`of U.S. Patent No. 8,542,815
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`AT&T Services, Inc.
`Petitioner
`v.
`
`Digifonica (International) Limited
`Patent Owner
`
`Patent No. 8,542,815
`_______________
`
`Inter Partes Review No. (To Be Assigned)
`____________________________________________________________
`
`
`
`DECLARATION OF JAMES BRESS IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1
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`AT&T, Exh. 1003, p. 1
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
`
`Table of Contents
`I.
`Introduction ......................................................................................................................... 7
`II.
`Summary of Opinions ......................................................................................................... 8
`III.
`Background and Qualifications ........................................................................................... 9
`IV. Materials Considered ........................................................................................................ 20
`V.
`Understanding of the Law ................................................................................................. 21
`A. Legal Standard for Prior Art ......................................................................................... 21
`B. Legal Standard for Obviousness ................................................................................... 23
`C. Legal Standard for Claim Construction ........................................................................ 27
`Level of Skill of One of Ordinary Skill in the Art ............................................................ 28
`VI.
`VII. Brief Overview of the ʼ815 Patent .................................................................................... 30
`A. Admitted Prior Art in the Background ......................................................................... 30
`B. The Purported Invention of the ʼ815 Patent ................................................................. 31
`C. The Challenged Claims ................................................................................................ 41
`VIII. State of the Art .................................................................................................................. 46
`IX.
`Claim Construction ......................................................................................................... 127
`A.
`“receiving means for receiving a caller identifier and a callee identifier, in response to
`initiation of a call by a calling subscriber” ................................................................. 127
`“means for locating a caller dialing profile comprising a username associated with the
`caller and a plurality of calling attributes associated with the caller” and “means for
`accessing a database of caller dialing profiles wherein each dialing profile associates a
`plurality of calling attributes with a respective subscriber, to locate a dialing profile
`associated with the caller, in response to initiation of a call by a calling subscriber” 128
`“means for determining a match when at least one of said calling attributes matches at
`least a portion of said callee identifier” ...................................................................... 128
`“means for classifying the call as a public network call when said match meets public
`network classification criteria” ................................................................................... 129
`“means for classifying the call as a private network call when said match meets private
`network classification criteria” ................................................................................... 129
`“means for producing a private network routing message for receipt by a call
`controller, when the call is classified as a private network call, said private network
`routing message identifying an address, on the private network, associated with the
`callee” ......................................................................................................................... 130
`“means for producing a public network routing message for receipt by a call
`controller, when the call is classified as a public network call, said public network
`routing message identifying a gateway to the public network” ................................. 130
`“formatting means for formatting said callee identifier into a pre-defined digit format
`to produce a re-formatted callee identifier”................................................................ 131
`
`G.
`
`H.
`
`
`
`2
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
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`AT&T, Exh. 1003, p. 2
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
`
`
`I.
`
`“means for producing a private network routing message for receipt by a call
`controller, said private network routing message identifying an address, on a private
`network, through which the call is to be routed, when at least one of said calling
`attributs and at least a portion of a callee identifier associated with the callee match
`and when the match meets a private network classification criterion, the address being
`associated with the callee” ......................................................................................... 131
`“means for producing a public network routing message for receipt by a call
`controller, said public network routing message identifying a gateway to a public
`network when at least one of said calling attributes and said at least said portion of
`said callee identifier associated with the callee match and when the match meets a
`public network classification criterion” ..................................................................... 132
`“means for causing the private network routing message or the public network routing
`message to be communicated to a call controller to effect routing of the call” ......... 133
`Analysis of the Prior Art ................................................................................................. 133
`A. Nadeau ........................................................................................................................ 134
`B. Kelly ........................................................................................................................... 142
`C. Vaziri .......................................................................................................................... 144
`Summary of the Grounds for Unpatentability of the Challenged Claims ....................... 146
`XI.
