`Trials@uspto.gov
`571-272-7822 Entered: December 28, 2017
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YMAX CORPORATION,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01258
`Patent 7,764,777 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`
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`
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`IPR2016-01258
`Patent 7,764,777 B2
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`I. INTRODUCTION
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`YMax Corporation (“Petitioner”) filed a Petition requesting inter
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`partes review of claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and 45 of U.S.
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`Patent No. 7,764,777 B2 (Ex. 1001, “the ’777 patent”), along with a
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`Declaration of Tal Lavian, Ph.D. (Ex. 1002). Paper 1 (“Pet.”). Focal IP,
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`LLC (“Patent Owner”) filed a Preliminary Response, along with a
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`Declaration of Mr. Regis J. Bates Jr. (Ex. 2001). Paper 7 (“Prelim. Resp.”).
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`Petitioner filed a Reply. Paper 11 (“Reply”). Upon consideration of the
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`parties’ contentions and supporting evidence, we instituted an inter partes
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`review pursuant to 35 U.S.C. § 314, as to claims 18, 21, 23, 25, 26, 28–31,
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`37, 38, 41, and 45 of the ’777 patent. Paper 13 (“Dec.”).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response (Paper 26, “PO Resp.”) and a Motion to Amend (Paper 27,
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`“Mot.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 33,
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`“Pet. Reply”) and an Opposition to Patent Owner’s Motion to Amend (Paper
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`32, “Opp.”). Patent Owner filed a Reply to the Motion to Amend. Paper 38,
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`“Reply.” Petitioner filed a Motion for Observation, Paper 45 (“Pet. Mot.
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`Obs.”) and Patent Owner filed a Response to the Motion for Observation,
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`Paper 46 (“PO Resp.”).
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`On September 19, 2017, we held an oral hearing. Paper 57 (“Tr.”).1
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`Subsequent to oral hearing, Petitioner was authorized to file a supplemental
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`brief in opposition to Patent Owner’s Motion to Amend in light of the
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`Federal Circuit’s en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d
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`1290 (Fed. Cir. 2017) (“Aqua Products”). Paper 54. On October 31, 2017,
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`
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`1 The oral arguments in the following cases were consolidated: Cases
`IPR2016-01256, IPR2016-01258, and IPR2016-01260. Paper 53.
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`2
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`IPR2016-01258
`Patent 7,764,777 B2
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`Petitioner filed a supplemental brief in opposition to Patent Owner’s Motion
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`to Amend. Paper 56 (“Supp. Br.”).
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`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
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`For the reasons that follow, we determine that Petitioner has demonstrated
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`by a preponderance of the evidence that claims 18, 21, 23, 25, 26, 28–31, 37,
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`38, 41, and 45 of the ’777 patent are unpatentable. Patent Owner’s Motion
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`to Amend is denied.
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`A. Related Matters
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`The parties state that the ’777 patent is the subject of pending lawsuits
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`in the Middle District of Florida, and these lawsuits include assertions
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`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
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`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
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`Pet. 1–2; Paper 4, 2–3. Another petitioner filed a petition also challenging
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`claims of the ’777 patent (i.e., IPR2016-01262). Paper 4, 3.
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`B. The ’777 Patent
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`The ʼ777 patent relates to telephone services. Ex. 1001, 1:18. In the
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`background section, the ’777 patent describes that the Public Switched
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`Telephone Network (PSTN) consists of a plurality of edge switches
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`connected to telephones on one side and to a network of tandem switches on
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`the other. Id. at 1:40−42. The tandem switch network allows connectivity
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`between all of the edge switches, and a signaling system is used by the
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`PSTN to allow calling and to transmit both calling and called party identity.
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`Id. at 1:42−46; Ex. 2022 ¶ 36; Ex. 1002 ¶¶ 38−45.
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`According to the ’777 patent, at the time of the invention, there were
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`“web-based companies managing 3rd-party call control, via the toll-switch
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`network, which allow users to enter call control information through a web
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`Patent 7,764,777 B2
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`portal.” Ex. 1001, 1:29−32. “Edge devices such as phones and PBXs that
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`include voice mail, inter-active voice response, call forwarding, speed
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`calling, etc., have been used to provide additional call control.” Id. at
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`2:36−39.
