UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`YMAX CORPORATION
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
` ___________
`
`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
` Case IPR2016-01260 (Patent 8,457,113 B2)
` ___________
`
`Record of Oral Hearing
`Held: September 19, 2017
` _____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`YMAX CORPORATION
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
` ___________
`
`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
` Case IPR2016-01260 (Patent 8,457,113 B2)
` ___________
`
`Record of Oral Hearing
`Held: September 19, 2017
` _____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
`
`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
`Joseph J. Richetti, Esquire
`Alexander Walden, Esquire
`Bryan Cave, LLP
`1290 Avenue of the Americas
`New York, New York 10104
`
`
`
`
`
`
`On Behalf of the Patent Owner:
`Tom C. Cecil, Esquire
`Brent N. Bumgardner, Esquire
`John Murphy, Esquire
`Nelson Bumgardner
`3131 West 7th Street
`Suite 300.
`Fort Worth, Texas 76107
`
`
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing Tuesday,
`September 19, 2017, commencing at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
`
`
`P R O C E E D I N G S
`JUDGE PARVIS: Good morning. This is an oral argument in
`
`IPR2016-01254 and IPR2016-01256 through IPR2016-01263.
`Challenged patents are U.S. patent numbers 7,764,777 B2; 8,155,298 B2;
`and 8,457,113 B2.
`
`Petitioners are Bright House Networks, LLC; WideOpenWest
`Finance, LLC; Knology of Florida, Incorporated; and Birch
`Communications in IPR2016-01259, 01261, 01262, and 01263.
`
`YMAX Corporation is the petitioner in the 2016-01256, 01258 and
`01260. Cisco Systems, Inc, is the petitioner in IPR2016-01254 and
`12057.
`
`Patent owner in all proceedings is Focal IP, LLC. A complete list
`of the inter partes review numbers and the corresponding patents is
`provided in the appendix of our oral curing order which is paper number
`47 in IPR2016-01254.
`
`I am the administrative patent judge Barbara Parvis. Judges
`Medley and Chang are on the right and left respectively.
`
`At this time we would like counsel to introduce yourselves your
`partners and your guests starting with petitioner. Please use the
`microphone.
`
`MR. RICHETTI: Good morning, Your Honors. This is Joseph
`Richetti from Bryan Cave representing YMAX. With me is my
`colleague, Alexander Walden from Bryan Cave.
`
`Just to mention just for the record, Your Honor, we're having a
`little bit of a difficulty connecting to the screen.
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
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`JUDGE PARVIS: You are having problems with the
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`demonstrative slides, the projector.
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`MR. RICHETTI: Yeah.
`
`MR. BUMGARDNER: Good morning, Your Honor. Brent
`Bumgardner of Nelson Bumgardner for the patent owner. With me is
`Thomas Cecil, John Murphy, Barry Bumgardner. Also Vic Siber and
`Hanna Madbak.
`
`JUDGE PARVIS: We'll go through some ground rules this
`morning first, and I'll lay out also the schedule for the full day.
`
` Before we begin we want to remind the parties that the hearing is
`open to the public, and a full transcript will become part of the record.
`Also, please keep in mind that whatever is projected on the screen or the
`Elmo will not be viewable for anyone reading the transcript. When you
`refer to a demonstrative slide or other document on the screen, please
`state in the microphone information to identify the document that you are
`referring to, such as Petitioner's demonstratives and the slide number or
`the exhibit number and the page of the exhibit.
`
`As you know from our oral hearing order of September 1st, 2017,
`each of petitioner YMAX Corporation and patent owner Focal, IP, LLC,
`will have one hour to present its arguments for inter partes reviews
`IPR2016-01256, IPR2016-01258, and IPR2016-01260. The parties will
`then be given a one-hour break starting at 12:00 p.m. Eastern time.
`
`There's a slight shift from our order for the afternoon schedule.
`After the hearing resumes at 1:00 p.m. Eastern time, we will proceed
`with the oral argument in IPR 2016-01259 and IPR2016-01261 through
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`01263. Each side will have one hour to present its arguments for those
`inter partes reviews. Those IPRs relate to the same three challenged
`patents.
