Paper 71
`Trials@uspto.gov
`571-272-7822 Entered: December 28, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01262
`Patent 7,764,777 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: December 28, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01262
`Patent 7,764,777 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IPR2016-01262
`Patent 7,764,777 B2
`
`I. INTRODUCTION
`
`Bright House Networks, LLC, WideOpen West Finance, LLC,
`
`Knology of Florida, Inc., and Birch Communications, Inc. (collectively
`
`“Petitioner”)1 filed a Petition for inter partes review of claims 18, 21, 23, 25,
`
`26, 28–31, 37, 38, 41, 45, and 46 of U.S. Patent No. 7,764,777 B2
`
`(Ex. 1001, “the ’777 patent”). Paper 1 (“Pet.”). Focal IP, LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
`
`Petitioner filed a Reply. Paper 17 (“Reply”). Upon consideration of the
`
`parties’ contentions and supporting evidence, we instituted an inter partes
`
`review pursuant to 35 U.S.C. § 314, as to claims 18, 21, 23, 25, 26, 28–31,
`
`37, 38, 41, 45, and 46 of the ’777 patent. Paper 19 (“Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response (Paper 30, “PO Resp.”) and a Motion to Amend (Paper 31,
`
`“Mot.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 34,
`
`“Pet. Reply”) and an Opposition to Patent Owner’s Motion to Amend (Paper
`
`35, “Opp.”). Patent Owner filed a Reply to the Motion to Amend. Paper 43,
`
`“Reply.” Both parties filed Motions to Exclude (Paper 47 and 50) and
`
`corresponding responsive papers to the respective Motions to Exclude
`
`(Papers 51, 52, 55, and 56).
`
`On September 19, 2017, we held an oral hearing. Paper 68 (“Tr.”).2
`
`Subsequent to oral hearing, Petitioner was authorized to file a supplemental
`
`brief in opposition to Patent Owner’s Motion to Amend in light of the
`
`
`
`1 Petitioner identifies several real parties-in-interest, as well as other
`“potential real parties-in-interest” to Petitioner. Pet. 2–4.
`2 The oral arguments in the following cases were consolidated: Cases
`IPR2016-01259, IPR2016-01261, IPR2016-01262, and IPR2016-01263.
`Paper 68.
`
`2
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`
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`IPR2016-01262
`Patent 7,764,777 B2
`
`Federal Circuit’s en banc decision in Aqua Prods., Inc. v. Matal, 872 F.3d
`
`1290 (Fed. Cir. 2017) (“Aqua Products”). Paper 65. On October 31, 2017,
`
`Petitioner filed a supplemental brief in opposition to Patent Owner’s Motion
`
`to Amend. Paper 67 (“Supp. Br.”).
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`For the reasons that follow, we determine that Petitioner has demonstrated
`
`by a preponderance of the evidence that claims 18, 21, 23, 25, 26, 28–31, 37,
`
`38, 41, 45, and 46 of the ’777 patent are unpatentable. Patent Owner’s
`
`Motion to Amend is denied.
`
`A. Related Matters
`
`The parties state that the ’777 patent is the subject of pending lawsuits
`
`in the Middle District of Florida, and these lawsuits include assertions
`
`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
`
`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
`
`Pet. 4; Paper 7 (Patent Owner’s Mandatory Notices), 2–3. Another
`
`petitioner filed a petition also challenging claims of the ’777 patent (i.e.,
`
`IPR2016-01258). Paper 7, 3.
`
`B. The ’777 Patent
`
`The ʼ777 patent relates to telephone services. Ex. 1001, 1:18. In the
`
`background section, the ’777 patent describes that the Public Switched
`
`Telephone Network (PSTN) consists of a plurality of edge switches
`
`connected to telephones on one side and to a network of tandem switches on
`
`the other. Id. at 1:40−42. The tandem switch network allows connectivity
`
`between all of the edge switches, and a signaling system is used by the
`
`PSTN to allow calling and to transmit both calling and called party identity.
`
`Id. at 1:42−46; Ex. 2022 ¶ 36. Dr. La Porta testifies that the “PSTN had
`
`3
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`IPR2016-01262
`Patent 7,764,777 B2
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`been in existence for decades and consisted of a global network of circuit
`
`switches arranged in a geographical hierarchy.” Ex. 1002 ¶¶ 53−56 (citing
`
`the ENGINEERING AND OPERATIONS IN THE BELL SYSTEM (2nd ed. 1984) (“the
`
`Bell System Reference,” Ex. 1037)).