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`The ’777 patent discloses a system for allowing a subscriber to select
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`telephone service features. Id. at 1:18–21. Figure 1 of the ’777 patent is
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`reproduced below (with annotations).
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`
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`Annotated Figure 1 illustrates tandem access controller 10 connected
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`to conventional PSTN tandem switch 16. Id. at 4:40, 41. According to the
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`’777 patent, “[d]etails of the operation of the existing phone network,”
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`including directing of phone calls by “existing” PSTN tandem switch 16 to
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`central offices 17, 18 are further described in a publication incorporated by
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`reference, as well as “numerous books describing the PSTN.” Id. at 4:40–
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`51. The call flow in the network illustrated in Figure 1 with tandem access
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`controller 10 remains the same as that in a conventional network, “except
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`that additional 3rd-party features are applied to the call.” Id. at 4:40–44.
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`More specifically, in the network illustrated in Figure 1, a call from calling
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`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
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`which places a second call, subject to third party control information to
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`subscriber 12. Id. at 4:52–55. The second call is placed “to the subscriber’s
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`‘private’ phone number,” without terminating the first call. Id. at 4:55–57.
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`When subscriber 12 answers the call, tandem access controller 10 connects
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`the first call to the second call so as to connect calling party 20 to subscriber
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`12. Id. at 4:59–62.
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`Figure 1 also shows web server 23 within World Wide Web 22, which
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`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
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`specifies 3rd-party call control features via web server 23 and these features
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`are then relayed via World Wide Web 22 to tandem access controller 10. Id.
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`at 5:13–21.
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`C. Illustrative Claim
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`Petitioner challenges claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, and
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`45 of the ’777 patent. Claims 18, 37, and 45 are independent claims.
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`Claims 21, 23, 25, 26, and 28–31 depend directly from claim 18. Claims 38
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`and 41 depend directly from claim 37. Independent claim 18, reproduced
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`below, is illustrative of the claimed subject matter:
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`18. A method for processing an incoming call from a
`switching facility on a communication network that comprises
`edge switches for routing calls to subscribers within a local
`geographic area and switching facilities for routing calls to edge
`switches, or other switching facilities local or in other
`geographic areas the method comprising the steps of:
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`Patent 7,764,777 B2
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`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with the
`switching facility;
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`identifying one or more control criteria previously
`associated with the specified recipient, wherein the one or more
`control criteria was entered via a web-based interface;
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`initiating a second call at the controlling device in
`accordance with the control criteria associated with the specified
`recipient; and
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` connecting the first and second calls at the controlling
`device after the second call is received by a communication
`device associated with the specified recipient.
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`Id. at 15:12–30 (emphases added).
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`Independent claim 37 is similar to claim 18, except that when the call
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`is forwarded, the claim requires using a “packet-based connection.”
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`Independent claim 45 is similar to claim 18, except that instead of initiating
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`a second call to a specified recipient, the original first call is routed to a
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`“voicemail server.”
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`D. Instituted Grounds of Unpatentability
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`We instituted this trial based on the following grounds of
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`unpatentability (Dec. 19):
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`Reference
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`Basis
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`Challenged Claims
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`O’Neal2
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`O’Neal
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`§ 102(e)3
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`§ 103(a)
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`18, 23, 25, 26, 29–31, 37, 38,
`41, and 45
`21 and 28
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`
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`2 U.S. Patent No. 6,463,145 B1, issued Oct. 8, 2002 (Ex. 1003) (“O’Neal”).
`3 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
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`6
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`IPR2016-01258
`Patent 7,764,777 B2
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`E. Patent Owner’s Request to Repanel the Case
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`
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`Patent Owner “requests assignment of a new panel to preside over this
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`trial and to render the board’s final decision in this case” because the “IPR
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`statutes . . . establish a ‘bifurcated’ IPR process.” PO Resp. 14−15, n.2.