`
`As a reminder, Bright House Networks, LLC, WideOpenWest
`Finance, LLC; Knology of Florida, Incorporated and Birch
`Communications jointly filed petitions in IPR2016-01259 and IPR2016-
`01261 through 01263 and will be expected to speak with one voice.
`
`Then we will proceed with the oral argument in IPR2016-01254
`and 01257. That oral argument relates to the challenges to U.S. Patent
`No. 8,457,113 B2. Each of petitioner Cisco Systems, Incorporated and
`patent owner Focal IP, LLC, will have 30 minutes total to present its
`arguments.
`
`In each of the oral arguments today, because petitioner has the
`burden to show unpatentability of the claims, petitioner will proceed first,
`followed by the patent owner. Each petitioner will begin by presenting
`its case regarding the challenged claims and the grounds for which the
`Board instituted review in the proceedings. Patent owner will present its
`rebuttal to petitioner's case and also will present its case regarding any
`motions to amend. Petitioner may reserve some time for rebuttal to patent
`owner's presentation, including patent owner's case regarding its motions
`to amend. Patent owner may reserve some time, but only for rebuttal to
`petitioner's presentation regarding patent owner's motions to amend.
`
`For the record, in light of objections raised during the call on
`Thursday, September 14th, 2017, on Friday, September 15th, 2017, we
`issued an order. For example, paper 54 in IPR2016-01254 expunging
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`without prejudice demonstrative slides in IPR2106-01254, 01257, 01259,
`01261, 01262 and 01263.
`
`Cisco Systems, Incorporated, Bright House Networks Group and
`patent owner Focal IP were authorized and elected not to file revised
`demonstratives in those proceedings. We have Elmo equipment available
`to those parties for their presentations later this afternoon.
`
`Based on the representations of the parties, the order issued Friday,
`September 15th, 2017, for example, paper 54 in IPR2016-01254,
`resolved the parties' objections in these proceedings.
`
`However, as a reminder, if objections arise during the hearing
`today, we ask counsel not to interrupt the other side's presentation to
`make objections. But you can address your objections to the other side's
`presentation, including use of certain materials or demonstratives, if you
`wish, during your own time. We nevertheless will review the written
`objections when we are deliberating after the oral hearing.
`
`So any time you are ready, counsel for petitioner may proceed.
`
`Are you still having difficulty with the equipment?
`
`MR. RICHETTI: Unfortunately, we are, Your Honor.
`
`MR. BUMGARDNER: Your Honor, we were also having
`problems with the Elmo.
`
`JUDGE PARVIS: I'll be using the clock on the back wall for time.
`
`MR. RICHETTI: Good morning, Your Honors.
`
`We would like to reserve 30 minutes for our rebuttal.
`
`So as Your Honor mentioned, this IPR dispute is based on three
`different patents, the '113, the '777, and the '289 patents. And all three
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
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`patents generally relate to providing and managing call control features in
`a public switch telephone network or PSTN. And the PSTN is just, at
`least from my time, it would be when we go to the AT&T network and
`all switches and controllers and databases for connecting telephone calls
`that are associated with that.
`
`The patent and the challenged claims are more specifically directed
`to call-forwarding features, which transfers a phone call originally
`directed to one number and then provides the call to an alternate number
`that's been provided.
`
`Certain other challenged claims involve processing of calls that
`occur over both the PSTN, the public switch network, and a packet-based
`network, such as the internet. And other claims are further directed to a
`web-based system that enables users to select inputs and various call
`controls feature using the web.
`
`The three proceedings all have multiple grounds. All the
`proceedings have multiple grounds that have been instituted on different
`sets of claims, but the references are either the Shtivelman reference or
`the O'Neal reference. So there's only two references.
`
`Now, the patent owner's assertions as to why the original claims
`are patentable over all the instituted grounds across all three IPRs boils
`down to two basic arguments. One is that the two primary references,
`Shtivelman and O'Neal, do not teach the claim controller coupled to a
`switching facility. And this argument stands and falls entirely on their
`claimed construction provisions.
