Trials@uspto.gov
`571-272-7822
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` Paper 62
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` Entered: December 13, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01259
`Patent 8,155,298 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`571-272-7822
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` Paper 62
`
`
`
` Entered: December 13, 2017
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`
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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPEN WEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01259
`Patent 8,155,298 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`IPR2016-01259
`Patent 8,155,298 B2
`
`
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`INTRODUCTION
`I.
`Bright House Networks, LLC, WideOpen West Finance, LLC,
`Knology of Florida, Inc., and Birch Communications, Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review of claim 20 of
`U.S. Patent No. 8,155,298 B2 (Ex. 1101, “the ’298 patent”) and a
`Declaration of Thomas F. La Porta, Ph.D. (Ex. 1102). Paper 1 (“Pet.”).
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response and a
`Declaration of Mr. Regis J. Bates Jr. (Ex. 2001). Paper 11 (“Prelim. Resp.”).
`Upon consideration of the parties’ contentions and supporting evidence, we
`instituted an inter partes review pursuant to 35 U.S.C. § 314, as to claim 20
`of the ’298 patent. Paper 23 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 33, “PO Resp.”) and a second Declaration of Mr. Bates
`(Ex. 2022), Petitioner filed a Reply (Paper 35, “Reply”) and a second
`Declaration of Dr. La Porta (Ex. 1165). A transcript of the oral hearing held
`on September 19, 2017, has been entered into the record as Paper 61
`(“Tr.”).1
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has demonstrated
`by a preponderance of the evidence that claim 20 of the ’298 patent is
`unpatentable.
`
`
`1 The oral hearings in the following cases were consolidated: Cases
`IPR2016-01259, IPR2016-01261, IPR2016-01262, and IPR2016-01263.
`Paper 51.
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`A. Related Matters
`The parties indicate that the ’298 patent is involved in Patent Asset
`Licensing LLC v. Bright House Networks, LLC, No. 3:15-cv-00742-J-
`32MCR (M.D. Fla.), and identify other related proceedings. Pet. 4–5;
`Paper 7, 2–3. There are other petitions challenging the ’298 patent
`(IPR2016-01256 and IPR2016-01263) and two related patents:
`(1) U.S. Patent No. 7,764,777 B2 (Ex. 1106, “the ’777 patent”), which
`issued from a divisional application of the ’298 patent’s parent application;
`and (2) U.S. Patent No. 8,457,113 B2 (Ex. 1107, “the ’113 patent”), which
`issued from a continuation application of the ’777 patent. A final written
`decisions is entered currently in each of the following proceedings:
`IPR2016-01256 and IPR2016-01263.
`
`B. The ’298 Patent
`The ’298 patent relates to telephone services. Ex. 1101, 1:20. In the
`background section, the ’298 patent explains that the Public Switched
`Telephone Network (PSTN) consists of a plurality of edge switches
`connected to telephones on one side and to a network of tandem switches on
`the other. Id. at 1:42−44. 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 1:44−48. Dr. La Porta testifies that the “PSTN had been in existence
`for decades and consisted of a global network of circuit switches arranged in
`a geographical hierarchy.” Ex. 1102 ¶¶ 54−57 (citing the ENGINEERING AND
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`OPERATIONS IN THE BELL SYSTEM (2nd ed. 1984) (“the Bell System
`Reference,” Ex. 1137)).
`According to the ’298 patent, at the time of the invention, there were
`“web-based companies managing 3rd-party call control, via the toll-switch
`network, which allow users to enter call control information through a web
`portal.” Ex. 1101, 1:31−34. “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
`2:38−41.
`The ’298 patent discloses a system for allowing a subscriber to select
`telephone service features. Ex. 1101, 1:20–23. Figure 1 of the ’298 patent
`is reproduced below (with annotations).
`
`
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional PSTN tandem switch 16. Id. at 4:60–64. According to the
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`’298 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 4:60–
`5:4. 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. More
`specifically, in the network illustrated in Figure 1, a call from calling party
`20 to subscriber’s phone 14 is directed to tandem access controller 10, which
`places a second call, subject to 3rd party control information, to subscriber
`12. Id. at 5:5–20. The second call is placed “to the subscriber’s ‘private’
`phone number,” without terminating the first call. Id. 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.
