Trials@uspto.gov
`571.272.7822
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`Paper No. 15
` Entered: December 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01254
`Patent 8,457,113 B2
`_____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Cisco Systems, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting that we institute inter partes review of claims 38 and 65
`(“challenged claims”) of U.S. Patent No. 8,457,113 B2 (Ex. 1001, “the
`’113 Patent”). Petitioner also proffers a Declaration of Mr. Dean Willis,
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`who has been retained as an expert witness for the instant proceeding.
`Ex. 1002 ¶ 3.
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”). Patent Owner also proffers a Declaration of
`Mr. Regis J. Bates, who has been retained as an expert witness for the instant
`proceeding. Ex. 2001 ¶¶ 1, 2.
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons given below, on behalf of the
`Director (see 37 C.F.R. § 42.4(a)), we institute an inter partes review of the
`challenged claims of the ’113 Patent.
`
`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.
`Pet. 2; Paper 4 (Patent Owner’s Mandatory Notices), 2–3; Paper 6
`(Petitioner’s Updated Notice), 1. Petitioner also has filed IPR2016-01257,
`which requests inter partes review of different claims of the ’113 Patent.
`Patent Owner’s Mandatory Notices, 3; Petitioner’s Updated Notice, 1.
`Additional petitions have been filed challenging claims of the ’113 Patent
`(i.e., IPR2016-01260 and IPR2016-01261). Id. Further petitions have been
`filed challenging claims of related patents. Petitioner’s Updated Notice, 1,
`2.
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`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`Challenged Claims
`
`Claims 38 and 65
`
`Basis
`
`§ 103
`
`Claims 38 and 65
`
`§ 103
`
`Claims 38 and 65
`
`§ 103
`
`Claims 38 and 65
`
`§ 103
`
`
`
`Reference(s)
`
`U.S. Patent No. 6,353,660 B1
`(“Burger,” Ex. 1003) and the
`knowledge of a person of ordinary
`skill in the art
`
`Burger and U.S. Patent No.
`6,798,767 B1 (“Alexander,”
`Ex. 1006)
`
`U.S. Patent No. 6,683,870 B1
`(“Archer,” Ex. 1004) and the
`knowledge of a person of ordinary
`skill in the art
`
`Archer and U.S. Patent No.
`5,958,016 (“Chang,” Ex. 1005)
`
`The ’113 Patent
`D.
`The ʼ113 Patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1001, 1:22–25. Figure 1 of the ’113
`Patent is reproduced below.
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`Figure 1illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`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 3rd-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
`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 3rd 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 14 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 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 5:16–24.
`
`Illustrative Claim
`E.
`Challenged claims 38 and 65 are independent claims. Independent
`claim 38 is illustrative of the claimed subject matter and is 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:
`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
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`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.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted 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);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144‒45 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`proceeding). Consistent with the rule of broadest reasonable interpretation,
`claim terms are generally given their ordinary and customary meaning, as
`would be 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).
`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).
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`The Parties’ Contentions
`B.
`Petitioner provides contentions regarding the broadest reasonable
`interpretation of “call data” and “switching facility.” Pet. 15–17. Patent
`Owner provides contentions regarding the broadest reasonable interpretation
`of “switching facility” and “call processing system.” Prelim. Resp. 33–39.
`We address the parties’ contentions below.
`
`“call data”
`C.
`Each of challenged independent claims 38 and 65 recites “call data.”
`Petitioner contends that “the plain and ordinary meaning of ‘call data’ at
`least includes telephone numbers, IPR addresses and/or call requests.” Pet.
`15. Patent Owner does not dispute Petitioner’s contentions. Prelim. Resp.
`33–39.
`Accordingly, on this record, we determine that the broadest
`reasonable interpretation, in light of the ’113 Patent Specification, of the
`term “call data” encompasses the examples set forth by Petitioner (Pet. 15).
`We determine that no other express construction is necessary to resolve a
`controversy in this proceeding.
`
`“switching facility”
`D.