`
`According to the ’777 patent, at the time of the invention, there were
`
`“web-based companies managing 3rd-party call control, via the toll-switch
`
`network, which allow users to enter call control information through a web
`
`portal.” Ex. 1001, 1:29−32. “Edge devices such as phones and PBXs that
`
`include voice mail, inter-active voice response, call forwarding, speed
`
`calling, etc., have been used to provide additional call control.” Id. at
`
`2:36−39.
`
`The ’777 patent discloses a system for allowing a subscriber to select
`
`telephone service features. Id. at 1:18–21. Figure 1 of the ’777 patent is
`
`reproduced below (with annotations).
`
`
`
`4
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`Patent 7,764,777 B2
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`
`
`Annotated Figure 1 illustrates tandem access controller 10 connected
`
`to conventional PSTN tandem switch 16. Id. at 4:40, 41. According to the
`
`’777 patent, “[d]etails of the operation of the existing phone network,”
`
`including directing of phone calls by “existing” PSTN tandem switch 16 to
`
`central offices 17, 18 are further described in a publication incorporated by
`
`reference, as well as “numerous books describing the PSTN.” Id. at 4:40–
`
`51.
`
`The call flow in the network illustrated in Figure 1 with tandem access
`
`controller 10 remains the same as that in a conventional network, “except
`
`that additional 3rd-party features are applied to the call.” Id. at 4:40–44.
`
`More specifically, in the network illustrated in Figure 1, a call from calling
`
`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
`
`which places a second call, subject to third party control information to
`
`subscriber 12. Id. at 4:52–55. The second call is placed “to the subscriber’s
`
`5
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`IPR2016-01262
`Patent 7,764,777 B2
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`‘private’ phone number,” without terminating the first call. Id. at 4:55–57.
`
`When subscriber 12 answers the call, tandem access controller 10 connects
`
`the first call to the second call so as to connect calling party 20 to subscriber
`
`12. Id. at 4:59–62.
`
`Figure 1 also shows web server 23 within World Wide Web 22, which
`
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`
`specifies 3rd-party call control features via web server 23 and these features
`
`are then relayed via World Wide Web 22 to tandem access controller 10. Id.
`
`at 5:13–21.
`
`C. Illustrative Claim
`
`Petitioner challenges claims 18, 21, 23, 25, 26, 28–31, 37, 38, 41, 45,
`
`and 46 of the ’777 patent. Claims 18, 37, 45, and 46 are independent claims.
`
`Claims 21, 23, 25, 26, and 28–31 depend directly from claim 18. Claims 38
`
`and 41 depend directly from claim 37. Independent claims 18 and 46,
`
`reproduced below, are illustrative of the claimed subject matter:
`
`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:
`
`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with the
`switching facility;
`
`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;
`
`initiating a second call at the controlling device in
`accordance with the control criteria associated with the specified
`recipient; and
`
`6
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`IPR2016-01262
`Patent 7,764,777 B2
`
` 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.
`
`Id. at 15:12–30.
`
`46. A method for processing an incoming call from a
`switching facility on a communication network that comprises
`edge switches for routing calls within a local geographic area and
`switching facilities for routing calls to other geographic areas,
`the method comprising the steps of:
`
`receiving a first call, which is intended for a specified
`recipient, at a controlling device in communication with one of
`the switching facilities;
`
`identifying a control criteria previously associated with the
`specified recipient, wherein the control criteria is previously
`entered via a web-based interface and instructs the controlling
`device to block calls for the specified recipient; and
`
` blocking the first call received at the controlling device in
`accordance with the control criteria.
`
`Id. at 18:34–48.
`
`Independent claim 37 is similar to claim 18, except that when the call
`
`is forwarded, the claim requires using a “packet-based connection.”
`
`Independent claim 45 is similar to claim 18, except that instead of initiating
`
`a second call to a specified recipient, the original first call is routed to a
`
`"voicemail server."