`XII. Nadeau-Kelly renders obvious Claims 1, 7, 27, 54, 72–74, and 92 ................................ 147
`It was obvious to modify the service logic controller (“SLC”) of Nadeau to perform
`A.
`the gateway selection process taught in Kelly ............................................................ 147
`B. Claim 1 ....................................................................................................................... 150
`1.
`Preamble: “A process for operating a call routing controller to facilitate
`communication between callers and callees in a system comprising a plurality of
`nodes with which callers and callees are associated” ......................................... 150
`Limitation 1a: “in response to initiation of a call by a calling subscriber, receiving
`a caller identifier and a callee identifier” ............................................................ 153
`Limitation 1b: “locating a caller dialing profile comprising a username associated
`with the caller and a plurality of calling attributes associated with the caller” .. 156
`Limitation 1c: “determining a match when at least one of said calling attributes
`matches at least a portion of said callee identifier” ............................................ 159
`Limitation 1d: “classifying the call as a public network call when said match
`meets public network classification criteria and classifying the call as a private
`network call when said match meets private network classification criteria” .... 161
`Limitation 1e: “when the call is classified as a private network call, producing a
`private network routing message for receipt by a call controller, said private
`network routing message identifying an address, on the private network,
`associated with the callee” .................................................................................. 166
`
`J.
`
`K.
`
`X.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`
`
`3
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`AT&T, Exh. 1003, p. 3
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`7.
`
`Limitation 1f: “when the call is classified as a public network call, producing a
`public network routing message for receipt by the call controller, said public
`network routing message identifying a gateway to the public network” ............ 171
`C. Claim 7: “The process of claim 1 further comprising formatting said callee identifier
`into a pre-defined digit format to produce a re-formatted callee identifier” .............. 175
`D. Claim 27 ..................................................................................................................... 176
`E. Claim 54 ..................................................................................................................... 177
`1.
`Preamble: “A process for operating a call routing controller to establish a call
`between a caller and a callee in a communication system” ................................ 178
`Limitation 54a: “in response to initiation of a call by a calling subscriber, locating
`a caller dialing profile comprising a plurality of calling attributes associated with
`the caller” ............................................................................................................ 178
`Limitation 54b: “when at least one of said calling attributes and at least a portion
`of a callee identifier associated with the callee match and when the match meets a
`private network classification criterion, producing a private network routing
`message for receipt by a call controller, said private network routing message
`identifying an address, on a private network, the address being associated with the
`callee” ................................................................................................................. 180
`Limitations 54c: “when at least one of said calling attributes and said at least said
`portion of said callee identifier associated with the callee match and when the
`match meets a public network classification criterion, producing a public network
`routing message for receipt by a call controller, said public network routing
`message identifying a gateway to a public network” .......................................... 180
`F. Claim 72: “The process of claim 54 further comprising causing the private network
`routing message or the public network routing message to be communicated to a call
`controller to effect routing of the call” ....................................................................... 181
`G. Claim 73: “A non-transitory computer readable medium encoded with codes for
`directing a processor to execute the method of claim 54” ......................................... 182
`H. Claim 74 ..................................................................................................................... 182
`1.
`Preamble: “A call routing controller apparatus for establishing a call between a
`caller and a callee in a communication system” ................................................. 182
`Limitation 74a: “a processor operably configured to” ........................................ 183
`Limitation 74b: “access a database of caller dialing profiles wherein each dialing
`profile associates a plurality of calling attributes with a respective subscriber, to
`locate a dialing profile associated with the caller, in response to initiation of a call
`by a calling subscriber” ....................................................................................... 184
`Limitation 74c: “produce a private network routing message for receipt by a call
`controller, said private network routing message identifying an address, on a
`private network, through which the call is to be routed, when at least one of said
`calling attributes and at least a portion of a callee identifier associated with the
`
`2.
`
`3.
`
`4.
`
`2.
`3.
`
`4.
`
`
`
`4
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`AT&T, Exh. 1003, p. 4
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`
`5.