`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 5:33–41.
`
`C. Challenged Claim
`Petitioner challenges only claim 20 of the ’298 patent in this
`proceeding. Claim 20 is reproduced below.
`20. A method of providing a user interaction system to enable
`users to control routing of one or more communications between
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`a calling party and a called party through user input, the user
`interaction system comprising a web server coupled to a
`controller with access to at least two communication networks,
`wherein at least one of the networks is a packet network
`configured to support voice over IP (“VOIP”), and the second
`network is coupled to a switching facility of a network
`comprising edge switches for routing calls from and to users
`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, comprising the steps of:
`providing a website for the users to view features
`associated with the routing of the one or more communications;
`facilitating certain of the users to sign up to become
`subscribers of the communication networks through the entry of
`user personal data through the website;
`granting access to authorized ones of the users;
`providing a menu of available features, via the website, for
`the users to make feature selections;
`processing of feature selections into control criteria;
`receiving and storing the control criteria in a database
`associated with the server, the controller, or both;
`receiving a communication request at the controller, from
`the calling party to an intended called party;
`upon receiving the communication request, utilizing the
`controller to retrieve at least a portion of the control criteria
`relating to the user to determine a possible route for the one or
`more communications from the calling party; and
`executing the control criteria to facilitate the routing of the
`one or more communications across at least one of the at least
`two networks.
`Ex. 1101, 14:60–15:28 (emphases added).
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`US 5,958,016
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`Chang
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`Swartz
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`Admitted Prior Art (see, e.g., Ex. 1101, 1:42–55).
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`(Ex. 1103)
`Archer
`
`US 6,683,870 B1 Jan. 27, 2004
`(filed on Jun. 25, 1998)
`
`Sept. 28, 1999
`(Ex. 1104)
`
`
`
`US 6,445,694 B1 Sept. 3, 2002
`
`(Ex. 1105)
`
`E. Instituted Grounds of Unpatentability
`We instituted this trial based on the following grounds Petitioner
`asserts that claim 20 of the ’298 patent is unpatentable based on the
`following grounds of unpatentability. Dec. 15.
`
`References
`Archer, Chang, and the Admitted
`Prior Art
`
`Archer, Chang, Swartz, and the
`Admitted Prior Art
`
`Basis
`
`Challenged Claim
`
`§ 103(a)2
`
`§ 103(a)
`
`20
`
`20
`
`
`2 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§ 103 in this Decision.
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`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 patent disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “switching facility”
`The preamble of claim 20 recites “a network comprising edge
`switches for routing calls from and to users 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.”3 Ex. 1101, 14:67–
`15:4 (emphasis added). Apart from the claims, the term “switching facility”
`does not appear in the Specification. Nor does the term appear in the
`original disclosure of the application that issued as the ’298 patent. Rather,
`the term was introduced into the claims by amendment during prosecution.
`Ex. 1108, 97−102.
`
`
`3 In this proceeding, the parties agree that the preamble should be given
`patentable weight. Pet. 22−36; Prelim. Resp. 34; PO Resp. 31. For
`purposes of this Decision, we proceed on the assumption that the preamble
`should be given patentable weight.
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`At institution, we adopted Petitioner’s proposed construction, as it is
`consistent with the intrinsic evidence and the term’s plain and ordinary
`meaning, construing “switching facility” as “any switch in the
`communication network.” Dec. 7−8; Pet. 9−10; Ex. 2005, 82, n.1
`(Applicants defined a “switching facility” as “[a]ny point in the switching
`fabric of converging networks”); TELECOMMUNICATIONS: GLOSSARY OF
`TELECOMMUNICATION TERMS, THE FEDERAL STANDARD 1037C, S-35 (1996)
`(Ex. 3001, 391) (defining “switching center” and “switching facility” as
`synonyms that mean “a facility in which switches are used to interconnect
`communications circuits on a circuit-, message-, or packet-switching basis”);
`NEWTON’S TELECOM DICTIONARY, (15th ed. 1999) (Ex. 3002) (defining
`“switching centers” to refer to all five classes of switches in the PSTN)).
`We rejected Patent Owner’s proposed construction because it would
`improperly import limitations into the claim. Dec. 7−8.