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`Paneling of cases rests with the Chief Administrative Patent Judge on behalf
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`of the Director. See, e.g., AOL Inc. v. Coho Licensing LLC, Case IPR2014-
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`00771, slip. op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative); see also
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`PTAB SOP 1, rev. 14 (May 8, 2015) at 2. Patent Owner’s suggestion was
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`considered by the Chief Administrative Patent Judge, who declined to assign
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`a new panel for this case.
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`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
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`
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`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§§ 102 and 103 in this Decision.
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`IPR2016-01258
`Patent 7,764,777 B2
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`1. “switching facility”
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`Each of the independent claims 18, 37, and 45 recites “switching
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`facility.” Claim 18 is representative. The preamble of claim 18 recites
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`“processing an incoming call from a switching facility on a communication
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`network that comprises edge switches for routing calls to subscribers within
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`a local geographic area and switching facilities for routing calls to edge
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`switches, or other switching facilities local or in other geographic areas.” 4
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`Apart from the claims, the term “switching facility” does not appear in the
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`Specification. Nor does the term appear in the original disclosure of the
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`application that issued as the ’777 patent. Rather, the term was introduced
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`into the claims by amendment during prosecution. Ex. 1007, 75−95.
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`At institution, we adopted Petitioner’s proposed construction, as it is
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`consistent with the intrinsic evidence and the plain and ordinary meaning of
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`“switching facility,” construing the term as “any switch in the
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`communication network.” Dec. 6−8; Pet. 20; Paper 11, 1 (Reply to
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`Preliminary Response); Ex. 2005, 82 n.1 (Applicants defined a “switching
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`facility” as “[a]ny point in the switching fabric of converging networks”);
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`TELECOMMUNICATIONS: GLOSSARY OF TELECOMMUNICATION TERMS, THE
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`FEDERAL STANDARD 1037C, S-35 (1996) (Ex. 1008, 391) (defining
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`“switching center” and “switching facility” as synonyms that mean “a
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`facility in which switches are used to interconnect communications circuits
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`on a circuit-, message-, or packet-switching basis”); NEWTON’S TELECOM
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`
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`4 In this proceeding, the parties agree that the preamble should be given
`patentable weight. Pet. 24, 35–37; Prelim. Resp. 34; PO Resp. 38. For
`purposes of this Decision, we proceed on the assumption that the preamble
`should be given patentable weight.
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`DICTIONARY, (15th ed. 1999) (Ex. 1009) (defining “switching centers” to
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`refer to all five classes of switches in the PSTN)). We rejected Patent
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`Owner’s proposed construction because it would improperly import
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`limitations into the claim. Dec. 6−8.
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`In its Response, Patent Owner maintains that “switching facility”
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`cannot include an edge switch or edge device. PO Resp. 1−10, 17−45.
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`Patent Owner argues that the claim expressly distinguishes that a “switching
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`facility” is not an “edge switch,” and that construing “switching facility” to
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`include “edge switch” would render the claim terms superfluous. Id. at
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`37−42. In Patent Owner’s view, Applicants of the ’777 patent
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`“unequivocally disclaimed controllers that applied call control features
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`through an edge switch, or controllers that were themselves an edge device,
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`from the scope of their inventions.” Id. at 21. We disagree and address
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`below each of Patent Owner’s arguments in turn.
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`First, based on the evidence before us, we decline to adopt Patent
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`Owner’s proposed claim construction, as it would import limitations—
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`“connecting the Tandem Access Controller (‘TAC’) to a PSTN tandem
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`switch, rather than edge switches and edge devices”—from a preferred
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`embodiment into the claim. Id. at 2, 9−10, 14−20; Ex. 1001, 1:63−65,
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`3:23−25, 3:61−65. Significantly, neither “Tandem Access Controller” nor
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`“tandem switch” appears in most of the challenged claims, including
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`independent claim 18.5 In fact, Patent Owner admits that Applicants used
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`“switching facility” in the claim instead of “tandem switch” to indicate that
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`5 Of the challenged claims, only dependent claims 29 and 30 recite “tandem
`access controller.”
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`Patent 7,764,777 B2
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`“switching facility” has broader scope than “tandem switch.” Prelim. Resp.
