`571.272.7822
`
`
`
`
`
`Paper No. 56
` Entered: December 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`CISCO SYSTEMS, INC.,
`Petitioner,
`v.
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Cases IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`_____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`In IPR2016-01254, Cisco Systems, Inc. (“Petitioner”) filed a Petition
`(IPR2016-01254, Paper 2, “’1254 Pet.”) requesting that we institute inter
`partes review of claims 38 and 65 of U.S. Patent No. 8,457,113 B2
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`(Ex. 1001, “the ’113 Patent”).1 In IPR2016-01257, Petitioner filed a second
`Petition (IPR2016-01257, Paper 2 (“’1257 Pet.”)) requesting that we
`institute inter partes review of claims 143–147, 149, 150, 163, and 176–1782
`of the ’113 Patent. In support of its Petitions, Petitioner proffers a
`Declaration of Mr. Dean Willis, who has been retained as an expert witness
`for the instant proceeding. Ex. 1002 ¶ 3; Ex. 1102 ¶ 3. In each proceeding,
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response (IPR2016-
`01254, Paper 8 (“’1254 Prelim. Resp.”); IPR2016-01257, Paper 8 (“’1257
`Prelim. Resp.”)) and a Declaration of Mr. Regis J. Bates, who has been
`retained as an expert witness for the instant proceeding. IPR2016-01254,
`Ex. 2001 ¶¶ 1, 2 (“’1254 Ex. 2001”); IPR2016-01257, Ex. 2001 ¶¶ 1, 2
`(“’1257 Ex. 2001”). Upon consideration of the parties’ contentions and
`supporting evidence, we instituted an inter partes review pursuant to 35
`U.S.C. § 314, as to the challenged claims of the ’113 Patent. IPR2016-
`01254, Paper 15 (“’1254 Dec. on Inst.”); IPR2016-01257, Paper 15 (“’1257
`Dec. on Inst.”).
`
`
`1 The ’113 Patent was submitted as Exhibit 1101 in IPR2016-01257. We
`use either exhibit number, i.e., 1001 or 1101, to refer to the ’113 Patent
`throughout. Petitioner uses different ranges of exhibit numbers so that each
`exhibit filed in the two proceedings has a unique exhibit number. More
`specifically, in IPR2016-01254, Petitioner’s exhibits are numbered 1001
`through 1060 and in IPR2016-01257, Petitioner’s exhibits are numbered
`1101 through 1163. For ease of reference, therefore, we use only the exhibit
`number and not the proceeding number to refer to Petitioner’s exhibits in
`these proceedings.
`2 Claims 38, 65, 143–147, 149, 150, 163, and 176–178 are referred to herein
`as the challenged claims.
`
`
`
`2
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`After institution, in each of IPR2016-01254 and IPR2016-01257,
`Patent Owner filed a Patent Owner Response (IPR2016-01254, Paper 25
`(“’1254 PO Resp.”); IPR2016-01257, Paper 25 (“’1257 PO Resp.”) and an
`additional Declaration of Mr. Regis Bates in support of its Patent Owner
`Response (’1254 Ex. 2022; ’1257 Ex. 2022). In only IPR2016-01257,
`Patent Owner filed a Motion to Amend (Paper 26, “Mot. to Amend”) and
`additional Declarations of Mr. Regis Bates. ’1257 Ex. 2040 (supporting
`Motion to Amend); ’1257 Ex. 2070 (supporting Reply to Opposition to
`Motion to Amend).3 In each of IPR2016-01254 and IPR2016-01257,
`Petitioner filed a Reply. IPR2016-01254, Paper 34 (“’1254 Pet. Reply”);
`IPR2016-01257, Paper 35 (“’1257 Pet. Reply”).4 In IPR2016-01257,
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
`(IPR2016-01257, Paper 30 (“Oppn. MTA”) and a Declaration of Dr.
`Thomas F. La Porta (Ex. 1157) and Patent Owner filed a Reply to
`Petitioner’s Opposition to the Motion to Amend (IPR2016-01257, Paper 39,
`“PO MTA Reply”).5 In each of IPR2016-01254 and IPR2016-01257, each
`
`
`3 Patent Owner also submits declaration and deposition testimony from other
`proceedings, including that of declarants of other Petitioners from other inter
`partes review proceedings. See, e.g., ’1257 Exs. 2026–2030. Patent Owner,
`however, must include a detailed explanation of the significance of the
`evidence including, for example, why it should be considered in the instant
`proceeding. 37 C.F.R. §§ 42.22, 42.23, 42.120. To the extent appropriate,
`we address Patent Owner’s contentions herein.