`In its Response, Patent Owner maintains that “switching facility” does
`not include an edge switch or edge device, and requires the claimed
`“controller” to be connected directly to a tandem switch, rather than an edge
`switch or edge device. PO Resp. 1−35. Patent Owner argues that the claim
`expressly distinguishes that a “switching facility” is not an “edge switch,”
`and that construing “switching facility” to include “edge switch” would
`render the claim terms superfluous. Id. at 30−35. In Patent Owner’s view,
`Applicants of the ’298 patent “unequivocally disclaimed controllers that
`applied call control features through an edge switch, or controllers that were
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`themselves an edge device, from the scope of their inventions.” Id. at 1−35.
`We disagree and address below each of Patent Owner’s arguments in turn.
`First, based on the evidence before us, we decline to adopt Patent
`Owner’s proposed claim construction, as it would import limitations—
`“connecting the Tandem Access Controller (‘TAC’) to a PSTN tandem
`switch, rather than edge switches and edge devices”—from a preferred
`embodiment into the claim. Id. at 2, 9−10, 14−20; Ex. 1101, 1:65−66,
`3:7−8, 4:15−19. Significantly, neither “Tandem Access Controller” nor
`“tandem switch” appears in claim 20. In fact, Patent Owner admits that
`Applicants used “switching facility” in the claim instead of “tandem switch”
`to indicate that “switching facility” has broader scope than “tandem switch.”
`Prelim. Resp. 36.
`A person of ordinary skill in the art would have understood that
`“switching facility” and “tandem switch” have different meanings. In the
`context of telecommunication and network communication, the plain and
`ordinary meanings of these terms are clear—“tandem switch” refers to
`class 4 switches in the PSTN (Ex. 1102 ¶ 54; Ex. 2022¶ 36), whereas
`“switching facility” refers to all five classes of switches in the PSTN (Ex.
`3002) or “a facility in which switches are used to interconnect
`communications circuits on a circuit-, message-, or packet-switching basis”
`(Ex. 3001, 391). This is consistent with Applicants’ definition of “switching
`facility”—“[a]ny point in the switching fabric of converging networks”—
`that was submitted with the Amendment that introduced the term. Ex. 2005,
`82, n.1. Moreover, “the general assumption is that different terms have
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`different meanings.” Symantec Corp. v. Comput. Assoc. 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 obviousness analysis below because
`the language of claim 20 does not require a direct connection between a
`controller and a switching facility. Indeed, claim 20 recites “a controller
`with access to at least two communication networks . . . and the second
`network is coupled to a switching facility.” Ex. 1101, 14:63−15:5
`(emphases added). We decline to construe “with access to” a network
`restrictively to require a controller to be connected directly to a tandem
`switch in the network, 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
`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
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`law that the claims of a patent define the invention to which the patentee is
`entitled the right to exclude”).
`Second, we are not persuaded by Patent Owner’s arguments that the
`claims expressly distinguish that a “switching facility” is not an “edge
`switch,” and that construing “switching facility” to include “edge switch”
`would render the claim terms superfluous. PO Resp. 30−35; Ex. 2022
`¶¶ 61−65. Patent Owner’s arguments fail to appreciate that claim 20 sets
`forth two separate functional requirements: (1) “edge switches for routing
`calls from and to users 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. 1101, 14:67−15:4 (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” geographic areas, as recited
`in the second claim element. Ex. 1102 ¶¶ 54−56. The two terms, “edge
`switches” and “switching facilities,” are not mutually exclusive, but rather
`“switching facilities” encompasses all five classes of switches in the PSTN,
`including an edge switch. Ex. 3001, 391; Ex. 3002; Ex. 2005, 82, n.1.
`Notably, an ordinarily skilled artisan would have recognized that an
`edge switch can route calls to other edge switches directly via a direct trunk
`group or indirectly through a tandem switch, and to other switching facilities
`(e.g., a tandem switch). Ex. 1102 ¶¶ 54−56; Ex. 1137, Fig. 4-3. Dr.
`La Porta’s testimony regarding background information on the PSTN (Ex.
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`1102 ¶¶ 54−56) cites to Figure 4-4 of the Bell System reference (Ex. 1137,
`111, Fig. 4-4), which is reproduced below (with highlighting added).