` Their second argument is that
`O'Neal does not teach connecting the two calls when the second call --
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
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`when the forwarding number has been completed or received by the
`called party's telephone. This one, as we'll go through in more detail, but
`that their expert has now refuted.
`
`For sake of argument and to try to simplify and make the
`presentation as effective as possible, I'll be handling the first part, the
`claim construction; and my colleague, Alexander Walden will handle the
`discussion on the particular references, if that's okay.
`
`So turning to slide 14, so a majority of the claims that are in
`dispute stand and fall with -- under patent owner's claim construction
`positions. And as Your Honor knows, there is a heavy presumption that
`claim terms are given their ordinary meaning.
`
`There are two narrow exceptions: One, a patentee can act as their
`own lexicographer. That's well established and not in dispute in this case.
`There's no claims by the patent owner that they acted as their own
`lexicographer.
`
`And the second narrow exception is an unambiguous and clear
`surrender of subject matter. And this requires inventors, as the federal
`circuit has explained, to use words or expressions of manifest exclusion
`or restriction and to be so unambiguous so as to be an unmistakable
`disclaimer.
`
`And that's the dispute that's before us. On Slide 10 there's three
`terms that are in dispute: Switching facility, coupled to and in
`communication with, and the third one is controller, controlling device
`and the variation tandem access controller.
`
`Just for some context, on Slide 9 these claim terms are found
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
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`within phrases that are substantially similar across the independent
`claims of different patents. For example, in claim 18 of the '77 patent, it
`would be in the phrase of "controlling device in communication with the
`twitching facility."
`
`JUDGE PARVIS: Question for the petitioner. Tandem access
`controller, is that a term of art or is that a term that might need
`construction?
`
`MR. RICHETTI: It's a term that might need construction, Your
`Honor. I mean I think "controller" is well understood in the art, you
`know, as a processor or something that's -- but you know, tandem access
`-- and I think as we'll see a lot of these terms, especially in modern day
`parlance, you know, there's some intermingling of terms.
`
`So when we go to slide 11. So basically, switching facility is at the
`heart of this matter. Petitioner and the Board's institution decision look at
`it as any switching to the telecommunications network. Patent owner
`wants to inject a negative limitation in saying that it's not an edge switch
`basically. They want to add in that it can be -- they are not saying that it's
`a tandem switch, because they clearly acknowledge that it's broader than
`that. But they want to inject in that it's not an edge switch, a negative
`limitation. So just a couple points that I think help frame the argument or
`understand the dispute is that the patent owners don't dispute the ordinary
`meaning. There's no dispute about what the ordinary meaning is. The
`question just is very specific, whether a disclaimer applies. And they've
`admitted that the switching facility is broader than just the tandem access
`switch. So they've done that in their response at 39 as well as their
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`preliminary response at 38.
`
`They admit that the term "switching facility' is not in the
`specification and that's a term that was introduced only in the file history
`of the prosecution. And the last thing they admit is that the -- there is a
`definition that's provided for tandem switching facility that was the
`provided during the prosecution.
`
`So with that basis, what the patent owner basically is asking the
`Board to do is to rewrite the very language they chose when they added it
`into the claims, knowing that it wasn't in the specification. And they are
`asking the board to ignore the very definition they provided to the PTO in
`securing allowance of the claims. And that's clearly improper under the
`law.
`Now, turning to Slide 16, one of the big disputes is whether or not
`
`the specification itself sets forth this clear and unmistakable surrender of
`subject matter. We submit, Your Honors, that it does not.
`
`The switching facility is not in the specification, as I just
`mentioned, at all. So there's no direct discussion and specification about
`what a switching facility is or is not. The tandem switch configuration
`that patent owner discusses at length is clearly delineated as a preferred
`embodiment or an embodiment. So -- I mean just one -- a couple of cites
`from the '113 patent, column 2, line 13, column 365 to column 4, line 3,
`and in numerous other places, they are all discussed as embodiments.
`
`So as on the screen as shown in slide 16, a preferred embodiment
`of the invention. And then the second one, it's even more interesting. It
`says: Is one embodiment of the present invention.
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`So it's not that the patent owner didn't know how to talk about the
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`invention as a present invention, as an invention itself, but talks about
`them as just one embodiment, again, demonstrating breadth. Not narrow,
`not limiting.