`
`7
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`IPR2016-01262
`Patent 7,764,777 B2
`
`D. Instituted Grounds of Unpatentability
`
`We instituted this trial based on the following ground of
`
`unpatentability (Dec. 19):
`
`Reference(s)
`
`Basis
`
`Challenged Claim(s)
`
`Archer,3 Chang,4 and the
`Admitted Prior Art5
`
`§ 103(a)6
`
`18, 21, 23, 25, 26, 28–31, 37,
`38, 41, 45, and 46
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`
`Consistent with the broadest reasonable construction, claim terms are
`
`presumed to have their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art in the context of the entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`1. “switching facility”
`
`Each of the independent claims 18, 37, 45, and 46 recites “switching
`
`facility.” Claim 18 is representative. The preamble of claim 18 recites
`
`
`
`3 U.S. Patent No. 6,683,870 B1, issued Jan. 27, 2004 (Ex. 1003) (“Archer”).
`4 U.S. Patent No. 5,958,016, issued Sept. 28, 1999 (Ex. 1004) (“Chang”).
`5 Admitted Prior Art (see, e.g., Ex. 1001, 1:40–46).
`
`6 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,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
`
`8
`
`
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`IPR2016-01262
`Patent 7,764,777 B2
`
`“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.” 7
`
`Apart from the claims, the term “switching facility” does not appear in the
`
`Specification. Nor does the term appear in the original disclosure of the
`
`application that issued as the ’777 patent. Rather, the term was introduced
`
`into the claims by amendment during prosecution. Ex. 1010, 68−88.
`
`At institution, we adopted Petitioner’s proposed construction, as it is
`
`consistent with the intrinsic evidence and the plain and ordinary meaning of
`
`“switching facility,” construing the term as “any switch in the
`
`communication network.” Dec. 6−9; Pet. 9−10; Paper 17, 1−8 (Reply to
`
`Preliminary Response); Ex. 2005, 82, n.1 (Applicants defined a “switching
`
`facility” as “[a]ny point in the switching fabric of converging networks”);
`
`TELECOMMUNICATIONS: GLOSSARY OF TELECOMMUNICATION TERMS, THE
`
`FEDERAL STANDARD 1037C, S-35 (1996) (Ex. 3001, 391) (defining
`
`“switching center” and “switching facility” as synonyms that mean “a
`
`facility in which switches are used to interconnect communications circuits
`
`on a circuit-, message-, or packet-switching basis”); NEWTON’S TELECOM
`
`DICTIONARY, (15th ed. 1999) (Ex. 3002) (defining “switching centers” to
`
`refer to all five classes of switches in the PSTN)). We rejected Patent
`
`
`
`7 In this proceeding, the parties agree that the preamble should be given
`patentable weight. Pet. 18–24; Prelim. Resp. 35; PO Resp. 33. For purposes
`of this Decision, we proceed on the assumption that the preamble should be
`given patentable weight.
`
`9
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`IPR2016-01262
`Patent 7,764,777 B2
`
`Owner’s proposed construction because it would improperly import
`
`limitations into the claim. Dec. 6−9.
`
`In its Response, Patent Owner maintains that “switching facility”
`
`cannot include an edge switch or edge device. PO Resp. 1−37. Patent
`
`Owner argues that the claim expressly distinguishes that a “switching
`
`facility” is not an “edge switch,” and that construing “switching facility” to
`
`include “edge switch” would render the claim terms superfluous. Id. at
`
`32−37. In Patent Owner’s view, Applicants of the ’777 patent
`
`“unequivocally disclaimed controllers that applied call control features
`
`through an edge switch, or controllers that were themselves an edge device,
`
`from the scope of their inventions.” Id. at 15−16. We disagree and address
`
`below each of Patent Owner’s arguments in turn.
`
`First, based on the evidence before us, we decline to adopt Patent
`
`Owner’s proposed claim construction, as it would import limitations—
`
`“connecting the Tandem Access Controller (‘TAC’) to a PSTN tandem
`
`switch, rather than edge switches and edge devices”—from a preferred
`
`embodiment into the claim. Id. at 2, 20, 32−37; Ex. 1001, 1:63−65,
`
`3:23−25, 3:61−65. Significantly, neither “Tandem Access Controller” nor
`
`“tandem switch” appears in most of the challenged claims, including
`
`independent claim 18.8 In fact, Patent Owner admits that Applicants used
`
`“switching facility” in the claim instead of “tandem switch” to indicate that
`
`“switching facility” has broader scope than “tandem switch.” Prelim. Resp.