`
`
`As shown in highlighted Figure 4-4 above, an edge switch (a class 5
`switch) can route calls from and to users within local geographic area
`(highlighted in red). An edge switch also can route calls to a tandem switch
`and other edge switches directly using a direct trunk group or indirectly
`through a tandem switch (highlighted in blue). Ex. 1102 ¶¶ 54−55;
`Ex. 1137, 90−92, 106−113, 119−122, 137−138, Figs. 4-3, 4-4.
`The aforementioned functional claim elements map to the switches in
`the PSTN. The first claim element takes into account routing calls from and
`to users within a local geographic area. For the second claim element, the
`claim language “switching facilities for routing calls to other edge switches”
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`takes into account routing calls from an edge switch to other edge switches.
`The claim language “switching facility for routing calls to other switching
`facility” takes into account routing calls from an edge switch to a tandem
`switch, as well as from a tandem switch to other switches, including edge
`switches, in the network. Therefore, construing “switching facility” to
`include “edge switch” would not render the claim terms superfluous.
`More significantly, interpreting “switching facility” to exclude an
`edge switch, as urged by Patent Owner, would read out important claimed
`functions—namely, routing calls from an edge switch to other edge switches
`and to tandem switches (highlighted in blue above in Figure 4-4). The
`claimed network would be incomplete.
`Probably recognizing this problem in its proposed construction, Patent
`Owner attempts to show that a tandem switch is capable of performing those
`functions, arguing that a tandem switch can “interconnect end office
`switches to other geographic areas” and that “a tandem switch may be
`‘local’ (or nearby) to other tandem switches.” PO Resp. 31−34; Ex. 2022
`¶¶ 61−65. However, those assertions address the connection, a physical line,
`between the switches. Neither Patent Owner nor Mr. Bates explains
`sufficiently how those functions—e.g., routing calls from an edge switch to
`other edge switches—can be performed by a tandem switch without an edge
`switch. PO Resp. 31−34; Ex. 2022 ¶¶ 61−65.
`Patent Owner also attempts to show that an edge switch is not capable
`of performing the recited functions in the second claim element, arguing that
`“an edge switch cannot ‘interconnect end office switches to other geographic
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`areas that are not local to an end office switch.’” PO Resp. 32−34; Ex. 2022
`¶¶ 63−65 (emphasis added). However, that argument is not commensurate
`with the scope of the claim. Claim 20 does not require every switching
`facility to perform that function. In fact, the claim uses the term “or” rather
`than “and”—“switching facilities for routing calls to other edge switches or
`other switching facilities local or in other geographic areas.” Ex. 1101,
`15:2−4 (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. 1102 ¶¶ 54−55; Ex. 1037,
`106−113, Figs. 4-3, 4-4.
`In light of the foregoing, Patent Owner’s arguments (PO Resp. 30−35)
`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that claim 20 expressly
`distinguishes that a “switching facility” is not an “edge switch,” and that
`construing “switching facility” to include “edge switch” would render the
`claim terms superfluous, are unavailing.
`Third, we are not persuaded by Patent Owner’s argument and its
`expert testimony that the Specification sets forth an unmistakable disclaimer
`that the claimed controller must be directly connected to a tandem switch,
`rather than an edge switch or edge device. PO Resp. 1−3, 9−20, 28−35.
`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.
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`Bell Atlantic Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
`1258, 1268 (Fed. Cir. 2001). The disavowal must be “unmistakable” and
`“unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
`2012).
`The claim does not recite “tandem switch,” but rather “switching
`facility.” Our construction for “switching facility” is consistent with its
`plain and ordinary meaning, encompassing all five classes of switches in the
`PSTN, including edge switches. Ex. 3001, 391; Ex. 3002; Ex. 1102 ¶ 54.
`Turning to the Specification, the term “switching facility” is not found
`anywhere in the Specification. Accordingly, there is not much, if anything,
`intrinsically in the Specification that explicitly defines or informs a person of
`ordinary skill in the art at the time of the invention the meaning of
`“switching facility.” As discussed above, Patent Owner, in fact, admits that
`Applicants introduced the term “switching facility” into the claims by
`Amendment to indicate that “switching facility” has broader scope than
`“tandem switch.” Prelim. Resp. 36; Ex. 2005, 82, n.1.