`Petitioner contends the broadest reasonable interpretation of
`“switching facility” “include[s] any point in the switching fabric of
`converging networks.” Pet. 17. Patent Owner disagrees with Petitioner’s
`contention that a “switching facility” includes any switch in any
`communications network, including an edge switch. Prelim. Resp. 33.
`Patent Owner also contends “a ‘switching facility’ (1) is a switch for routing
`calls to edge switches or other ‘switching facilities’ local or in other
`geographic areas; and (2) is not an edge switch or edge device.” Id.
`
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`We begin with the plain language of the claims. Claim 38 is
`representative. The preamble of that claim recites “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.” On this record, the parties do not present, nor can we discern, a
`reason why the preamble should not be given patentable weight. In fact, the
`parties agree that the preamble is limiting. See, e.g., Pet. 19–27; Prelim.
`Resp. 34. For purposes of this decision, we proceed on the assumption that
`it is.
`
`Patent Owner contends that “[t]he preamble states” that “‘switching
`facilities’ are ‘for routing calls to other edge switches or other switching
`facilities local or in other geographic areas.” Prelim. Resp. 34 (emphasis in
`original). Patent Owner emphasizes only a subset of the recitation.
`Contrary to Patent Owner’s contention, the preamble recites that “switching
`facilities” are for routing calls “to other edge switches” or “other switching
`facilities local or in other geographic areas” (emphasis added).
`We next turn to the Specification of the ’113 Patent to discern the
`meaning of “switching facility.” As pointed out by both parties, the term
`“switching facility” is not found anywhere in the Specification of the ’113
`Patent. Pet. 16; Prelim. Resp. 34. The term was added during prosecution.
`Id.1 Accordingly, there is not much, if anything intrinsically in the
`Specification of the ’113 Patent that explicitly defines or informs a person of
`
`
`1 The ’113 Patent issued from a continuation of application no. 11/948,965
`that is now U.S. Patent No. 7,764,777. Ex. 1001 [60].
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`ordinary skill in the art at the time of the invention the meaning of
`“switching facility.”
`We also consider the prosecution history. Patent Owner contends that
`the prosecution history makes clear that switching facility cannot include an
`edge switch. Prelim. Resp. 34–39. The remarks made during prosecution,
`however, 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. For
`example, the portion of the prosecution history that Patent Owner cites
`includes a footnote for the terminology of 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.
`The above description does not explain that a switching facility does
`not include an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad.
`Patent Owner contends “Petitioner relies heavily on a footnote from
`the file history that is taken out of context.” Prelim. Resp. 33. Contrary to
`Patent Owner’s contention, the footnote is not taken out of context because it
`immediately follows the term “tandem switching facilities,” and the disputed
`term is “switching facilities.” Additionally, following the various
`amendments and arguments relied upon by Patent Owner is the Reasons for
`Allowance, which does not support Patent Owner’s disclaimer. In
`particular, the Examiner indicated “[t]he prior art fails to disclose edge
`switches for local and other switching facilities; a controlling apparatus that
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`will receive a 1st call and then initiating a 2nd call in accordance with
`control criteria entered by a specified user thru the Internet, and then the
`controlling device coupling the 1st and 2nd calls together.” Ex. 2005, 43
`(emphasis added). On this record, for the purposes of this Decision, we,
`therefore, determine the statements in the prosecution history do not give
`rise to a disclaimer.
`We have considered all of the arguments and evidence regarding the
`term “switching facility.”2 At this juncture of the proceeding, we determine
`that the broadest reasonable interpretation of the term is any switch in the
`circuit-switched network. We determine that no other express construction
`is needed to resolve a controversy in this proceeding.
`
`“call processing system”
`E.
`Each of the challenged claims recites “call processing system.”
`Petitioner does not provide contentions regarding the broadest reasonable
`interpretation of “call processing system.” Pet. 14–17. Patent Owner’s only
`contention references its disclaimer “[a]s discussed above in Section V,
`Applicants disclaimed that its ‘call processing system’ applies call control
`features through an edge switch, or that is itself an edge device.” Prelim.