`
`As patent owner has set forth in its response --
`
`JUDGE PARVIS: The slide that you have up references Figure 1
`in the preferred embodiment. Is there a different figure or specific
`different embodiment that petitioner is pointing to.
`
`MR. RICHETTI: I'm sorry, Your Honor?
`
`JUDGE PARVIS: The slide -- Slide 16, I think that you were on,
`you reference a preferred embodiment with respect to Figure 1 that patent
`owner is referring to. Is there a different embodiment that petitioner has
`pointed to?
`
`MR. RICHETTI: A different embodiment that's not shown in
`Figure 1? I mean I think --
`
`JUDGE PARVIS: A different embodiment that doesn't -- that
`shows that the claims are broader.
`
`MR. RICHETTI: I think, Your Honor, that there's many different
`embodiments described. Whether or not they are illustrated or not, I don't
`know that. But what I can say is --
`
`JUDGE PARVIS: Yeah. Something that you pointed to in your
`briefs to show that this disclaimer is just with respect to the preferred
`embodiment in Figure 1 and not --
`
`MR. RICHETTI: Absolutely. In the petition -- just trying to get to
`the page. So in our petition we raise the argument that there's -- patent
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`owner has raised the argument that the TAC -- the controller, the tandem
`access controller -- in every embodiment, in every figure, in everything is
`always connected to the tandem access switch. And in the petition and in
`the response, you know, we said there are other embodiments that are
`broader in nature. And so there's one example which I guess will be
`from the Slide 13, and it's in column 3 of the patents. So for example, in
`the '113 patent, it's column 3: lines 27 through 40. So in that paragraph,
`it starts that there's one embodiment the system includes a processer,
`referred to herein as a tandem access controller connected to the PSTN.
`Now, that's the PSTN as a whole.
`
`And when you keep reading down in that, they contrast that to in
`another embodiment the tandem access controller is connected internally
`to the PSTN. And they go on to say that connecting the tandem access
`controller directly to the PST tandem switch or embedding the system
`into the tandem switch has some benefit.
`
`So when you look at those embodiments, there's three
`embodiments really described there. Two where you have the tandem
`access controller being internal to the PSTN. One where it's embedded
`into the PSTN tandem switch. One where it's actually just connected
`directly.
`
`And then in the first embodiment, what's important to note is that
`this is connected to the PSTN generally. This isn't using their
`nomenclature connected directly to the tandem switch. This is something
`that's broader. This is connected to the PSTN as a whole. Typically,
`that's referred to the first device you would be connecting to is an edge
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`switch.
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`And so I believe in their prosecution the applicants, when they
`were arguing over Schwab, talked about connecting to the PSTN, and
`they noted that that was more like that's connecting to an edge switch.
`That's not an edge device but an edge switch.
`
`So when you read that -- and that's what's a little difficult about
`this patent -- the figures are written in a way where you see direct
`connection from the tandem access controller number 10 to the tandem
`access switch. But the embodiments in the text refine it and say there's a
`whole bunch of different configurations that can happen. And one of
`them is that the TAC is now going to either be inside the PSTN, into the
`PSTN tandem switch, which again, based on their figures, would have it
`connected to an edge switch; or in the first embodiment as discussed in
`column 3 in the '113 patent, we see them talking about it being connected
`generally to the PSTN.
`
`So I think to answer Your Honor's questions, I don't know that all
`these embodiments are illustrated, but they are certainly discussed, and
`they certainly demonstrate a breadth that's different than just having the
`TAC always connected directly to a tandem access switch.
`
`So I think, Your Honors, what we see is a specification that has a
`general background section that generally sets forth some of the
`objectives of the patent, the alleged invention. That's not uncommon.
`And those typically don't arise to the level of a disclaimer. They are
`really setting out the framework in which one can understand the
`preceding discussion.
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
`
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`And here it's no different. The federal circuit has said disparaging
`
`statements. It's different if you have a connection between the statements
`and the claim language. But when there's no connection, there's no hook
`between the claim language and the general discussion in the
`background, that's not a situation where you have a clear and
`unmistakable surrender of subject matter.