`4 With authorization, Petitioner filed revised Replies in IPR2016-01254 and
`IPR2016-01257, which we refer to herein unless otherwise noted.
`5 Subsequent to the oral hearing, Petitioner was authorized to file a
`supplemental brief in light of the Federal Circuit’s en banc decision in Aqua
`Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”).
`
`
`
`3
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`of Petitioner and Patent Owner filed a Motion to Exclude. IPR2016-01254,
`Paper 41 (“’1254 PO Mot. to Exclude”), Paper 43 (“’1254 Pet. Mot. to
`Exclude”); IPR2016-01257, Paper 44 (“’1257 PO Mot. to Exclude”), Paper
`46 (“’1257 Pet. Mot. to Exclude”). A transcript of the hearing held on
`September 19, 2017 has been entered into the record of each proceeding.
`See, e.g., IPR2016-01254, Paper 55 (“Tr.”).6
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`Because the subject matter of the claims and the challenges significantly
`overlap, we enter this one Final Written Decision in both proceedings. For
`the reasons that follow, we determine that Petitioner has demonstrated by a
`preponderance of evidence that the challenged claims of the ’113 Patent are
`unpatentable. Additionally, in IPR2016-01257, we deny Patent Owner’s
`Motion to Amend.
`
`Related Proceedings
`B.
`The parties state that the ’113 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.
`See, e.g., ’1257 Pet. 2; IPR2016-01257, Paper 4 (’1257 Patent Owner’s
`Mandatory Notices), 2–3; IPR2016-01257, Paper 6 (’1257 Petitioner’s
`Updated Notice), 1. Additional petitions have been filed challenging claims
`of the ’113 Patent (i.e., IPR2016-01260 and IPR2016-01261), and two
`
`
`IPR2016-01257, Paper 57. Petitioner filed the supplemental brief on
`October 31, 2017. IPR2016-01257, Paper 59.
`6 The oral hearings were consolidated in Cases IPR2016-01254 and
`IPR2016-01257. IPR2016-01254, Paper 46.
`
`
`
`4
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`related patents: (1) U.S. Patent No. 7,764,777 B2 (“the ’777 Patent”), which
`issued from the parent of the ’113 Patent Application; and (2) U.S. Patent
`No. 8,155,298 B2 (“the ’298 Patent”), which issued from a continuation of a
`parent of the ’777 Patent Application.
`
`Instituted Grounds of Unpatentability
`C.
`We instituted on the following grounds of unpatentability (’1254 Dec.
`on Inst. 29; ’1257 Dec. on Inst. 28):
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`38, 65, 143–147, 149,
`150, 163, and 176–178
`
`38, 65, 143–147, 149,
`150, 163, and 176–178
`38, 65, 143–147, 149,
`150, 163, and 176–178
`
`38 and 65
`
`
`
`§ 103 U.S. Patent No. 6,353,660 B1
`(“Burger,” Ex. 1103) and the
`knowledge of a person of ordinary
`skill in the art7
`§ 103 Burger and U.S. Patent No. 6,798,767
`B1 (“Alexander,” Ex. 1106)8
`§ 103 U.S. Patent No. 6,683,870 B1
`(“Archer,” Ex. 1104) and the
`knowledge of a person of ordinary
`skill in the art
`§ 103 Archer and Chang
`
`The ’113 Patent
`D.
`The ’113 Patent relates to telephone services. Ex. 1001, 1:23. In the
`background section, the ’113 Patent explains that the Public Switched
`
`
`7 In IPR2016-01257, with respect to claims 143–147, 149, 150, 163, and
`176–178, for grounds involving Burger, we specify that the knowledge of a
`person of ordinary skill in the art includes a reference, filed as Exhibit 1114.
`8 In IPR2016-01254, for claims 38 and 65, we further specify that this
`asserted ground includes Admitted Prior Art (Ex. 1001, 1:42–51).
`
`
`
`5
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`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 1:45−47. 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 1:48−51.
`According to the ’113 Patent, at the time of the invention, there were
`web-based companies managing third-party call control, via the toll-switch
`network, which allow users to enter call control information through a web
`portal. Id. at 1:34−36. 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 2:41−44.
`The ’113 Patent discloses a system for allowing a subscriber to select
`telephone service features. Id. at 1:23–26. Figure 1 of the ’113 Patent is
`reproduced below (with annotations).
`
`
`
`6
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`
`
`Figure 1 illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional Public Switched Telephone Network (PSTN) tandem switch
`16. Id. at 4:43, 44. According to the ’113 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 4:43–54.