`
`2 We also considered the evidence submitted in IPR2016-01260, including
`the definitions set forth in the Federal Standard 1037C (Ex. 3001) and the
`Newton’s Telecom Dictionary (Ex. 3002). Ex. 3001, S35 (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”); Ex. 3002 (defining
`“switching centers” to refer to all five classes of switches in the PSTN).
`Patent Owner does not dispute reliance on dictionary definitions, and relies
`on dictionaries as well (see, e,g., Prelim. Resp. 4–5), including a later
`version of one of the dictionaries above, i.e., Newton’s Telecom Dictionary
`(Ex. 2006).
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`Resp. 39. Section V of Patent Owner’s Preliminary Response includes
`contentions regarding a “GENERAL DISCLAIMER.” Id. at 20–32.
`We start with the plain language of the claims. Claim 38 is
`representative and recites “a call processing system serving as an intelligent
`interconnection between at least one circuit-switched network and a packet
`network” and “the call processing system coupled to at least one switching
`facility.” For the reasons discussed above, we determine that the broadest
`reasonable interpretation of the term is any switch in the circuit-switched
`network. We, therefore, are not persuaded that the plain language of the
`claims sets forth Patent Owner’s disclaimer.
`We now turn to Patent Owner’s contentions regarding disavowing
`statements in the ’113 Patent Specification. Prelim. Resp. 20–26. Patent
`Owner provides “a general description of the public telephone network” that
`includes a hierarchy of “edge” (class 5) and “tandem” (class 4) equipment.
`Id. at 2–9. Patent Owner’s contentions regarding disparaging statements in
`the Specification are based on this hierarchy, “Applicants unequivocally
`disclaimed controllers that applied call control features through an edge
`switch or controllers that were themselves an edge device” (id. at 21
`(emphasis added)) and “[i]n contrast . . . the ’113 Patent emphasizes the
`importance of connecting the TAC (a Tandem Access Controller) to a
`tandem switch” (id. at 23 (emphasis in the original)). For the purposes of
`this Decision, we assume Patent Owner’s contentions pertaining to
`“controller” are intended also for “call processing system,” as “controller is
`not recited in either claim 38 or claim 65.
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`In reliance on the testimony of Mr. Bates,3 Patent Owner asserts that a
`hierarchy of the PSTN included a “class 4 level,” which “refers to both a
`‘toll center’ and a ‘tandem switch.’” Prelim. Resp. 3–4 (citing Ex.
`2001 ¶ 37). Patent Owner further contends that “tandem switches serve to
`interconnect Class 5 offices that contain edge switches.” Id. at 5 (citing Ex.
`2001 ¶ 41)
`According to Petitioner the hierarchy of the PSTN was more
`integrated. Pet. 8 (citing Ex. 1002 ¶¶ 45–51, 53). Consistent with
`Petitioner’s contentions, a dictionary relied upon by Patent Owner (Prelim.
`Resp. 4 (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. Additionally, Patent Owner supports its
`testimonial evidence with descriptions of the technology “in 1984” (Prelim.
`Resp. 4, 5), which is 16 years before the earliest filing date of the
`applications leading to the ’113 Patent (Ex. 1001 [60]). Consistent with
`Petitioner’s contentions (Pet. 8–11), other evidence in the record supports
`that the hierarchy was more integrated due to technological advancements.
`The actual structure of the network is far more integrated and
`complex than the simplified local and toll network structures just
`described. For example, advances in switching technology allow
`the introduction of local switching systems that can record billing
`
`
`3 Patent Owner submits Mr. Bates’ Declaration (Ex. 2001) in support of its
`claim construction and disclaimer positions. See 37 C.F.R. § 42.108(c)
`(“The Board’s decision will take into account a patent owner preliminary
`response where such a response is filed, including any testimonial evidence,
`but a genuine issue of material fact created by such testimonial evidence will
`be viewed in the light most favorable to the petitioner solely for the purposes
`of deciding whether to institute an inter partes review.”).
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`information and perform alternate routing, thus combining local,
`local tandem, and toll functions.
`Ex. 1012, 113 (emphasis added).