`
`I.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`callee match and when the match meets a private network classification criterion,
`the address being associated with the callee” ..................................................... 185
`Limitation 74d: “produce a public network routing message for receipt by a call
`controller, said public network routing message identifying a gateway to a public
`network, when at least one of said calling attributes and said at least said portion
`of said callee identifier associated with the callee match and when the match
`meets a public network classification criterion” ................................................. 187
`Claim 92: “The apparatus of claim 74 wherein said processor is further operably
`configured to cause the private network routing message or the public network routing
`message to be communicated to a call controller to effect routing of the call” ......... 188
`XIII. Nadeau-Kelly-Vaziri renders obvious Claims 28, 34, 93, and 111 ................................. 188
`It was obvious to modify the service logic controller (“SLC”) of Nadeau-Kelly to
`A.
`perform the prefix translation process taught by Vaziri ............................................. 188
`B. Claim 28 ..................................................................................................................... 194
`1.
`Preamble: “A call routing apparatus for facilitating communications between
`callers and callees in a system comprising a plurality of nodes with which callers
`and callees are associated” .................................................................................. 194
`Limitation 28a: “receiving means for receiving a caller identifier and a callee
`identifier, in response to initiation of a call by a calling subscriber” ................. 195
`Limitation 28b: “means for locating a caller dialing profile comprising a
`username associated with the caller and a plurality of calling attributes associated
`with the caller” .................................................................................................... 198
`Limitation 28c: “means for determining a match when at least one of said calling
`attributes matches at least a portion of said callee identifier” ............................ 200
`Limitation 28d: “means for classifying the call as a public network call when said
`match meets public network classification criteria” ........................................... 203
`Limitation 28e: “means for classifying the call as a private network call when said
`match meets private network classification criteria” .......................................... 212
`Limitation 28f: “means for producing a private network routing message for
`receipt by a call controller, when the call is classified as a private network call,
`said private network routing message identifying an address, on the private
`network, associated with the callee” ................................................................... 215
`Limitation 28g: “means for producing a public network routing message for
`receipt by a call controller, when the call is classified as a public network call,
`said public network routing message identifying a gateway to the public
`network.” ............................................................................................................. 228
`C. Claim 34: “The apparatus of claim 28 further comprising formatting means for
`formatting said callee identifier into a pre-defined digit format to produce a re-
`formatted callee identifier.” ........................................................................................ 236
`D. Claim 93 ..................................................................................................................... 238
`
`8.
`
`
`
`5
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`AT&T, Exh. 1003, p. 5
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`E. Claim 111: “The apparatus of claim 93 further comprising means for causing the
`private network routing message or the public network routing message to be
`communicated to a call controller to effect routing of the call.” ................................ 238
`XIV. Conclusion ...................................................................................................................... 241
`
`6
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`AT&T, Exh. 1003, p. 6
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
`
`
`I, James Bress, declares as follows:
`
`I.
`
`INTRODUCTION
`1.
`
`I have been retained as a technical expert on behalf of petitioner
`
`AT&T Services, Inc. in connection with the above-captioned inter partes review
`
`(“IPR”) of U.S. Patent No. 8,542,815 (“the ’815 Patent”). I understand that the
`
`’815 Patent is currently assigned to Digifonica (International) Limited.
`
`2.
`
`I am familiar with the technology at issue in the period prior to
`
`November 2, 2006, which is the filing date of the provisional application to which
`
`the ’815 Patent claims priority. I have not performed an analysis to determine
`
`whether any of the claims of the ’815 Patent should be entitled to this earlier
`
`priority date. However, none of the opinions stated herein would change if any
`
`claim were entitled to this earlier priority date.
`
`3.
`
`I have been asked to provide my technical opinion on concepts
`
`discussed in the ’815 Patent and the reference documents, as well as my technical
`
`opinion on how these concepts relate to several ’815 Patent claim limitations in the
`
`context of the specification.