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`36.
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`A person of ordinary skill in the art would have understood that
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`“switching facility” and “tandem switch” have different meanings. In the
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`context of telecommunication and network communication, the plain and
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`ordinary meanings of these terms are clear—“tandem switch” refers to class
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`4 switches in the PSTN (Ex. 1002 ¶ 43; Ex. 2022 ¶ 36), whereas “switching
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`facility” refers to all five classes of switches in the PSTN (Ex. 1009) or “a
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`facility in which switches are used to interconnect communications circuits
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`on a circuit-, message-, or packet-switching basis” (Ex. 1008, S35). This is
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`consistent with Applicants’ definition of “switching facility”—“[a]ny point
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`in the switching fabric of converging networks”—submitted with the
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`Amendment that introduced the term. Ex. 2005, 82, n.1. Moreover, “the
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`general assumption is that different terms have different meanings.”
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`Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed.
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`Cir. 2008).
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`Importantly, even if we were to interpret “switching facility” as a
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`“tandem switch,” it would not affect our analysis below because none of the
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`challenged claims require a direct connection or communication between the
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`controlling device and a switching facility. Indeed, independent claims 18,
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`37, and 45 recite “a controlling device in communication with the switching
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`facility.” Ex. 1001, 15:19−20, 16:54−55, 18:25−26 (emphasis added). And
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`even with respect to dependent claim 30, which recites a tandem access
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`controller, the tandem access controller is coupled to at least one of the
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`switching facilities. For the reasons stated below, we decline to construe “in
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`communication with” or “coupled to” restrictively to require the processing
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`Patent 7,764,777 B2
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`system to be in direct communication with or connected directly to a tandem
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`switch in the network, as urged by Patent Owner.
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`As our reviewing court has explained, “each claim does not
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`necessarily cover every feature disclosed in the specification,” and “it is
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`improper to limit the claim to other, unclaimed features.” Ventana Med.
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`Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006).
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`Furthermore, the court “has repeatedly cautioned against limiting the
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`claimed invention to preferred embodiments or specific examples in the
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`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
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`(Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
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`870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into a
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`claim limitations that are not a part of the claim”). “[I]t is the claims, not the
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`written description, which define the scope of the patent right.” Williamson,
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`792 F.3d at 1346–47; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (noting that “[i]t is a bedrock principle of patent
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`law that the claims of a patent define the invention to which the patentee is
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`entitled the right to exclude”).
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`Second, we are not persuaded by Patent Owner’s arguments that the
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`claims expressly distinguish that a “switching facility” is not an “edge
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`switch,” and that construing “switching facility” to include “edge switch”
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`would render the claim terms superfluous. PO Resp. 37−42; Ex. 2022
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`¶¶ 61−65. Patent Owner’s arguments fail to appreciate that claim 18 sets
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`forth two separate functional requirements: (1) “edge switches for routing
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`calls to subscribers within a local geographic area”; and (2) “switching
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`facilities for routing calls to edge switches, or other switching facilities local
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`or in other geographic areas.” Ex. 1001, 15:14−17 (emphases added). The
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`IPR2016-01258
`Patent 7,764,777 B2
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`evidence before us shows that edge switches can perform the function
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`recited in the first claim element, as well as “routing calls to edge switches,
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`or other switching facilities local” geographic areas, as recited in the second
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`claim element. Ex. 1002 ¶¶ 39−45. The two terms, “edge switches” and
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`“switching facilities,” are not mutually exclusive, but rather “switching
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`facilities” encompasses all five classes of switches in the PSTN, including
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`an edge switch. Ex. 1008, 391; Ex. 1009; Ex. 2005, 82, 82 n.1.
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`Notably, an ordinarily skilled artisan would have recognized that an
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`edge switch can route calls to other edge switches directly or indirectly
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`through a tandem switch, and to other switching facilities (e.g., a tandem
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`switch). Ex. 1002 ¶¶ 39−45. Dr. Lavian’s testimony regarding the basic
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`architecture of the PSTN (Ex. 1002 ¶¶ 39−45) provides the following
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`diagram (reproduced below with red and blue highlighting added).
