throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`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 IPR2016-01257
`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 143–147, 149, 150,
`163, and 176–178 (“challenged claims”) of U.S. Patent No. 8,457,113 B2
`(Ex. 1101, “the ’113 Patent”). Petitioner also proffers a Declaration of
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`Mr. Dean Willis, who has been retained as an expert witness for the instant
`proceeding. Ex. 1102 ¶ 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 IPR2016-01254,
`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 that the challenged claims are unpatentable based on
`the following grounds of unpatentability (Pet. 4):
`
`Basis
`
`Reference(s)
`
`§ 103 U.S. Patent No. 6,353,660 B1 (“Burger,” Ex. 1103) and the
`knowledge of a person of ordinary skill in the art
`
`§ 103
`
`Burger and U.S. Patent No. 6,798,767 B1 (“Alexander,” Ex.
`1106)
`
`§ 103 U.S. Patent No. 6,683,870 B1 (“Archer,” Ex. 1104) and the
`knowledge of a person of ordinary skill in the art
`
`
`
`The ’113 Patent
`D.
`The ʼ113 Patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1101, 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.
`Claims 143 and 163 are the independent claims challenged in this
`proceeding. Claims 144–47, 149, 150, and 176–78 depend directly from one
`of claims 143 or 163. Independent claim 143 is illustrative of the claimed
`subject matter and is reproduced below:
`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
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`enabling communication between the first call and the second
`call by the controller.
`Ex. 1101, 22:50–63.
`
`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 one 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).
`
`The Parties’ Contentions
`B.
`Petitioner provides contentions regarding the broadest reasonable
`interpretation of “call data” and “control criteria.” Pet. 14, 15. Patent
`Owner provides contentions regarding the broadest reasonable interpretation
`of “controller.” Prelim. Resp. 12–34. We address the parties’ contentions
`below.
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`“call data” and “control criteria”
`C.
`Each of challenged independent claims 143 and 163 recites “call data”
`and “control criteria.” More specifically, the independent claims recite
`receiving “call data which is associated with a first call” and “accessing
`control criteria by the controller based upon the 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. Petitioner
`also contends that “the plain and ordinary meaning of ‘control criteria’ at
`least includes selection of a telephone number or feature.” Id. Patent Owner
`does not dispute Petitioner’s contentions. Prelim. Resp. 12–22, 34.
`Accordingly, on this record, we determine that the broadest
`reasonable interpretation, in light of the ’113 Patent Specification, of each of
`the terms “call data” and “control criteria” 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.
`
`“controller”
`D.
`Each of challenged independent claims 143 and 163 recites
`“controller,” although in claim 163 the only recitation of “controller” is in
`the preamble. Regarding recitation of “controller” in the preamble,
`Petitioner does not dispute that “controller” is limiting and provides
`contentions showing teaching of the controller in the asserted art. Pet. 20–
`23, 43–44. Patent Owner contends that “[t]he preamble is limiting because
`preamble terms are used as an antecedent basis in subsequent claim
`limitations.” Prelim. Resp. 34. On this record, we treat the preamble as
`limiting.
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`Petitioner does not provide contentions regarding the broadest
`reasonable interpretation of “controller.” See generally Pet. Patent Owner
`contends “under a BRI analysis, a ‘controller’ is a ‘controller that cannot
`apply call control features through an edge switch or be an edge device.”
`Prelim. Resp. 34. Patent Owner relies on its discussion “above in Section
`V.” Id. Section V of Patent Owner’s Preliminary Response includes
`contentions regarding a “GENERAL DISCLAIMER.” Id. at 22–34.
`We start with the plain language of the claims. Neither claim 143 nor
`claim 163 recites expressly a “tandem access controller” or negative
`limitation that excludes an “edge switch” or “edge device.” Claim 143
`recites “[a] method of providing an intelligent interconnection between a
`first communication network and a second communication network,
`comprising: receiving at a controller” (emphasis added). Claim 163
`similarly recites “[a] controller for use between a first communication
`network and a second communication network” (emphasis added). We 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. 22–27. 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 2–10. 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 22
`(emphasis added)) and “[i]n contrast . . . the ’113 Patent emphasizes the
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`importance of connecting the TAC (a Tandem Access Controller) to a
`tandem switch” (id. at 24 (emphasis in the original)).