`
`4.
`
`I have been asked to consider how a person of ordinary skill in the art
`
`would understand the claims of the ’815 Patent and the applied reference
`
`
`
`7
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`combinations. In reaching the opinions stated herein, I have considered the ’815
`
`Patent and the references discussed herein in the context of my own education,
`
`training, research, knowledge, and personal and professional experience.
`
`5.
`
`I am being compensated at my standard hourly rate of $350.00 per
`
`hour. My compensation is not dependent on the outcome of this IPR and in no
`
`way affects the substance of my statements in this declaration.
`
`6.
`
`I make this declaration based upon my own personal knowledge and,
`
`if called upon to testify, would testify competently to the matters contained herein.
`
`I may rely on handbooks, textbooks, technical literature, my own personal
`
`experience in the field, and other relevant materials and/or information to
`
`demonstrate the state of the art in the relevant period and the evolution of relevant
`
`technologies.
`
`II.
`
`SUMMARY OF OPINIONS
`7.
`
`After studying the ’815 Patent, its file history, and the prior art, and
`
`considering the subject matter of the claims of the ’815 Patent in light of the state
`
`of
`
`technical advancement
`
`in
`
`the area of
`
`IP
`
`telephony networks and
`
`telecommunications networks prior to the filing of the ’815 Patent, I reached the
`
`conclusions discussed herein.
`
`
`
`8
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`AT&T, Exh. 1003, p. 8
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`8.
`
`In light of these general conclusions, and as explained in more detail
`
`throughout this Declaration, it is therefore my opinion that Claims 1, 7, 27–28, 34,
`
`54, 72–74, 92–93, and 111 (the “Challenged Claims”) of the ʼ815 Patent are
`
`invalid as being obvious in the relevant time frame (prior to November 2006) in
`
`light of the knowledge of a person of ordinary skill in the art at that time and the
`
`teachings, suggestions, and motivations present in the prior art.
`
`III. BACKGROUND AND QUALIFICATIONS
`9. My qualifications are stated more fully in my curriculum vitae. (See
`
`EX1004.) As reflected in my curriculum vitae, and as explained in more detail
`
`below, I have experience with the technology described in the ’815 Patent,
`
`including
`
`telecommunications network architectures, protocols, addressing,
`
`standards, Public Switched Telephone Networks (PSTN), Voice-over-IP (VoIP)
`
`telephony and networks, mobile networks, interworking between PSTN, VoIP, and
`
`mobile networks, the Session Initiation Protocol (SIP), the H.323 Protocol, the
`
`Transmission Control Protocol (TCP), the Internet Protocol (IP), call processing
`
`for both PSTN, VoIP, and mobile networks, network interfacing, network
`
`interconnection, gateways, call controllers, soft switches, etc. Here I provide a
`
`brief summary of my qualifications.
`
`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
`
`
`10.
`
`I received a Bachelor of Science degree in electrical engineering from
`
`the University of North Carolina at Charlotte in 1985, and a Master of Science
`
`degree in electrical engineering from the California Institute of Technology in
`
`1987. From 1982 to 1984, while still attending the University of North Carolina, I
`
`My duties there included technical writing for field‐located energy management
`field‐located equipment and host systems.
`
`was an engineering technician at Process Systems, Inc., located in Charlotte, NC.
`
`equipment which was remotely accessible via modems and telephone lines, host
`
`system software and user manuals, as well as developing test equipment for the
`
`11.
`
`In addition to my educational background, I have over 30 years of
`
`experience in the telecommunications industry. In 1985, after graduating from the
`
`University of North Carolina, I was employed by Bell Communications Research,
`
`Inc. (also known as Bellcore), located in Piscataway, NJ. I was an engineer and
`
`Member of the Technical Staff (MTS) at Bellcore with responsibility for numerous
`
`telecommunications systems operations and development projects. For these
`
`systems-related projects, I was responsible for development, integration, and
`
`testing including computers, network hardware, network interconnections, network
`
`signaling, network protocols, network equipment provisioning and configurations,
`
`database technologies, applications and software development, user interfaces,
`
`
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`AT&T, Exh. 1003, p. 10
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`client-server operations, test systems development, and telephony features
`
`development and prototyping.