`Regarding disavowing statements in the ’113 Patent Specification,
`Patent Owner also contends that “[t]he specification is replete with
`commentary emphasizing the importance of connecting the controller to a
`tandem switch.” Prelim. Resp. 24–25 (citing Ex. 1001, 2:1–3, 3:37–40,
`3:19–27, 3:65–4:3). Patent Owner, however, points to only one sentence
`that mentions a direct connection. Id.
`Patent Owner further contends “[t]he controller described in the ’113
`Patent is always shown connected to a tandem switch, not an edge switch.”
`Prelim. Resp. 24–25 (citing Ex. 1001, Figs. 1, 2, 7, 8; Ex. 2001 ¶ 56).
`Contrary to Patent Owner’s contention that the controller is always
`connected to a tandem switch, each of Figures 1 and 2, relied upon by Patent
`Owner, shows that tandem access controller 10 is connected to web 22,
`which connects to personal computer 26 and phone 21, respectively, of a
`subscriber. Ex. 1001, Figs. 1, 2. Figures 7 and 8 illustrate systems that
`allow “cell phones 28” and “fax and modem calls” to “obtain the same
`provisioning options” as shown in Figures 1 and 2. Id. at 6:21–29.
`Furthermore, in addition to the provisioning options presented to the user by
`web 22 (id. at 5:38–42), the ’113 Patent Specification describes a subscriber
`making “an outbound call via the web” (id. at 6:21–23), and provides a flow
`chart showing the call flow “via web.” Id. at Fig. 6. Figure 2 illustrates “a
`system similar to Fig. 1” but “also showing how the subscriber may . . .
`make calls using Voice Over IP.” Id. at 4:4–8. Accordingly, on this record,
`and for the purposes of this Decision, we determine the statements in the
`’113 Patent Specification do not give rise to a disclaimer.
`
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`Patent Owner also provides contentions regarding disavowing
`statements in the prosecution history. Prelim. Resp. 27–33. However, the
`portion of the prosecution history cited by Patent Owner for support (id. at
`33 (citing Ex. 2005, 66)) is ambiguous, at best. The Amendment adds
`“coupled to a switching facility for routing calls to edge switches or other
`switching facilities in local or other geographic areas,” and is silent as to
`whether “coupled to” requires a direct connection between elements. Ex.
`2005, 66. We discuss these contentions further above with respect to the
`broadest reasonable interpretation of the term “switching facility,” and we
`are not persuaded by these contentions.
`Accordingly, on this record and for the purposes of determining
`whether to institute an inter partes review, we decline to adopt Patent
`Owner’s disclaimer or a construction of “call processing system” requiring
`more limited connectivity than that recited in the claims. After considering
`all the arguments and evidence, we determine that the broadest reasonable
`interpretation of the term “call processing system” is any call processing
`system in the communications network.
`
`III. ANALYSIS
`Principles of Law
`A.
`The question of obviousness, under 35 U.S.C. § 103(a), is resolved on
`the basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in the art; and
`(4) objective evidence of nonobviousness, i.e., secondary considerations.
`See Graham v. John Deere Co., 383 U.S. 1, 17‒18 (1966). In that regard, an
`obviousness analysis “can take account of the inferences and creative steps
`
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`that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). The level of ordinary skill in the art
`is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001).
`
`B. Obviousness over Burger in Combination with Knowledge of a
`Person of Ordinary Skill in the Art or Alexander
`Petitioner asserts that the challenged claims are unpatentable, under
`35 U.S.C. § 103, as obvious over Burger in combination with the knowledge
`of a person of ordinary skill in the art or Alexander. Pet. 3, 6–14, 17–47. To
`support its contentions, Petitioner provides detailed explanations as to how
`the prior art meets each claim limitation. Id.
`
`Burger
`1.
`Burger is directed to a network with an enhanced services platform
`(ESP) that implements methods for voice call screening. Ex. 1003, 4:1–3.
`Figure 1 of Burger is reproduced below.
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`Figure 1 is a block diagram of a network including an ESP.
`In ESP 60 is ESP processing unit 62 connected to circuit switched
`interface 64 and packet interface 68. Id. at 4:3–5. Circuit switched interface
`64 connects ESP 60 to circuit switched network 22. Id. at 4:9–12. Packet
`interface 68 connects ESP 60 to packet switched network 24. Id. Packet
`switched network 24 is an internet. Id. at 7:2–3.