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`As shown in the highlighted Figure from Dr. Lavian’s testimony
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`above, an edge switch (a class 5 switch) can route calls from and to users
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`within local geographic area (highlighted in red). An edge switch also can
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`route calls to a tandem switch and to other edge switches directly or
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`indirectly through a tandem switch (highlighted in blue). Ex. 1002
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`¶¶ 39−45.
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`The aforementioned functional claim elements map to the switches in
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`the PSTN. The first claim element takes into account routing calls from and
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`to users within a local geographic area. For the second claim element, the
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`claim language “switching facilities for routing calls to other edge switches”
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`takes into account routing calls from an edge switch to other edge switches.
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`The claim language “switching facility for routing calls to other switching
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`facility” takes into account routing calls from an edge switch to a tandem
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`switch, as well as from a tandem switch to other switches, including edge
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`switches, in the network. Therefore, construing “switching facility” to
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`include “edge switch” would not render the claim terms superfluous.
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`More significantly, interpreting “switching facility” to exclude an
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`edge switch, as urged by Patent Owner, would read out important claimed
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`functions—namely, routing calls from an edge switch to other edge switches
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`and to tandem switches (highlighted in blue above in Dr. Lavian’s Figure,
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`Ex. 1002 ¶¶ 39−45). The claimed network would be incomplete.
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`Probably recognizing this problem in its proposed construction, Patent
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`Owner attempts to show that a tandem switch is capable of performing those
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`functions, arguing that a tandem switch can “interconnect end office
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`switches to other geographic areas” and that “a tandem switch may be
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`‘local’ (or nearby) to other tandem switches.” PO Resp. 38−42; Ex. 2022
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`¶¶ 61−65. However, those assertions address the connection, a physical line,
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`between the switches. Neither Patent Owner nor Mr. Bates explains
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`sufficiently how the function—i.e., switching facilities for routing calls from
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`an edge switch to other edge switches—can be performed by a tandem
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`switch without an edge switch. PO Resp. 38−42; Ex. 2022 ¶¶ 61−65.
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`Patent Owner also attempts to show that an edge switch is not capable
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`of performing the recited functions in the second claim element, arguing that
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`“an edge switch cannot ‘interconnect end office switches to other geographic
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`areas that are not local to an end office switch.’” PO Resp. 39−42; Ex. 2022
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`¶¶ 63−65 (emphasis added). However, that argument is not commensurate
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`with the scope of the claims. Independent claim 18, for example, does not
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`require every switching facility to perform that function. In fact, that claim
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`uses the term “or” rather than “and”—e.g., “switching facilities for routing
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`calls to edge switches, or other switching facilities local or in other
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`geographic areas.” Ex. 1001, 15:15−17 (emphasis added). Patent Owner
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`does not identify, nor can we discern, a reason to read “or” as “and.” As
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`discussed above, an edge switch is capable of routing calls to other edge
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`switches and other switching facilities within local geographic areas. Ex.
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`1002 ¶¶ 39−45.
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`In light of the foregoing, Patent Owner’s arguments (PO Resp. 37−42)
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`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that the claim language
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`expressly distinguishes that a “switching facility” is not an “edge switch,”
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`and that construing “switching facility” to include “edge switch” would
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`render the claim terms superfluous, are unavailing.
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`Third, we are not persuaded by Patent Owner’s argument and its
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`expert testimony that the Specification sets forth an unmistakable disclaimer
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`that “switching facility” is not an edge switch or edge device, and the
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`claimed controlling device “in communication with” the switching facility
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`must exclude a connection or communication through an edge switch. PO
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`Resp. 1−10, 17−45. There is a presumption that a claim term carries its
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`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002). To overcome this presumption, the
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`patentee must “clearly set forth” and “clearly redefine” a claim term away
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`from its ordinary meaning. Bell Atlantic Network Servs., Inc. v. Covad
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`Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). The disavowal
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`must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber,
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`674 F.3d 1315, 1322 (Fed. Cir. 2012).