`We note that Patent Owner’s arguments and Mr. Bates’ testimony rely
`on the discussions in the Specification regarding both edge switches and
`edge devices (Ex. 1101, 1:34−37, 1:56−64), to support their assertion that
`Applicants disparage the application of call control features at an edge
`switch. PO Resp. 14−15; Ex. 2022 ¶ 47. In any event, the Specification
`clearly states that connecting a controller directly at a tandem switch, rather
`than an edge switch—to eliminate the problems regarding the provision of
`call features through the local service telephone company (telco) business
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`office—is a preferred embodiment. Ex. 1101, 1:65−66 (“A preferred
`embodiment of the inventive system described herein connects at the
`tandem, thereby eliminating these problems.”), 3:7−8 (“In one embodiment,
`the system includes a processor, referred to herein as a tandem access
`controller (TAC).”), 4:15−19 (“FIG. 1 illustrates the tandem access
`controller (TAC) in one embodiment of the present invention connected to
`the existing PSTN tandem switch.”). In other embodiments, the
`Specification explains that the web-enhanced services should be connected
`locally or “coexist with and overlay the local phone service at the local
`level.” Id. at 3:29−43. As Mr. Bates confirms, edge switches “serve end
`users through local loop connections,” and “interconnect subscriber lines
`within a local area.” Ex. 2022 ¶ 38; Ex. 2002, 159; Ex. 2003, 102.
`The Specification also does not support Patent Owner’s position
`regarding edge devices. PO Resp. 14−17; Ex. 2022 ¶¶ 46−50. The allegedly
`disparaging statements are directed to only certain types of edge devices,
`such as phones, PBXs, and edge devices that provide extremely limited
`features. Ex. 1101, 1:34−37, 2:37−51. Notably, nothing in the Specification
`disparages a PSTN-to-IP network gateway, as taught in Archer. Therefore,
`if there is a disclaimer, such a disclaimer, at most, is limited to those prior
`art edge devices (e.g., phones and PBXs) discussed specifically in the
`Specification.
`More importantly, recognizing the advantages of a preferred
`embodiment over the prior art systems does not amount to an unmistakable
`disclaimer. As our reviewing court has explained, “patentees [are] not
`
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`required to include within each of their claims all of [the] advantages or
`features described as significant or important in the written description.”
`Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004).
`“An invention may possess a number of advantages or purposes, and there is
`no requirement that every claim directed to that invention be limited to
`encompass all of them.” E−Pass Techs., Inc. v. 3com Corp., 343 F.3d 1364,
`1370 (Fed. Cir. 2003).
`Here, claim 20 is directed to a user interaction web server coupled to a
`controller with access to two networks, one of which is coupled to a
`switching facility. In the “web-enhanced services” embodiments, the
`Specification does not describe requiring a controller to be connected to a
`tandem switch directly. Ex. 1001, 3:29−43. Although the preferred
`embodiment includes a tandem access controller directly connected to a
`PSTN tandem switch, Applicants were not required to claim this feature and
`they did not do so in claim 20. See Ventana, 473 F.3d at 1181−82. Even in
`cases where the specification describes only a single embodiment, our
`reviewing court consistently has not construed the claim as being limited to
`that embodiment. Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d
`1362, 1365 (Fed. Cir. 2012) (holding that it is not enough that the only
`embodiment, or all of the embodiments, contain a particular limitation to
`limit a claim to that particular limitation.); Innova/Pure Water, Inc. v. Safari
`Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004).
`In light of the foregoing, we do not agree with Patent Owner that the
`Specification sets forth an unmistakable disclaimer.
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`Finally, we also are not persuaded by Patent Owner’s argument that
`the prosecution history confirms the alleged disclaimer set forth in the
`Specification. PO Resp. 20−28; Ex. 2022 ¶¶ 55−59. As an initial matter, no
`unmistakable disclaimer is found in the Specification for the reason stated
`above. Therefore, Patent Owner’s assertion that Applicants did not rescind
`the clear disclaimer is misplaced.