`
`37.
`
`
`
`8 Of the challenged claims, only dependent claims 29 and 30 recite “tandem
`access controller.”
`
`10
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`IPR2016-01262
`Patent 7,764,777 B2
`
`A person of ordinary skill in the art would have understood that
`
`“switching facility” and “tandem switch” have different meanings. In the
`
`context of telecommunication and network communication, the plain and
`
`ordinary meanings of these terms are clear—“tandem switch” refers to class
`
`4 switches in the PSTN (Ex. 1002 ¶ 53; Ex. 2022 ¶ 36), whereas “switching
`
`facility” refers to all five classes of switches in the PSTN (Ex. 3002) or “a
`
`facility in which switches are used to interconnect communications circuits
`
`on a circuit-, message-, or packet-switching basis” (Ex. 3001, 391). This is
`
`consistent with Applicants’ definition of “switching facility”—“[a]ny point
`
`in the switching fabric of converging networks”—submitted with the
`
`Amendment that introduced the term. Ex. 2005, 82, n.1. Moreover, “the
`
`general assumption is that different terms have different meanings.”
`
`Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed.
`
`Cir. 2008).
`
`Importantly, even if we were to interpret “switching facility” as a
`
`“tandem switch,” it would not affect our analysis below because none of the
`
`challenged claims require a direct connection or communication between the
`
`controlling device and a switching facility. Indeed, independent claims 18,
`
`37, and 45 recite “a controlling device in communication with the switching
`
`facility.” Ex. 1001, 15:19−20, 16:54−55, 18:25−26 (emphasis added). And
`
`even with respect to dependent claim 30, which recites a tandem access
`
`controller, the tandem access controller is coupled to at least one of the
`
`switching facilities. For the reasons stated below, we decline to construe “in
`
`communication with” or “coupled to” restrictively to require the processing
`
`system to be in direct communication with or connected directly to a tandem
`
`switch in the network, as urged by Patent Owner.
`
`11
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`IPR2016-01262
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`As our reviewing court has explained, “each claim does not
`
`necessarily cover every feature disclosed in the specification,” and “it is
`
`improper to limit the claim to other, unclaimed features.” Ventana Med.
`
`Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006).
`
`Furthermore, the court “has repeatedly cautioned against limiting the
`
`claimed invention to preferred embodiments or specific examples in the
`
`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`
`(Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
`
`870, 875 (Fed. Cir. 2004) (noting that “it is important not to import into a
`
`claim limitations that are not a part of the claim”). “[I]t is the claims, not the
`
`written description, which define the scope of the patent right.” Williamson,
`
`792 F.3d at 1346–47; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (noting that “[i]t is a bedrock principle of patent
`
`law that the claims of a patent define the invention to which the patentee is
`
`entitled the right to exclude”).
`
`Second, we are not persuaded by Patent Owner’s arguments that the
`
`claims expressly distinguish that a “switching facility” is not an “edge
`
`switch,” and that construing “switching facility” to include “edge switch”
`
`would render the claim terms superfluous. PO Resp. 32−37; Ex. 2022
`
`¶¶ 61−65. Patent Owner’s arguments fail to appreciate that claim 18 sets
`
`forth two separate functional requirements: (1) “edge switches for routing
`
`calls to subscribers within a local geographic area”; and (2) “switching
`
`facilities for routing calls to edge switches, or other switching facilities local
`
`or in other geographic areas.” Ex. 1001, 15:14−17 (emphases added). The
`
`evidence before us shows that edge switches can perform the function
`
`recited in the first claim element, as well as “routing calls to edge switches,
`
`12
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`IPR2016-01262
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`or other switching facilities local” geographic areas, as recited in the second
`
`claim element. Ex. 1002 ¶¶ 53−55. The two terms, “edge switches” and
`
`“switching facilities,” are not mutually exclusive, but rather “switching
`
`facilities” encompasses all five classes of switches in the PSTN, including
`
`an edge switch. Ex. 3001, 391; Ex. 3002; Ex. 2005, 82 n.1.