`In reliance on the testimony of Mr. Bates,1 Patent Owner asserts that
`the 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 5–6 (citing
`Ex. 2001 ¶ 41)
`According to Petitioner, the hierarchy of the PSTN was more
`integrated. Pet. 8. Consistent with Petitioner’s contentions, a dictionary
`relied upon by Patent Owner (Prelim. Resp. 5 (citing Ex. 2001 ¶ 39; 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, 6), which is 16 years before the earliest filing date of the
`applications leading to the ’113 Patent (Ex. 1101 [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
`
`
`1 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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`described. For example, advances in switching technology allow
`the introduction of local switching systems that can record billing
`information and perform alternate routing, thus combining local,
`local tandem, and toll functions.
`Ex. 1112, 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.” Id. at 24–25 (citing Ex. 1101, 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. 26 (citing Ex. 1101, 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. 1101,
`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
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`purposes of this Decision, we determine the statements in the ’113 Patent
`Specification do not give rise to a disclaimer.
`We next turn to Patent Owner’s contentions regarding disavowing
`statements in the prosecution history. Patent Owner, more specifically,
`points to statements made during prosecution of the application leading to
`U.S. Patent No. 7,764,777. Prelim. Resp. 27–33. However, the portion of
`the prosecution history cited by Patent Owner for support (id. at 32 (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.
`The prosecution history includes a footnote relating to switching
`facilities, set forth below.
`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 (emphasis added).
`Contrary to Patent Owner’s contention that the prosecution history
`contains disavowing statements, the emphasized language is broad. 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.
` 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 “controller” requiring more limited
`connectivity than that recited in the claims. After considering all the
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`arguments and evidence, we determine that the broadest reasonable
`interpretation of the term “controller” is any controller 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
`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. 5–13, 15–40. To
`support its contentions, Petitioner provides detailed explanations as to how
`the prior art meets each claim limitation. Id.
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`Burger
`1.
`Burger is directed to a network with an enhanced services platform
`(ESP) that implements methods for voice call screening. Ex. 1103, 4:1–3.
`Figure 1 of Burger is reproduced below.
`
`
`
`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. 1106, 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.
`
`Claim 143
`3.
`We turn to the element-by-element analysis in the Petition with
`respect to particular elements of claim 143 of the ’113 Patent (Pet. 17–35),
`as well as the Patent Owner’s contentions regarding Petitioner’s analysis
`(Prelim. Resp. 41–44).
`The preamble of claim 143 recites “[a] method of providing an
`intelligent interconnection between a first communication network and a
`second communication network.” Petitioner, for example, contends
`“Enhanced Services Platform (ESP) 60, and its processing unit 62, executing
`software instructions (274–308) for providing call control and routing
`functionality that interconnects packet network 24 and the PSTN 22.” Pet.
`18 (citing Ex. 1103, Abstract, 1:50–2:38, 6:60–8:46, 10:48–14:20, Figs. 1-2,
`4, 10–16; Ex. 1102 ¶¶ 107–08, 197). As explained with respect to Figure 1
`of Burger in the summary above, consistent with Petitioner’s contention,
`Burger teaches that ESP 60 includes ESP processing unit 62, circuit
`switched interface 64, and packet interface 68. Ex. 1103, 4:3–5. Burger
`also teaches that circuit switched interface 64 is connected to circuit
`switched network 22 and packet interface 68 is connected to packet switched
`network 24. Id. at 4:9–12. Petitioner’s remaining contentions regarding the
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`preamble are consistent with the prior art cited therein, and are not disputed
`by Patent Owner.
`Claim 143 next recites the steps of “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,” and
`“initiating a second call via a second communications network by the
`controller using call data” (emphasis added). We start with Petitioner’s
`contentions regarding the “controller” recited in each of these steps, as those
`contentions are disputed by Patent Owner.
`Petitioner points to ESP 60 for teaching the controller performing the
`“receiving,” “accessing,” and “initiating” steps. Pet. 23–29. Petitioner’s
`contentions are consistent with the evidence cited therein, including the
`evidence Petitioner points to showing that Burger teaches that ESP 60
`performs the “receiving,” “accessing,” and “initiating” steps (id.).