`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 third-party features are applied to the call.” Id. at 4:43–47.
`More specifically, in the network illustrated in Figure 1, a call from calling
`
`
`
`7
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`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 4:55–58. The second call is placed “to the subscriber’s
`‘private’ phone number,” without terminating the first call. Id. at 4:58–60.
`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 4:62–65.
`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 third-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 5:17–25.
`
`Illustrative Claims
`E.
`Claims 38, 65, 143, and 163 are the independent claims challenged in
`these proceedings. Claims 144–47, 149, 150, and 176–78 depend directly
`from one of claims 143 or 163. Independent claims 38 and 143 are
`illustrative of the claimed subject matter and are reproduced below:
`38. A method performed by a web enabled processing system
`including one or more web servers coupled to a call processing
`system serving as an intelligent interconnection between at least
`one circuit-switched network and a packet network in a
`telecommunications network, the circuit-switched network
`comprising edge switches for routing calls from and to
`subscribers within a local geographic area and switching
`facilities for routing calls to other edge switches or other
`switching facilities local or in other geographic areas, the method
`for enabling voice communication from a calling party to a called
`party across both the circuit-switched network and a packet
`network, the method comprising the steps of:
`
`
`
`8
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`receiving call data which is associated with a call originated by
`the calling party via the circuit-switched network, at the
`call processing system,
`the calling party using a
`communications device to originate the call for the
`purpose of initiating voice communication, the call
`processing system coupled to at least one switching
`facility of the circuit-switched network, the call processing
`system processing the call across the circuit-switched
`network and the packet network to complete the call to the
`called party; and
`establishing the voice communication between the calling party
`and the called party after the call is completed, across both
`the circuit-switched network and the packet network.
`Ex. 1001, 15:30–56.
`143. A method of providing an intelligent interconnection
`between a first communication network and a second
`communication network, comprising:
`receiving at a controller call data which is associated with a first
`call via a first communication network;
`accessing control criteria by the controller based upon the call
`data;
`initiating a second call via a second communication network by
`the controller using the call data and the control criteria,
`wherein at least one of the first and the second
`communication networks is a voice over IP (VOIP)
`network; and
`enabling communication between the first call and the second
`call by the controller.
`Ex. 1101, 22:50–63.
`
`Patent Owner’s Request to Repanel the Case
`F.
`In only IPR2016-01257, Patent Owner “requests assignment of a new
`panel to preside over this trial and to render the Board’s final decision in this
`case” because the “IPR statutes . . . establish a ‘bifurcated’ IPR process.”
`
`
`
`9
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`PO Resp. 14−15, n.2. Paneling of cases rests with the Chief Judge on behalf
`of the Director. See, e.g., AOL Inc. v. Coho Licensing LLC, Case IPR2014-
`00771, slip. op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative); see also
`PTAB SOP 1, rev. 14 (May 8, 2015) at 2. Patent Owner’s suggestion was
`considered by the Chief Administrative Patent Judge, who declined to assign
`a new panel for this case.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`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).
`Under this standard, 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 disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`B. Decisions on Institution
`In the Decisions on Institution, we made determinations regarding the
`broadest reasonable interpretations of “call data,” “switching facility,” “call
`processing system,” “control criteria,” and “controller.” ’1254 Dec. on Inst.
`7–14; ’1257 Dec. on Inst. 7–12. These determinations are summarized in
`the table below.
`Claim Term
`
`Broadest Reasonable Interpretation Determination in
`Decision on Institution
`“Petitioner contends that ‘the plain and ordinary meaning
`of ‘call data’ at least includes telephone numbers, IPR
`addresses and/or call requests.’” “[W]e determine that
`the broadest reasonable interpretation, in light of the
`’113 Patent Specification, of the term ‘call data’
`
`“call data”
`
`
`
`10
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`encompasses the examples set forth by Petitioner.” See,
`e.g., ’1254 Dec. on Inst. 7 (citing ’1254 Pet. 15).
`“[W]e determine that the broadest reasonable
`interpretation of the term is any switch in the circuit-
`switched network.” ’1254 Dec. on Inst. 10.
`“[W]e determine that the broadest reasonable
`interpretation of the term ‘call processing system’ is any
`call processing system in the communications network.”
`Id. at 14.
`“Petitioner also contends that ‘the plain and ordinary
`meaning of “control criteria” at least includes selection
`of a telephone number or feature.’” “[W]e determine
`that the broadest reasonable interpretation, in light of the
`’113 Patent Specification, of . . . ‘control criteria’
`encompasses the examples set forth by Petitioner.”