`
`The patent owner cites to other cases, such as Sideman and
`Honeywell. Those will be called the present invention cases. Putting
`aside that Sideman is before Phillips, the embodiment decision in 2004,
`those are instances where a patentee has expressed that the present
`invention doesn't include something.
`
`That's a very different situation than what we have here today.
`Here we have a patent that talks about embodiments upon embodiments
`upon embodiments. There's breadth here, and there's no -- and there's
`general statements.
`
`Now, the -- so again, just Sideman would be the present invention
`cases. We don't have that. In cases like In re: Mann, they cite to in, I
`guess, page 2 of their patent owner response. There it's very clear in the
`patent. They didn't use present invention, but they said that a specific
`feature, a remote control device, is not disparate. That's a clear and
`unmistakable statement.
`
`Again, we do not have of any of those types of claims. In their
`papers initially, patent owner relied on the file history for its disclaimer.
`As the proceeding went forward and the institution decision was
`rendered, it now is urging that the prosecution history not even be looked
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`at. That's clearly improper.
`
`They've made numerous statements throughout their response that
`if the disclaimer is in the spec, you don't need to go to the -- you don't
`need to rely on the prosecution history. And I think in one place they
`even went as far as saying don't even need to look at it. That's clearly
`incorrect. And it's important. The prosecution history here is very
`important because that's where switching facility was entered into. That's
`when the claim language was entered in. And so, of course, we have to
`look at it. The federal circuit has made it clear that the specification is
`always -- I mean the file history is always relevant.
`
`So now if we go to Slide 18, and I guess here the key, Your
`Honors, is that, you know, the definition that's provided. It talks about
`any point in the switching fabric of converging networks. That's a very
`broad statement. It's defining the term tandem switching facilities in the
`context of a discussion about the switching facilities. So here we have a
`discussion of any point in the switching fabric. It mentions examples: A
`hybrid switch. The record demonstrates clearly that these hybrid
`switches are both Class 4 and Class 5, both tandem switches as well as
`edge switches.
` The wire center is another example. In Exhibit 1041
`in the '77 proceeding, patent owner's expert admitted that a wire center is
`an edge switch or a Class 5 switch. And then PSTN switching center is
`another example. And their definition that they provided to the patent
`office, and that definition states, when you look up PSTN switching
`center, as set forth in our petition, that it states that it is synonymous with
`switching facility and central office. And there's no dispute on the record
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`that central office is a Class 5 edge switch.
`
`So at the bottom what we have is a situation what the specification
`describes many embodiments, and we have a file history that provides a
`definition. And we have a patent owner that made a choice. They chose
`switching facility. They could have chose tandem access switch like they
`did in claims 18 and 19. They chose not to. They could have picked a
`different term -- tandem switching facility. They could have chose
`numerous other options, but they chose switching facility knowing it's
`not in the specification and provided a definition to help guide the patent
`office to secure allowance.
`
`When you do that you can't run from those definitions. You can't
`run from those public statements. The public is entitled to rely on this.
`The Federal Circuit has said on numerous occasions -- but in Gorner and
`Chef America are just two -- that the court's role is not to redraft claims,
`it's to interpret the words the patentee chose. And to do it in light of the
`arguments and the statements that were made about those things. So as
`Gorner said, we are here to interpret the claims as written. We don't
`rewrite them and we don't redefine them.
`
`Here, Your Honors, with switching facility, the conclusion would
`be that it's any switch in the network based on their own definition as
`well as the other evidence -- intrinsic evidence provided.
`
`I'll quickly go through "coupled to." if we can go to Slide 12,
`because most of these arguments are all the same. Coupled to is another
`instance where patent owner is just trying to inject a negative limitation
`that it can't be coupled to an edge switch. So this is just a different
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`variation but a very similar theme. So coupled to is a situation where
`specification doesn't use the term, but the embodiments are all connected
`to or directly connected to. Coupled to has a well-accepted meaning in
`the art. It means indirect and direct connection, and that's not in dispute
`at all.