`Figure 5 of Burger provides further details regarding ESP 60 and is
`reproduced below.
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`Figure 5 is a block diagram of the ESP showing memory
`storing procedures implementing the method of call screening.
`As shown in Figure 5, ESP 60 includes system bus 252, which
`connects ESP processing unit 262, circuit switched (Time Division Multiple
`Access (TDMA)) interface 64, packet interface 68, disk drive 256, and
`memory 270. Id. at 8:48–54. Memory 270 stores instructions that are
`executed by ESP processing unit 62. Id. at 8:54–56. These instructions
`include web server procedure 276 that causes ESP 60 to act as a web server
`with respect to packet-based network 24 and provides a user interface to
`packet-based network 24. Id. at 8:59–62. The instructions also include
`procedures for placing a call over the packet network (id. at 9:2–4), placing
`calls over the PSTN (id. at 9:5–6), screening calls (id. at 9:11–12), and
`connecting calls to provide a bi-directional path between the caller and the
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`subscriber (id. at 9:19–22), as well as various other procedures (id. at 9:5–
`35).
`
`Alexander
`2.
`Alexander is directed to a system for generating multiple line
`appearances in a communication network. Ex. 1006, 1:7–10. Figure 1 of
`Alexander is reproduced below.
`
`
`
`Figure 1 illustrates an exemplary communication network.
`Figure 1 shows communication network 10, which includes local area
`networks (LANs) 20 that transmit audio and video signals using Internet
`Protocol (IP). Id. at 2:60–65. LANs 20 are connected to Internet 40, which
`is an IP network. Id. at 3:8–11. LANs 20 also are coupled to central offices
`62 through gateways 64. Id. at 3:34–36. As shown in Figure 1, central
`offices 64 are within PSTN 60. Id. at Fig. 1.
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`Voice over IP (VoIP) is technology that allows an IP network to
`transmit telecommunications. Id. at 3:64–4:1. IP telephony devices 22–24
`encapsulate a user’s voice into IP packets so that the voice can be
`transmitted over LANs 20 and Internet 40. Id. at 4:1–4. Call manager 26a
`controls IP telephony devices 22–24. Id. at 4:26–27. Call manager 26
`checks availability and then instructs the originating telephony device to set
`up an audio stream with the called telephony device. Id. at 4:42–46.
`
`Claims 38 and 65
`3.
`Petitioner contends that claim 65 “is narrower than claim 38 and
`includes all the functionality of claim 38.” Pet. 19. Petitioner treats the
`claims together, except Petitioner notes limitations of claim 65 that are
`narrower than limitations in claim 38. Id. Patent Owner also treats claims
`38 and 65 together. Prelim. Resp. 46–57. We turn to the element-by-
`element analysis in the Petition with respect to particular elements of claims
`65 of the ’113 Patent (Pet. 19–47), as well as the Patent Owner’s contentions
`regarding Petitioner’s analysis (Prelim. Resp. 46–57).
`We start with Petitioner’s contentions regarding “a web-enabled
`processing system including one or more web servers designed to be coupled
`to a call processing system,” recited in claim 65. Petitioner points to ESP 60
`and its processing unit 62. See, e.g., Pet. 21 (citing Ex. 1003, 3:36–4:23,
`Fig. 1). The ’113 Patent Specification sets forth examples of systems that
`are web-enabled including: (1) systems that allow users to enter information
`through “a web portal” (Ex. 1001, 1:36–37, 41); and (2) “TAC 10 or other
`interface system” (id. at 5:38–39) that allows a user to add or change
`features by accessing a “public internet portal” (id. at 5:38–44) and/or “[a]
`user-friendly web page” (id. at 5:44). Petitioner points to Burger’s teaching
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`of “web server procedure 276” (Pet. 21), which, consistent with Petitioner’s
`contentions, “causes the ESP 60 to act as a web server with respect to the
`packet-based network 24 and to provide a[] user interface.” Ex. 1003, 8:59–
`62; see also id. at Fig. 8 (illustrating “SUBSCRIBER CALL
`MANAGEMENT SCREEN 400”).