`
`Notably, an ordinarily skilled artisan would have recognized that an
`
`edge switch can route calls to other edge switches directly via a direct trunk
`
`group or indirectly through a tandem switch, and to other switching facilities
`
`(e.g., a tandem switch). Ex. 1002 ¶¶ 53−55; Ex. 1037, Fig. 4-3. Dr. La
`
`Porta’s testimony regarding background information on the PSTN (Ex. 1002
`
`¶¶ 53−55) cites to Figure 4-4 of the Bell System reference (Ex. 1037, 111,
`
`Fig. 4-4), which is reproduced below (with highlighting added).
`
`
`
`13
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`IPR2016-01262
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`As shown in highlighted Figure 4-4 above, an edge switch (a class 5
`
`switch) can route calls from and to users within local geographic area
`
`(highlighted in red). An edge switch also can route calls to a tandem switch
`
`and other edge switches directly using a direct trunk group or indirectly
`
`through a tandem switch (highlighted in blue). Ex. 1002 ¶¶ 53−54;
`
`Ex. 1037, 90−92, 106−113, 119−122, 137−138, Figs. 4-3, 4-4.
`
`The aforementioned functional claim elements map to the switches in
`
`the PSTN. The first claim element takes into account routing calls from and
`
`to users within a local geographic area. For the second claim element, the
`
`claim language “switching facilities for routing calls to edge switches” takes
`
`into account routing calls from an edge switch to other edge switches. The
`
`claim language “switching facility for routing calls to other switching
`
`facilities” takes into account routing calls from an edge switch to a tandem
`
`switch, as well as from a tandem switch to other switches, including edge
`
`switches, in the network. Therefore, construing “switching facility” to
`
`include “edge switch” would not render the claim terms superfluous.
`
`More significantly, interpreting “switching facility” to exclude an
`
`edge switch, as urged by Patent Owner, would read out important claimed
`
`functions—namely, routing calls from an edge switch to other edge switches
`
`and to tandem switches (highlighted in blue above in Figure 4-4). The
`
`claimed network would be incomplete.
`
`Probably recognizing this problem in its proposed construction, Patent
`
`Owner attempts to show that a tandem switch is capable of performing those
`
`functions, arguing that a tandem switch can “interconnect end office
`
`switches to other geographic areas” and that “a tandem switch may be
`
`‘local’ (or nearby) to other tandem switches.” PO Resp. 32−37; Ex. 2022
`
`14
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`¶¶ 61−65. However, those assertions address the connection, a physical line,
`
`between the switches. Neither Patent Owner nor Mr. Bates explains
`
`sufficiently how those functions—e.g., routing calls from an edge switch to
`
`other edge switches—can be performed by a tandem switch without an edge
`
`switch. PO Resp. 32−37; Ex. 2022 ¶¶ 61−65.
`
`Patent Owner also attempts to show that an edge switch is not capable
`
`of performing the recited functions in the second claim element, arguing that
`
`“an edge switch cannot ‘interconnect end office switches to other geographic
`
`areas that are not local to an end office switch.’” PO Resp. 32−37; Ex. 2022
`
`¶¶ 63−65 (emphasis added). However, that argument is not commensurate
`
`with the scope of the claim. Claim 18 does not require every switching
`
`facility to perform that function. In fact, the claim uses the term “or” rather
`
`than “and”—“switching facilities for routing calls to edge switches, or other
`
`switching facilities local or in other geographic areas.” Ex. 1001, 15:15−17
`
`(emphasis added). Patent Owner does not identify, nor can we discern, a
`
`reason to read “or” as “and.” As discussed above, an edge switch is capable
`
`of routing calls to other edge switches and other switching facilities within
`
`local geographic areas. Ex. 1002 ¶¶ 53−54; Ex. 1037, 106−113, Figs. 4-3,
`
`4-4.
`
`In light of the foregoing, Patent Owner’s arguments (PO Resp. 32−37)
`
`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that the claim language
`
`expressly distinguishes that a “switching facility” is not an “edge switch,”
`
`and that construing “switching facility” to include “edge switch” would
`
`render the claim terms superfluous, are unavailing.
`
`Third, we are not persuaded by Patent Owner’s argument and its
`
`expert testimony that the Specification sets forth an unmistakable disclaimer
`
`15
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`that the claimed controller must be directly connected to a tandem switch,
`
`rather than an edge switch or edge device. PO Resp. 1−3, 9−21, 30−37.