`’1257 Dec. on Inst. 7 (citing ’1257 Pet. 15).
`“[W]e determine that the broadest reasonable
`interpretation of the term ‘controller’ is any controller in
`the communications network.” ’1257 Dec. on Inst. 12.
`
`“switching
`facility”
`
`“call
`processing
`system”
`
`“control
`criteria”
`
`“controller”
`
`
`
`The Parties’ Contentions
`C.
`Patent Owner provides contentions regarding the broadest reasonable
`interpretation of “switching facility,” “call processing system,” and
`“controller.” ’1254 PO Resp. 10–34; ’1257 PO Resp. 10–38. We address
`the parties’ disputes regarding these terms below.
`Patent Owner does not dispute our determinations regarding “call
`data” or “control criteria” in the Decisions to Institute. Id. We, therefore,
`make no further determinations regarding these terms for these proceedings.
`Only terms which are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`
`
`11
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`“switching facility”
`D.
`Each of challenged independent claims 38 and 65 recites “switching
`facility.” No other challenged claim recites “switching facility,” and none of
`the challenged claims in these proceedings recites “tandem switch.” Apart
`from the claims, the term “switching facility” does not appear in the
`Specification. The term was introduced into the claims by amendment
`during prosecution of the ’777 Patent Application. Ex. 1008, 67−79.
`At institution, we adopted Petitioner’s proposed construction for
`“switching facility,” as it is consistent with the intrinsic evidence and the
`term’s plain and ordinary meaning, construing “switching facility” as “any
`switch in the circuit-switched network.” ’1254 Dec. on Inst. 10; ’1254 Pet.
`16–17; Ex. 1008, 87, 87 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 1012C, S-35 (1996) (’1254 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”); THE NEWTON’S
`TELECOM DICTIONARY, (15th ed. 1999) (’1254 Ex. 3002) (defining
`“switching centers” to refer to all five classes of switches in the PSTN)).
`We rejected Patent Owner’s proposed construction because it would
`improperly import limitations into the claim. ’1254 Dec. on Inst. 7−10.
`In its Response, Patent Owner maintains that “switching facility” is
`not an edge switch or edge device. ’1254 PO Resp. 1−34. 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
`
`
`
`12
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`switch” would render the claim terms superfluous. Id. at 29−34. In Patent
`Owner’s view, Applicants of the ’113 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 1−34. 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 1–2, 9−10, 14−20; Ex. 1001, 2:1–3, 3:29–
`30, 3:66–4:3. Significantly, neither “Tandem Access Controller” nor
`“tandem switch” appears in any of the challenged claims. 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.” ’1254 Prelim. Resp. 36–37; ’1254 PO Resp. 33–34.
`A person of ordinary skill in the art would have understood that these
`two terms 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 (’1254 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).9 This is consistent with
`
`
`9 A “hybrid” switch has combined class 4 and class 5 switching features.
`Ex. 1037, 113, Fig. 4-5; Ex. 2002, 159 (cited in ’1254 Ex. 2022 ¶ 38). As
`
`
`
`13
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`Applicants’ definition of “switching facility”—“[a]ny point in the switching
`fabric of converging networks”—that was submitted with the Amendment
`that introduced the term. Ex. 2005, 82, 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 the
`language of claims 38 and 65 does not require a direct connection between
`the processing system and the switching facility. Indeed, claim 38 recites
`“the call processing system coupled to at least one switching facility.”
`Ex. 1001, 15:47–49 (emphases added).10
`In the instant proceedings, Patent Owner does not present contentions
`regarding the broadest reasonable interpretation of the term “coupled to.”
`’1254 PO Resp. 1–34; ’1257 PO Resp. 1–38.11 It is settled that “coupled to”
`generally means that direct connection is not required. See, e.g., Bradford
`
`
`noted in our claim construction discussion in our Decision on Institution, a
`reference relied upon by Patent Owner (Prelim. Resp. 5 (Ex. 2003, 474))
`indicates “[i]n a contemporary PSTN, a tandem switch commonly is a
`hybrid Class 4/5, functioning as both a tandem and a CO (Class 5)” (Ex.
`2003, 474–75). This reference is extrinsic evidence offered by Patent
`Owner. Nonetheless, this evidence is not necessary for us to arrive at our
`determinations herein, but adds contextual background that further supports
`our analyses.
`10 Similarly, claim 65 recites “the web-enabled processing system designed
`to be coupled to at least one switching facility.” Id. at 17:51–53.
