Pet., 46-49; Ex. 1102, ¶¶210-221; TLP,
`
`¶46; see also supra §III.A. Indeed, this preferred server processor 128 and
`
`converter 126/132 embodiment closely mimics the embodiment in FIG. 2 of the
`
`’298 patent in which TAC 10 interfaces with an IP network for VoIP calls and the
`
`PSTN. TLP, ¶47; EX. 1001, FIG. 2. Archer discloses inherently, but not explicitly,
`
`that PSTN 118 (136) includes tandem switches. Pet., 46-48; EX. 1102, ¶¶215-217;
`
`TLP, ¶48. Nevertheless, a POSA would understand that the tandem switch of
`
`Chang (11T) could be used in the PSTN 118 (136) of Archer. TLP, ¶48.
`
`Specifically, Petitioners detailed how Chang discloses a web-enabled processing
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`10
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`system coupled to PSTN switching facilities including tandem switches (11T).
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`Pet., 38-41, 49-50; Ex. 1102, ¶¶167-181, 222-231; TLP, ¶¶49-50. Petitioners
`
`further detailed the motivation for a POSA to modify Archer’s server processor
`
`128 and database 138 to include Chang’s web server 525, and modify Archer’s
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`PSTN 118(136) to include Chang’s tandem switches (11T). Pet., 34-41, 49-50; Ex.
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`1102, ¶¶174-181, 224-231; TLP, ¶51.
`
`
`Dated: November 11, 2016
`
`BAKER BOTTS LLP
`ATTN: Wayne Stacy
`101 California Street
`Suite 3070, 30th Floor
`San Francisco, CA 94111
`
`Tel: 214-953-6678
`Fax: 415-291-6300
`
`
`
`
`
`
`By:
`
`
`
`
`
`Respectfully submitted,
`BAKER BOTTS LLP
`
`/s/ Wayne Stacy
`Wayne Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`11
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`Reply to Patent Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c)
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and 42.108(c), the undersigned certifies that on
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`November 11, 2016, a complete and entire electronic copy of this Reply to Patent
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`Owner’s Preliminary Response Pursuant to 37 C.F.R. § 42.108(c), including
`
`Exhibit Nos. 1053-1055 was served electronically via email on the following:
`
`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
`
`John Murphy
`murphy@nelbum.com
`
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`
`
`By: /s/ Wayne Stacy
`
`Wayne Stacy
`
`Reg. No. 45,125
`
`Lead Counsel
`
`
`1
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