`Further, in the Institution Decision, we rejected Patent Owner’s
`argument that the prosecution history makes clear that “switching facility”
`cannot include an edge switch. Dec. 8. We noted that the remarks made
`during prosecution are equivocal, and do not persuade us of a disavowal or
`disclaimer of the scope of the term “switching facility” to exclude an edge
`switch. Id. For example, the portion of the prosecution history that Patent
`Owner cites includes a footnote for defining a “switching facility” as:
`Any point in the switching fabric of converging networks, also
`referred to in industry as a signal transfer point (STP), signal
`control point (SCP), session border controller (SBC), gateway,
`access tandem, class 4 switch, wire center, toll office, toll center,
`PSTN switching center, intercarrier connection point, trunk
`gateway, hybrid switch, etc.
`Ex. 2005, 82, n.1.
`The above description does not explain that a switching facility
`excludes an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad. These examples provided by
`Applicants (id.) include a “wire center,” “PSTN switching center,” and
`“hybrid switch,” which include an edge switch. Indeed, “hybrid switches”
`are both an edge switch and a tandem switch. Ex. 2002, 4; Ex. 1165
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`¶¶ 64−65. Applicants clearly uses the term “switching facilities” to include
`edge switches.
`Patent Owner now argues that we “misread” the Applicants’
`definition, suggesting that the Applicants’ remarks should be read without
`that definition. PO Resp. 26−27. Relying on Mr. Bates’ testimony, Patent
`Owner argues the Applicants’ remarks “make clear that they have always
`consistently distinguished edge switches and tandem switches throughout
`the prosecution history.” Id. at 26−28; Ex. 2022 ¶¶ 58−59.
`However, as discussed above, the Applicants’ definition, which is a
`part of the intrinsic evidence in this record, is consistent with the term’s
`plain and ordinary meaning (Ex. 3001, 391; Ex. 3002) and the usage of the
`term in claim 20 (Ex. 1101, 14:60−15:28), as well as the general knowledge
`of a person with ordinary skill in the art (Ex. 1102 ¶¶ 54−56; Ex. 1137).
`Mr. Bates’ testimony (Ex. 2022 ¶¶ 58−59), which is extrinsic evidence,
`merely repeats Patent Owner’s arguments. Moreover, “extrinsic evidence
`may be used only to assist in the proper understanding of the disputed
`limitation; it may not be used to vary, contradict, expand, or limit the claim
`language from how it is defined, even by implication, in the specification or
`file history.” Bell Atl. Network, 262 F.3d at 1269. Our reviewing court also
`has explained that “extrinsic evidence consisting of expert reports and
`testimony is generated at the time of and for the purpose of litigation and
`thus can suffer from bias that is not present in intrinsic evidence.” Phillips,
`415 F.3d at 1318.
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`In any event, the portions of the prosecution history relied upon by
`Patent Owner are ambiguous, and do not amount to an unmistakable
`disclaimer that limits the scope of “switching facility” to exclude an edge
`switch. Notably, Patent Owner and Mr. Bates (PO Resp. 26−27; Ex. 2022
`¶ 58) cite to the following Applicants’ remarks for support:
`The PSTN is a configuration of switching facilities for routing
`calls from calling parties to called parties, comprising a plurality
`of end office switches (also referred to as central office switches
`or edge switches (e.g., a class 5 switch)) and a plurality of
`interconnected switching facilities (also referred to as tandem
`switches). The end office switches connect calling parties to
`called parties only within a local geographic area. The tandem
`switching facilities route calls received via end office switches or
`other tandem switching facilities to called parties within other
`geographic areas (national or international, beyond the local
`geographic area that a subscriber is in). Typically, a telephone
`call involves an originating end office switch, a plurality of
`tandem switches, and a terminating end office switch.
`Ex. 2005, 82 (emphases added).
`
`The phrase “switching facilities for routing calls from calling parties
`to called parties” in the first sentence makes clear that “switching facilities”
`encompasses edge switches. As discussed above, edge switches, not tandem
`switches, route calls from and to users. Ex. 1102 ¶¶ 54−56; Ex. 1037,
`106−113, Figs. 4-3, 4-4. The above paragraph also makes clear that
`“switching facilities” encompasses tandem switches, calling this type of
`“switching facilities” sometimes, as “interconnected switching facilities”
`and
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