`So again, it's this notion that -- and patent owner has framed this
`
`argument as, again, there's no hook there's no discussion where you say
`specifically coupled to was redefined or disclaimed. You know. That's
`not what we have. We have an argument from a patent owner that says
`there's a general disclaimer that applies to each -- I think they said any
`and every claim in the patents. Again, that's because there's no hook,
`there's no basis for their argument tieing it to the claims.
`
`The prosecution history doesn't support their disclaimer argument,
`and we'll let them present their side and rebut if necessary. But coupled
`to and the last one, controller, slide 13, again, a controlling device. I
`think the -- you know, again, it's a different variation of the same
`argument. They are just trying to inject negative the Board has already
`found preliminarily and it was correct that it does not exclude an edge
`switch.
`
`If Your Honors have any questions on the claim construction side,
`I'll be more than happy to answer them. Otherwise, I'll turn it over to my
`colleague, Alex Walden.
`
`JUDGE PARVIS: No other questions.
`
`MR. RICHETTI: Thank you.
`
`JUDGE PARVIS: Thank you.
`
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
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`MR. WALDEN: Good morning.
`
`Go to Slide 20.
`
`So we went through this a little bit earlier, just that there are
`
`multiple grounds instituted in each of the three proceedings. But I just
`wanted to give a slightly more detailed overview of each -- you know,
`what each ground is and the arguments that are in dispute in each of these
`grounds.
`
`So in '113, which is the 12 -- '113 patent which is the 1260
`proceeding, there's four institute grounds. There's two anticipation
`grounds, one of which is based on Shtivelman, one of which is based on
`O'Neal. As we can see on the slide, in the Shtivelman ground there's
`basically three arguments -- it boils down to three arguments. There's the
`argument that was mentioned earlier about not disclosing a call
`processing system coupled to a switching facility as well as, at the
`bottom, just for claims -- dependent claims 18 and 19 there's the
`additional argument that it doesn't disclose the tandem access controller.
`
`On those two, as was already discussed, are based -- routed
`entirely in patent owner's claim construction. The only claim in this
`ground is dependent Claim 8 that has a different argument that's not
`routed in anybody's expressed claim constructions is the control criteria
`claim.
`
`Then if we look at the O'Neal ground, anticipation ground, which
`is a similar set of claims -- the only difference is it doesn't have Claim 15
`-- we see two basic arguments. There's the call processing system
`switching facility argument at the end of that claim and the tandem
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`access controller just like in Shtivelman. And then there's a second
`argument, which is based on -- we'll get to this in a little bit -- is based on
`when the voice communication is established between the two different
`parties or the two different devices when you are forwarding a call. And
`that appears often as the final limitation in the independent claims.
`
`But just to reiterate again, that second argument about that
`limitation, the call connecting limitation, is not in dispute for Shtivelman.
`In other words, patent owner has not disputed that Shtivelman discloses
`that.
`If you could go to Slide 20.
`
`I'll quickly run through these, but there's a couple obviousness
`
`grounds as well in the '113 proceeding. There's one that's just based on
`O'Neal alone. The only -- the only arguments that they've raised are on
`both of these. So obviousness goes to -- in patent owner's responses is
`that we relied on the same arguments for switching facility call
`connecting features in the primary references. There's no other
`substantive -- real substantive disputes on either of those grounds.
`
`You can go to Slide 22.
`
`So turning to the '298 proceeding, here there's two grounds, both
`routed in O'Neal again. Two independent claims, Claim 1 and Claim 20
`slightly different secondary references. Again, for Claim 1, it's the same
`basic two arguments for O'Neal. One is the switching facility argument.
`The language is slightly different in that claim. And the second argument
`is, again, the very similar limitation about connecting, when the calls are
`connected. The link here, it's the link is being completed.
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`Case IPR2016-01256 (Patent 8,155,298)
`Case IPR2016-01258 (Patent 7,764,777)
`Case IPR2016-01260 (Patent 8,457,113 B2)
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`Again, in claim 20, that one doesn't have that second -- that
`
`limitation that the second argument revolves around. So there, again, like
`the Shtivelman ground, claim 20 stands or falls on the claim construction
`arguments about a switching facility and coupled to.
`
`If we could switch to 21.
`
`And then lastly
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