`Patent Owner contends “Applicants expressly disclaimed any call
`processing system or controller that applies call process at an edge switch or
`that was itself an edge device.” Prelim. Resp. 42. Patent Owner also
`contends “ESP 60 is unquestionably an edge device connected to an edge
`switch,” which is a “disclaimed configuration” that “is outside the scope of
`the claims at issue.” Id. at 44. Patent Owner also contends, “[a]lternatively,
`Burger’s ESP 60 cannot satisfy the proper construction of ‘controller.” Id.
`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.
`Even under Patent Owner’s construction, however, Petitioner provides
`contentions that at least it would have been obvious to configure ESP 60
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`such that it connects directly to a tandem switch that does not have edge
`switch functionality. In particular, with respect to dependent claim 144,
`Petitioner contends that Burger teaches that “circuit network 22 is the PSTN
`[ ], which operates in accordance with the SS7 signaling protocol.” Pet. 35
`(citing Ex. 1103, 3:42–43; Ex. 1114, 9–11). Petitioner additionally submits
`a paper, which teaches “[t]he current set of protocol standards for network
`signaling is known as the Signaling System No. 7 (SS7).” Ex. 1114, 1.2
`In particular, Petitioner points to a call set up example (Pet. 35–37
`(citing e.g., Ex. 1114, 10–11; Ex. 1102 ¶¶ 240–43), which is illustrated in
`the Figure 10 of the SS7 Paper, reproduced below.
`
`
`
`Figure 10 illustrates a Call Setup
`As shown in Figure 10, a call is received from a caller by an
`“Originating Exchange,” is transmitted via a “Transit Exchange” (tandem
`
`2 Abdi R. Modarressi and Ronald A. Skoog, An Overview of Signaling
`System No. 7, 80 Proceedings of the IEEE 590 (1992) (“SS7 Paper,” Exhibit
`1114).
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`switch), and is connected via a “Destination Exchange,” to the called party’s
`telephone. Ex. 1114, 10. Petitioner contends a person of ordinary skill in
`the art would have found it obvious to combine the teachings in the SS7
`Paper with Burger because of “limited options,” to avoid “special
`programming or devices,” and “because Burger suggests it by teaching
`interconnecting to the PSTN 22.” Pet. 37 (citing Ex. 1114, 10–11).
`Petitioner’s contentions in this regard are consistent with Burger, which
`teaches that “circuit switched network 22 is the PSTN” (Ex. 1103, 3:41–42),
`the “[t]he interconnection 98 between central office switches 92 and 94 can
`be formed in many ways” (id. at 4:31–32), and that a call “passes through
`the circuit switched network 22 to the ESP 60” (id. at 7:6–8).
`Additionally, because Petitioner provides these detailed contentions
`regarding supplemental teachings of the SS7 Paper, as well as articulated
`reasoning with a rational underpinning as to why a person of ordinary skill
`in the art would have combined the techniques of the SS7 Paper into
`Burger’s system and would have had a reasonable expectation of success,
`we exercise our discretion to institute on obviousness grounds including the
`SS7 Paper on independent claim 143. See SightSound Techs., LLC v. Apple
`Inc., 809 F.3d 1307, 1312–13 (Fed. Cir. 2015) (noting that the governing
`statutes do not limit the Board’s authority to proceed with AIA trial
`proceedings only on the specific statutory grounds alleged in the petition).3
`We now consider the remaining recitations in claim 143, which Patent
`Owner also does not dispute at this juncture. We turn to “receiving . . . call
`data which is associated with a first call via a first communication network”
`
`
`3 As noted below, independent claim 163 recites “controller” in the
`preamble.
`
`
`
`19
`
`

`
`IPR2016-01257
`Patent 8,457,113 B2
`
`recited in claim 143. Petitioner contends that when ESP 60 receives a call
`from the circuit-switched network, the dialed telephone number corresponds
`to call data and when ESP 60 receives calls from packet network 24, the
`network address (e.g., IP address) corresponds to call data. Pet. 23–24
`(citing Ex. 1103, Abstract, 1:53–55, 4:24-41, 7:4-19, 11:1–13, Figs. 2, 4, 11;
`Ex. 1102 ¶¶ 73–74, 132–38, 202). Consistent with Petitioner’s contentions,
`Burger teaches receiving and identifying “the particular public telephone
`number” (Ex. 1103, Fig. 4) and receiving and identifying “the particular
`public packet network address” (id. at Fig. 11).