`Patent Owner disputes Petitioner’s contentions regarding this
`limitation on the basis that “[a]s set forth in Section V, Applicants expressly
`disclaimed any call processing system that applied call features using an
`edge switch or that was itself an edge device.” Prelim. Resp. 46. For the
`reasons given above discussed in connection with claim construction, we
`decline to adopt Patent Owner’s construction or disclaimer for the purposes
`of this Decision.
`Claim 65 also recites “the circuit-switched network comprising edge
`switches . . . and switching facilities for routing calls to other edge switches
`or other switching facilities.” Petitioner, for example, in reliance on the
`testimony of Mr. Willis, contends that Burger teaches circuit switched
`network 22 that corresponds to the “circuit-switched network,” recited in
`claim 65. Pet. 23 (citing Ex. 1003, 3:43–45, 4:29–34; Ex. 1002 ¶¶ 117–22;
`Ex. 1001, 1:45–51). Consistent with Petitioner’s contentions (id.), Burger
`teaches that circuit switched network 22 is the PSTN (Ex. 1003, 3:43–45,
`4:29–34). Relying on the testimony of Mr. Willis, Petitioner further
`contends that Burger’s circuit-switched network—e.g., the PSTN was
`known to include edge switches and tandem switches (switching facilities).
`Pet. 7, 23 (citing, e.g., Ex. 1003,1:50–2:39, 3:36–45, 4:29–34, Figs. 1, 2,;
`Ex. 1002 ¶¶ 117–22; Ex. 1001, 1:42–51). At this juncture, Patent Owner
`does not dispute these contentions.
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`Claim 65 additionally recites “the web-enabled processing system
`designed to be coupled to at least one switching facility of the circuit-
`switched network.” Petitioner points to Burger’s teaching of TDMA/circuit
`switched interface 64 (Pet. 31), which, consistent with Petitioner’s
`contentions is connected to ESP processing unit 62 by bus 66 and circuit
`switched network 22 by communication media (e.g., T1 line) 72 (Ex. 1003,
`4:3–18). Petitioner also contends that it would have been obvious to a
`person of ordinary skill in the art to connect ESP processing unit 62 to a
`switching facility within the PSTN. Id. at 35–37.
`Patent Owner’s contentions regarding this recitation are premised on
`its proposed narrow interpretation of “switching facility” and “coupled to.”
`Prelim. Resp. 48–58. At this juncture of the proceeding, and for reasons
`provided above, we decline to adopt Patent Owner’s proposed
`interpretations and disclaimer.
`Even under Patent Owner’s proposed interpretations, however,
`Petitioner’s obviousness contentions (Pet. 35–37) are consistent with Burger
`and the knowledge of a person of ordinary skill in the art, as exemplified by
`the art cited therein. Patent Owner contends Petitioner’s “theory, however,
`lacks merit because it assumes that ESP 60 has the functionality with respect
`to SS7 signaling.” Prelim. Resp. 54. Claim 65, however, does not recite
`“SS7 signaling,” and Patent Owner does not propose a construction for
`“web-enabled processing system” that requires it to have SS7 signaling. See
`id. at 33–39.
`Furthermore, Petitioner argues, with supporting evidence including
`the testimony of Mr. Willis, that coupling ESP 60 to a tandem switch in the
`PSTN would have been nothing more than the combination of known
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`elements using known methods (e.g., the known global SS7 standard
`transmitted through SS7 signaling channels and signaling control points
`(SCPs)) to achieve predictable results. Pet. 35–37 (citing e.g., Ex.
`1002 ¶¶ 157–68; Ex. 1005, Fig. 1, 9:28–33, Ex. 1006, 5:42–45, Fig. 1; Ex.
`1008, 87, Ex. 1010, 1–4, Fig. 1).
`Regarding the disputed limitations, Petitioner also points to
`Alexander, as another ground, and Petitioner’s contentions are supported
`sufficiently by the testimony of Mr. Willis. For example, Petitioner points to
`Alexander