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`The claims do not recite “tandem switch,” but rather “switching
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`facility.” Our construction for “switching facility” is consistent with its
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`plain and ordinary meaning, encompassing all five classes of switches in the
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`PSTN, including edge switches. Ex. 1008, 391; Ex. 1009; Ex. 1002 ¶ 60.
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`Turning to the Specification, the term “switching facility” is not found
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`anywhere in the Specification. Accordingly, there is not much, if anything,
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`intrinsically in the Specification that explicitly defines or informs a person of
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`ordinary skill in the art at the time of the invention the meaning of
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`“switching facility.” As discussed above, Patent Owner, in fact, admits that
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`Applicants introduced the term “switching facility” into the claims by
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`Amendment to indicate that “switching facility” has broader scope than
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`“tandem switch.” Prelim. Resp. 36; Ex. 2005, 82, 82 n.1.
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`We note that Patent Owner’s arguments and Mr. Bates’ testimony rely
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`on the discussions in the Specification regarding both edge switches and
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`edge devices (Ex. 1001, 1:32−35, 1:54−62, 2:35−49), to support their
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`IPR2016-01258
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`assertion that Applicants disparage the application of call control features at
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`an edge switch. PO Resp. 21−22; Ex. 2022 ¶¶ 46, 47. In any event, the
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`Specification clearly states that connecting a controller directly at a tandem
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`switch, rather than an edge switch—to eliminate the problems regarding the
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`provision of call features through the local service telephone company
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`(telco) business office—is a preferred embodiment. Ex. 1001, 1:63−65 (“A
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`preferred embodiment of the inventive system described herein connects at
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`the tandem, thereby eliminating these problems.”), 3:23−25 (“In one
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`embodiment, the system includes a processor (referred to herein as a tandem
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`access controller”), 3:61−63 (“FIG. 1 illustrates the tandem access controller
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`(TAC) in one embodiment of the present invention connected to the existing
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`PSTN tandem switch.”). In other embodiments, the Specification explains
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`that the web-enhanced services should be connected locally or “coexist with
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`and overlay the local phone service at the local level.” Id. at 3:35−51. As
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`Mr. Bates confirms, edge switches “serve end users through local loop
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`connections,” and “interconnect subscriber lines within a local area.” Ex.
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`2022 ¶ 38; Ex. 2002, 159; Ex. 2003, 102.
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`The Specification also does not support Patent Owner’s position
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`regarding edge devices. PO Resp. 21−24; Ex. 2022 ¶¶ 46−50. The allegedly
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`disparaging statements are directed to only certain types of edge devices,
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`such as phones, PBXs, and edge devices that reside in the PSTN central
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`offices and “offer an extremely limited number of features.” Ex. 1001,
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`1:32−35, 1:66−2:11; 2:35−49. Notably, nothing in the Specification
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`disparages a unified messaging system connecting to both an IP network and
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`a PSTN that is not residing within a PSTN central office, as taught in
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`O’Neal. Ex. 1003, Fig. 1. Therefore, if there is a disclaimer, such a
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`disclaimer, at most, is limited to those prior art edge devices discussed
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`specifically in the Specification.
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`More importantly, recognizing the advantages of a preferred
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`embodiment over the prior art systems does not amount to an unmistakable
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`disclaimer. As our reviewing court has explained, “patentees [are] not
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`required to include within each of their claims all of [the] advantages or
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`features described as significant or important in the written description.”
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`Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004).
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`“An invention may possess a number of advantages or purposes, and there is
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`no requirement that every claim directed to that invention be limited to
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`encompass all of them.” E−Pass Techs., Inc. v. 3Com Corp., 343 F.3d
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`1364, 1370 (Fed. Cir. 2003).
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`Here, each challenged claim is directed to a method for processing an
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`incoming call. In the described embodiments, the Specification does not
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`describe requiring a controlling device, as claimed, to be connected to, or in
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`communication with, a tandem switch directly. Ex. 1001, 3:35−52.
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`Although the preferred embodiment includes a tandem access controller
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`directly connected to a PSTN tandem switch, Applicants were not required
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`to claim this feature and they did not do so in any of the challenged claims.