`
`There is a presumption that a claim term carries its ordinary and customary
`
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002). To overcome this presumption, the patentee must “clearly set
`
`forth” and “clearly redefine” a claim term away from its ordinary meaning.
`
`Bell Atlantic Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
`
`1258, 1268 (Fed. Cir. 2001). The disavowal must be “unmistakable” and
`
`“unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
`
`2012).
`
`The claims do not recite “tandem switch,” but rather “switching
`
`facility.” Our construction for “switching facility” is consistent with its
`
`plain and ordinary meaning, encompassing all five classes of switches in the
`
`PSTN, including edge switches. Ex. 3001, 391; Ex. 3002; Ex. 1002 ¶ 53.
`
`Turning to the Specification, the term “switching facility” is not found
`
`anywhere in the Specification. Accordingly, there is not much, if anything,
`
`intrinsically in the Specification that explicitly defines or informs a person of
`
`ordinary skill in the art at the time of the invention the meaning of
`
`“switching facility.” As discussed above, Patent Owner, in fact, admits that
`
`Applicants introduced the term “switching facility” into the claims by
`
`Amendment to indicate that “switching facility” has broader scope than
`
`“tandem switch.” Prelim. Resp. 37; Ex. 2005, 82, n.1.
`
`We note that Patent Owner’s arguments and Mr. Bates’ testimony rely
`
`on the discussions in the Specification regarding both edge switches and
`
`edge devices (Ex. 1001, 1:32−35, 1:54−62, 2:35−49), to support their
`
`assertion that Applicants disparage the application of call control features at
`
`16
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`IPR2016-01262
`Patent 7,764,777 B2
`
`an edge switch. PO Resp. 15−16; Ex. 2022 ¶ 47. In any event, the
`
`Specification clearly states that connecting a controller directly at a tandem
`
`switch, rather than an edge switch—to eliminate the problems regarding the
`
`provision of call features through the local service telephone company
`
`(telco) business office—is a preferred embodiment. Ex. 1001, 1:63−65 (“A
`
`preferred embodiment of the inventive system described herein connects at
`
`the tandem, thereby eliminating these problems.”), 3: 23−25 (“In one
`
`embodiment, the system includes a processor (referred to herein as a tandem
`
`access controller)”), 3:61−63 (“FIG. 1 illustrates the tandem access
`
`controller (TAC) in one embodiment of the present invention connected to
`
`the existing PSTN tandem switch.”). In other embodiments, the
`
`Specification explains that the web-enhanced services should be connected
`
`locally or “coexist with and overlay the local phone service at the local
`
`level.” Id. at 3:35−51. As Mr. Bates confirms, edge switches “serve end
`
`users through local loop connections,” and “interconnect subscriber lines
`
`within a local area.” Ex. 2022 ¶ 38; Ex. 2002, 159; Ex. 2003, 102.
`
`The Specification also does not support Patent Owner’s position
`
`regarding edge devices. PO Resp. 15−19; Ex. 2022 ¶¶ 46−50. The allegedly
`
`disparaging statements are directed to only certain types of edge devices,
`
`such as phones, PBXs, and edge devices that provide extremely limited
`
`features. Ex. 1001, 1:32−35, 1:66−2:11; 2:35−49. Notably, nothing in the
`
`Specification disparages a PSTN-to-IP network gateway, as taught in
`
`Archer. Therefore, if there is a disclaimer, such a disclaimer, at most, is
`
`limited to those prior art edge devices (e.g., phones and PBXs) discussed
`
`specifically in the Specification.
`
`17
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`
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`IPR2016-01262
`Patent 7,764,777 B2
`
`More importantly, recognizing the advantages of a preferred
`
`embodiment over the prior art systems does not amount to an unmistakable
`
`disclaimer. As our reviewing court has explained, “patentees [are] not
`
`required to include within each of their claims all of [the] advantages or
`
`features described as significant or important in the written description.”
`
`Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004).
`
`“An invention may possess a number of advantages or purposes, and there is
`
`no requirement that every claim directed to that invention be limited to
`
`encompass all of them.” E−Pass Techs., Inc. v. 3Com Corp., 343 F.3d
`
`1364, 1370 (Fed. Cir. 2003).