`11 As set forth in our Order of December 28, 2016, issued with our Decision
`on Institution, Patent Owner has been cautioned “that any arguments for
`patentability not raised in the response will be deemed waived.”
`
`
`
`14
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1270−71 (Fed. Cir. 2010). We
`use that plan and ordinary meaning for our analysis.12
`Additionally, we decline to construe “switching facility” as not an
`edge switch or edge device, as urged by Patent Owner. 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”
`
`
`12 During oral argument in a related proceeding also involving challenges to
`the ’113 Patent, Patent Owner agreed that the controller need not be
`connected directly to the tandem access switch. IPR2016-01261, Paper 68,
`56:18–20.
`
`
`
`15
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`would render the claim terms superfluous. ’1254 PO Resp. 29−34; ’1254
`Ex. 2022 ¶¶ 61−65. Patent Owner’s arguments fail to appreciate that each of
`claims 38 and 65 sets forth two separate functional requirements: (1) “edge
`switches for routing calls from and to subscribers within a local geographic
`area”; and (2) “switching facilities for routing calls to other edge switches or
`other switching facilities local or in other geographic areas.” Ex. 1001,
`15:35–38, 17:37–40 (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 other edge switches or other switching facilities
`local or in other geographic areas,” as recited in the second claim element.
`Ex. 1002 ¶ 77. 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. ’1254 Ex.
`3001, 391; ’1254 Ex. 3002; ’1254 Ex. 2005, 82, 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 ¶¶ 38–39, 77, 119, 121; Ex. 1012, Figs. 4-
`3, 4-4. Mr. Willis’ testimony regarding background information on the
`PSTN (id.) cites to the Bell reference, which includes Figure 4-4 reproduced
`below (with highlighting added).
`
`
`
`16
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`
`
`
`Annotated Figure 4-4 Illustrating the PSTN Switch
`Hierarchy
`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 or indirectly through a
`tandem switch (highlighted in blue). Ex. 1002 ¶¶ 38−39, 77, 119, 121;
`Ex. 1012, 110−117, 131–136, 150–152, 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
`
`
`
`17
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`claim language “switching facilities for routing calls to other 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.
`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.’” ’1254 PO Resp. 31; ’1254
`Ex. 2022 ¶¶ 61−65 (emphasis added). However, that argument is not
`commensurate with the scope of the claims. For instance, claims 38 and 65
`do not require every switching facility to perform that function. In fact, each
`of claims 38 and 65 uses the term “or” rather than “and”—“switching
`facilities for routing calls to other edge switches or other switching facilities
`local or in other geographic areas.” Ex. 1001, 15:35–38, 17:37–40
`(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 ¶¶ 38−39, 77, 119, 121; Ex. 1012,
`106−113, Figs. 4-3, 4-4.
`In light of the foregoing, Patent Owner’s arguments (’1254 PO Resp.
`29−34) and Mr. Bates’ testimony (’1254 Ex. 2022 ¶¶ 61−65) that each of
`claims 38 and 65 expressly distinguishes that a “switching facility” is not an
`
`
`
`18
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`“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 or its
`expert’s testimony that the Specification sets forth an unmistakable
`disclaimer that “switching facility” is not an edge switch or edge device.
`’1254 PO Resp. 1−2, 8−19, 28−34. 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).
`Claims 38 and 65 do not recite “tandem switch,” but rather “switching
`facility.”13 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. ’1254 Ex. 3001, 391; ’1254 Ex. 3002; Ex.
`1002 ¶¶ 53–55.14
`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
`
`
`13 Claims 143–147, 149, 150, 163, and 176–178 do not recite either “tandem
`switch” or “switching facility.”
`14 None of the challenged claims recites “tandem access controller.”
`
`
`
`19
`
`
`
`IPR2016-01254 and IPR2016-01257
`Patent 8,457,113 B2
`
`Applicants introduced the term “switching facility” into the claims by
`Amendment to indicate that “switching facility” has broader scope than
`“tandem switch.” ’1254 Prelim. Resp. 36–37; ’1254 PO Resp. 33–34; ’1254
`Ex. 2005, 82, 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, 1:37–40, 1:59−67, 2:40−54), to support their
`assertion that Applicants disparage the application of call control features at
`an edge switch. ’1254 PO Resp. 13−15; ’1254 Ex. 2022 ¶¶ 46–48. In any
`event, the Specification clearly states that connecting a controller at a
`tandem switch, rather than an edge switch—to eliminate the problems
`regarding the provision of call features through the local serv