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`See Ventana, 473 F.3d at 1181−82. Even in cases where the specification
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`describes only a single embodiment, our reviewing court consistently has not
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`construed the claim as being limited to that embodiment. Thorner v. Sony
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`Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (holding
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`that it is not enough that the only embodiment, or all of the embodiments,
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`contain a particular limitation to limit a claim to that particular limitation);
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
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`1117 (Fed. Cir. 2004).
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`In light of the foregoing, we do not agree with Patent Owner that the
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`Specification sets forth an unmistakable disclaimer.
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`Finally, we also are not persuaded by Patent Owner’s argument that
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`the prosecution history confirms the alleged disclaimer set forth in the
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`Specification. PO Resp. 27−35; Ex. 2022 ¶¶ 55−59. As an initial matter, no
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`unmistakable disclaimer is found in the Specification for the reasons stated
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`above. Therefore, Patent Owner’s assertion that Applicants did not rescind
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`the clear disclaimer is misplaced.
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`Further, in the Institution Decision, we rejected Patent Owner’s
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`argument that the prosecution history makes clear that “switching facility”
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`cannot include an edge switch. Dec. 6−8. We noted that the remarks made
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`during prosecution are equivocal, and do not persuade us of a disavowal or
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`disclaimer of the scope of the term “switching facility” to exclude an edge
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`switch. Id. For example, the portion of the prosecution history that Patent
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`Owner cites includes a footnote for defining a “switching facility” as:
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`Any point in the switching fabric of converging networks, also
`referred to in industry as a signal transfer point (STP), signal
`control 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.
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`Ex. 2005, 82, n.1.
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`The above description does not explain that a switching facility
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`excludes an edge switch. Indeed, “[a]ny point in the switching fabric of
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`converging networks” appears broad. These examples provided by
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`Applicants (id.) include a “wire center,” “PSTN switching center,” or
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`“hybrid switch,” which includes an edge switch. Indeed, “hybrid switches”
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`are both an edge switch and a tandem switch. Ex. 2002, 4. Mr. Bates also
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`admits in his cross-examination testimony that “wire centers” were known to
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`be used in a “central office” and in a “class 5” (edge) switch. Ex. 1041,
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`62:15−63:2. Applicants clearly uses the term “switching facilities” to
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`include edge switches.
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`Patent Owner now argues that we “misread” the Applicants’
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`definition, suggesting that the Applicants’ remarks should be read without
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`that definition. PO Resp. 33−34. Relying on Mr. Bates’ testimony, Patent
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`Owner argues the Applicants’ remarks “make clear that they have always
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`consistently distinguished edge switches and tandem switches throughout
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`the prosecution history.” Id. at 33−34; Ex. 2022 ¶¶ 58−59.
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`However, as discussed above, the Applicants’ definition, which is a
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`part of the intrinsic evidence in this record, is consistent with the term’s
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`plain and ordinary meaning (Ex. 1008, 391; Ex. 1009) and the usage of the
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`term in the claims (Ex. 1001, 12:26−29), as well as the general knowledge of
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`a person with ordinary skill in the art (Ex. 1002 ¶ 60). Mr. Bates’ testimony
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`(Ex. 2022 ¶¶ 58−59), which is extrinsic evidence, merely repeats Patent
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`Owner’s arguments. Moreover, “extrinsic evidence may be used only to
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`assist in the proper understanding of the disputed limitation; it may not be
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`used to vary, contradict, expand, or limit the claim language from how it is
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`defined, even by implication, in the specification or file history.” Bell Atl.
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`Network, 262 F.3d at 1269. Our reviewing court also has explained that
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`“extrinsic evidence consisting of expert reports and testimony is generated at
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`the time of and for the purpose of litigation and thus can suffer from bias
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`that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318.
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`In any event, the portions of the prosecution history relied upon by
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`Patent Owner are ambiguous, and do not amount to an unmistakable
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`disclaimer that limits the scope of “switching facility” to exclude an edge
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`switch. Notably, Patent Owner and Mr. Bates (PO Resp. 33−34; Ex. 2022
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`¶ 58) cite to the following Applicants’ remarks for support:
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`The PSTN is a configuration of switching facilities for routing
`calls from calli