`
`Here, each challenged claim is directed to a method for processing an
`
`incoming call. In the described embodiments, the Specification does not
`
`describe requiring a controlling device, as claimed, to be connected to, or in
`
`communication with, a tandem switch directly. Ex. 1001, 3:35−52.
`
`Although the preferred embodiment includes a tandem access controller
`
`directly connected to a PSTN tandem switch, Applicants were not required
`
`to claim this feature and they did not do so in any of the challenged claims.
`
`See Ventana, 473 F.3d at 1181−82. Even in cases where the specification
`
`describes only a single embodiment, our reviewing court consistently has not
`
`construed the claim as being limited to that embodiment. Thorner v. Sony
`
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (holding
`
`that it is not enough that the only embodiment, or all of the embodiments,
`
`contain a particular limitation to limit a claim to that particular limitation);
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
`
`1117 (Fed. Cir. 2004).
`
`18
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`IPR2016-01262
`Patent 7,764,777 B2
`
`In light of the foregoing, we do not agree with Patent Owner that the
`
`Specification sets forth an unmistakable disclaimer.
`
`Finally, we also are not persuaded by Patent Owner’s argument that
`
`the prosecution history confirms the alleged disclaimer set forth in the
`
`Specification. PO Resp. 22−30; Ex. 2022 ¶¶ 55−59. As an initial matter, no
`
`unmistakable disclaimer is found in the Specification for the reason stated
`
`above. Therefore, Patent Owner’s assertion that Applicants did not rescind
`
`the clear disclaimer is misplaced.
`
`Further, in the Institution Decision, we rejected Patent Owner’s
`
`argument that the prosecution history makes clear that “switching facility”
`
`cannot include an edge switch. Dec. 6−9. We noted that the remarks made
`
`during prosecution are equivocal, and do not persuade us of a disavowal or
`
`disclaimer of the scope of the term “switching facility” to exclude an edge
`
`switch. Id. For example, the portion of the prosecution history that Patent
`
`Owner cites includes a footnote for defining a “switching facility” as:
`
`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.
`
`Ex. 2005, 82, n.1.
`
`The above description does not explain that a switching facility
`
`excludes an edge switch. Indeed, “[a]ny point in the switching fabric of
`
`converging networks” appears broad. These examples provided by
`
`Applicants (id.) include a “wire center,” “PSTN switching center,” or
`
`“hybrid switch,” which include an edge switch. Indeed, “hybrid switches”
`
`are both an edge switch and a tandem switch. Ex. 2002, 4; Ex. 1065
`
`19
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`IPR2016-01262
`Patent 7,764,777 B2
`
`¶¶ 76−77. Applicants clearly uses the term “switching facilities” to include
`
`edge switches.
`
`Patent Owner now argues that we “misread” the Applicants’
`
`definition, suggesting that the Applicants’ remarks should be read without
`
`that definition. PO Resp. 28−29. Relying on Mr. Bates’ testimony, Patent
`
`Owner argues the Applicants’ remarks “make clear that they have always
`
`consistently distinguished edge switches and tandem switches throughout
`
`the prosecution history.” Id. at 28−30; Ex. 2022 ¶¶ 58−59.
`
`However, as discussed above, the Applicants’ definition, which is a
`
`part of the intrinsic evidence in this record, is consistent with the term’s
`
`plain and ordinary meaning (Ex. 3001, 391; Ex. 3002) and the usage of the
`
`term in the claims (Ex. 1001, 15:14−17), as well as the general knowledge of
`
`a person with ordinary skill in the art (Ex. 1002 ¶¶ 53−55; Ex. 1037).
`
`Mr. Bates’ testimony (Ex. 2022 ¶¶ 58−59), which is extrinsic evidence,
`
`merely repeats Patent Owner’s arguments. Moreover, “extrinsic evidence
`
`may be used only to assist in the proper understanding of the disputed
`
`limitation; it may not be used to vary, contradict, expand, or limit the claim
`
`language from how it is defined, even by implication, in the specification or
`
`file history.” Bell Atl. Network, 262 F.3d at 1269. Our reviewing court also
`
`has explained that “extrinsic evidence consisting of expert reports and
`
`testimony is generated at the time of and for the purpose of litigation and
`
`thus can suffer from bias that is not present in intrinsic eviden
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