`
`12.
`
`In 1995, I founded AST Technology Labs, Inc., located in Melbourne,
`
`Florida, where I am the President and Chief Technical Officer. AST’s business is
`
`focused on telecommunications equipment and networks. My responsibilities at
`
`AST include the development of detailed system specifications, architectures,
`
`hardware, and software for custom telecommunications and telephony test systems
`
`including analog, digital, VoIP, and wireless. My responsibilities also include
`
`researching and analyzing the products that are tested at AST to enable system
`
`configurations, preparation for testing, troubleshooting hardware and software, and
`
`providing consulting to AST’s customers.
`
`13.
`
`I have served on numerous standards setting committees of the
`
`Telecommunications Industry Association (“TIA”) and have been a prime
`
`contributor, editor, and working group chairman for the development of many
`
`published ANSI
`
`(American National
`
`Standards
`
`Institute)
`
`/ TIA
`
`telecommunications standards. I served continuously from 2000 to 2015 as
`
`chairman or vice chairman of the TIA TR41.3 engineering subcommittee for
`
`Performance and Accessibility for Communications Products. Starting in 2015 and
`
`to the present, I am the chairman of the parent engineering committee, TR41. I
`
`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`also authored numerous system requirement publications and recommendations for
`
`Bellcore. Additionally, I am a named inventor on four issued US patents.
`
`14. My first assignment during my employment at Bellcore was in the
`
`software operations area. This area was focused on operations system software
`
`including PREMIS (PREMise Information System), SOAC (Service Order
`
`Analysis & Control), and LFACS (Loop Facility Assignment and Control System).
`
`These software systems integrated hardware (network access and switching
`
`equipment and computers) and software (database, reporting, network control,
`
`monitoring, management, and user interface) used for the operations systems used
`
`by Bellcore’s owners (the Regional Bell Operating Companies (RBOCs) or “Baby
`
`Bells”) in support of the Public Switched Telephone Network (PSTN). My
`
`experiences during this assignment included software installation and testing,
`
`network management, network equipment provisioning, database configuration
`
`and schema development, network connectivity troubleshooting, and software
`
`documentation.
`
`15. My next assignment at Bellcore was on a development team for the
`
`“Information Gateway” project. My responsibilities included data network design,
`
`network connectivity implementation, network equipment configurations and
`
`provisioning, and troubleshooting for the networked connectivity of computer
`
`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`systems located in multiple states across the USA. Networking for this project
`
`included PSTN and data network facilities and services and interworking between
`
`the PSTN and data networks. The computer systems provided access to servers,
`
`databases and terminal interface software from distributed network connected
`
`workstations. In addition to networking, I was also responsible for database
`
`system design and distributed network access to compressed image files located on
`
`a network connected server. One of my many projects included analysis,
`
`configurations, and troubleshooting of X.25 data network termination circuits, and
`
`the related termination equipment, to enable numerous system demonstrations that
`
`were set up in multiple locations across the USA.
`
`16. My work in Bellcore’s “New Services Development” area included
`
`designing and prototyping new services that were focused on the use of the
`
`Advanced Intelligent Network (AIN) system features and components. These
`
`projects required an understanding of telecommunications systems network
`
`architectures, signaling, protocols, standards, and features operations. One of my
`
`projects in this area included interfacing to AIN components including Service
`
`Control Points (SCP) and Signaling Transfer Points (STP) to implement a
`
`telephone network control feature. I am the first named inventor on a patent for
`
`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`one of the systems developed which was integrated with the AIN (U.S. Patent No.