`We next turn to “accessing control criteria,” which is based on call
`data, i.e., either the dialed telephone number or the network address.
`Petitioner, for example, contends that database 282 stores the corresponding
`“control criteria” for look-up, such that a called party’s public telephone
`number is used to retrieve from database 282 the subscriber’s private packet
`address and vice versa, when the network address corresponds to the call
`data. Pet. 25–26 (citing Ex. 1102 at ¶¶ 204-209; Ex. 1103, 7:20-26, 8:21-26,
`10:48-65, 11:1-21, Figs. 4, 10, 11). Consistent with Petitioner’s contentions,
`Burger teaches that a subscriber record in ESP database 282 includes “the
`subscriber’s public telephone number 322” and “the subscriber’s public
`packet address 324.” Ex. 1003, 9:50–53. Burger further teaches that each of
`the subscriber’s telephone number and the packet address is used by ESP
`procedures, e.g., for forwarding a call. Id. at 8:66–9:35.
`Claim 143 also recites steps of “initiating a second call via a second
`communication network . . . using the call data and the control criteria” and
`“enabling communication between the first call and the second call.”
`Petitioner points to the steps in Figures 4 and 11 that teach placing a second
`
`
`
`20
`
`

`
`IPR2016-01257
`Patent 8,457,113 B2
`
`call over the second network and connecting the first and second calls. Pet.
`27–28 (citing Ex. 1103, Figs. 4, 11). Petitioner also points to Burger’s
`procedures executed in software that perform the steps of Figures 4 and 11,
`such as those shown in Figure 5 and discussed in the summary of Burger
`above. Consistent with Petitioner’s contentions, Burger teaches call control
`procedures corresponding to the steps of claim 143 including “284 Place call
`over packet network procedure,” “286 Place call over PSTN procedure,”
`“288 Receive call from packet network procedure,” “290 Receive call from
`PSTN procedure,” and “298 Connect calls 2-way procedure.” Id. at 27–29
`(citing 1:50–2:38, 6:60–9:40, 10:48–14:20, Figs. 4, 5, 10–16; Ex. 1102 ¶¶
`210-14).
`Claim 143 further recites “wherein at least one of the first and second
`networks in a voice over IP (VOIP) network” as part of the initiation step.
`Petitioner points to teachings in Burger and Alexander for this recitation.
`Pet. 29–32. For example, as Petitioner correctly contends (id.), Alexander
`teaches that voice over IP (VoIP) technology allows an IP network to
`transmit telecommunications by encapsulating a user’s voice into IP packets
`so that the voice can be transmitted over LANs 20 and Internet 40. Ex.
`1106, 3:64–4:4.
` Petitioner additionally provides reasoning to combine the teachings
`of Burger and Alexander, supported by the testimony of Mr. Willis, as well
`as other evidence. For example, Petitioner contends that a VOIP network
`one of a finite number of ways to implement packet-switched voice
`communications and, therefore, would have been obvious to try. Id. at 31
`(citing Ex. 1102 ¶¶ 221–22). Petitioner additionally contends that VOIP was
`well-known and a person of ordinary skill in the art could have implemented
`
`
`
`21
`
`

`
`IPR2016-01257
`Patent 8,457,113 B2
`
`Burger’s packet network 24 as a VOIP network with a reasonable
`expectation of success. Id. (Citing Ex. 1103, 1:24–25, 4:64–67, Ex.
`1102 ¶¶ 221–22); see also id. at 32 (citing Ex. 1103, 1:24-25, 2:6–8, 4:1–12,
`4:57–58, Figs. 1, 5; 1106 at 3:64–67; Ex. 1102 at ¶ 231 (“A person of
`ordinary skill in the art could have used Alexander’s teaching of a VOIP
`network to implement Burger’s packet network 24 using VOIP with a
`reasonable expectation of success in accordance with VOIP standards like
`H323 and SIP.”). Petitioner additionally provides reasons why a person of
`ordinary skill in the art would have been motivated to use VOIP technology,
`including several advantages of VOIP over other approaches. Id. at 31–33
`(citing Ex. 1103, 1:26–27, 7:46-55, 9:40-49, Fig. 1; Ex. 1106, 3:64–67,
`4:42–50, Fig. 1; Ex. 1

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