`
`5,570,420, “Customer premise equipment network integrator”).
`
`17. Another assignment I had at Bellcore involving network signaling and
`
`features was for the development of the Analog Display Services Interface (ADSI)
`
`and the Caller ID on Call Waiting (CIDCW) feature that is now well known to
`
`telephone users. My responsibilities included analyzing PSTN switching systems
`
`architectures and capabilities, and feature related network triggers and service
`
`logic. I was also responsible for developing prototype systems, including hardware
`
`and software, for network signaling and features evaluation. Additionally, I was
`
`responsible for developing Bellcore’s Customer Premises Equipment (CPE) test
`
`lab (including hardware, software, lab operations, and reporting) to support the
`
`development of new telephony devices used with the ADSI and CIDCW features.
`
`18.
`
`I started designing network signal detection systems as a
`
`troubleshooting assignment for the Bell Companies. At this time in the late 1980s,
`
`most prison systems used primarily coin telephones, which were owned and
`
`operated by the Bell Companies, to provide telephony services to inmates. Inmates
`
`had discovered that they could defraud the telephone system by playing certain
`
`music into the telephone transmitter (microphone), which would cause the Bell
`
`Company Central Office (CO) accounting and billing systems to errantly record
`
`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`sometimes hundreds of dollars of credit due to falsely detecting coin-drop-
`
`confirmation tones. After this problem was solved, the knowledge I gained was
`
`used to develop Bellcore’s prototype CPE Alerting Signal (CAS) detector that was
`
`a key component of what became the widely popular Caller ID on Call Waiting
`
`(CIDCW) telephony feature. This work led to the issuing of U.S. Patent No.
`
`5,519,774 “Method and system for detecting at a selected station an alerting signal
`
`in the presence of speech” for which I am a named inventor.
`
`19.
`
`I am the first named inventor on U.S. Patent No. 7,076,031 “System
`
`and Method for Telephone Signal Collection and Analysis.” The impetus for this
`
`patent was the development of the TSA-6000® telephone signal recording and
`
`analysis system. This project culminated into the manufacture and sale of TSA-
`
`6000® systems starting in 2002. I was the chief architect for the design of this
`
`system and I continue to serve as the technical lead for this project and product.
`
`The TSA-6000® system was designed using the concept of functional units that
`
`can be combined in any physical implementation including the functions of 1)
`
`signal data capture and recording; 2) analysis of the captured signaling data to
`
`identify pre-defined telephone signals and events occurring in the recorded signals,
`
`as well as identifying the states, or modes of the telephone line; and 3) a user-
`
`friendly graphical interface for viewing signals and analysis data, and also for
`
`
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`
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`Declaration of James Bress in Support of Petition for Inter Partes Review
`of U.S. Patent No. 8,542,815
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`system configurations such as changing the parameters used during the analysis
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`operations. The software of the TSA-6000® was developed using C language and
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`runs on a Windows®-based computer. The software has been revised over the
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`years for multiple reasons including to add new pre-defined signal types or
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`classifications, and to modify and enhance the signal analysis algorithms.
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`20. While employed at AST Technology Labs (AST), I have been
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`responsible for the development of a “Call Generator” system for Telcordia
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`Systems (formerly Bellcore). The Call Generator system included PSTN and data
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`network interfaces integrated with a network based controller system. My
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`development responsibilities for
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`the controller system
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`included hardware
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`integration,
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`software development
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`including network
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`control,
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`remote
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`configuration, database, and user interfaces. The system was designed to
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`demonstrate Telcordia’s larger system goal of handling “one million calls per
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`minute” for emergency management. The system was installed at Telcordia and
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`used for demonstrations by Telcordia management and sales teams.
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`21.
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`In my position as chairman of the TIA-TR41.3 subcommittee and
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`TIA-TR41 committee for the performance of communications products, I have
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`been responsible for contributions to, and the development and publication of,
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`several PSTN and VoIP related per