Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 60
` Entered: December 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`YMAX CORPORATION,
`Petitioner,
`v.
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01260
`Patent 8,457,113 B2
`_____________
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`

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`IPR2016-01260
`Patent 8,457,113 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`YMax Corporation (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting that we institute inter partes review of claims 1, 2, 8, 11, and 15–
`19 (“challenged claims”) of U.S. Patent No. 8,457,113 B2 (Ex. 1001, “the
`’113 Patent”). In support of its Petition, Petitioner proffers a Declaration of
`Dr. Tal Lavian, who has been retained by Petitioner as an expert witness for
`the instant proceeding. Ex. 1002 ¶¶ 2, 3. Focal IP, LLC (“Patent Owner”)
`filed a Preliminary Response (Paper 7, “Prelim. Resp.”) and a Declaration of
`Mr. Regis J. Bates (Ex. 2001), who has been retained by Patent Owner as an
`expert witness for the instant proceeding. Petitioner additionally filed a
`Reply to Patent Owner’s Preliminary Response. Paper 9 (“POPR Reply”).
`Upon consideration of the parties’ contentions and supporting evidence, we
`instituted an inter partes review pursuant to 35 U.S.C. § 314, as to the
`challenged claims of the ’113 Patent. Paper 12 (“Dec. on Inst.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`26, “PO Resp.”), and a Motion to Amend (Paper 27, “Mot.”). In support of
`its Patent Owner Response and its Motion to Amend, Patent Owner proffers
`additional Declarations of Mr. Regis Bates. Ex. 2022 ¶ 1 (supporting Patent
`Owner’s Response); Ex. 2040 ¶ 2 (supporting Motion to Amend); Ex.
`2070 ¶ 2 (supporting Reply to Opposition to Motion to Amend).1 Petitioner
`
`1 Patent Owner also submits declaration and deposition testimony from
`declarants of other Petitioners in other inter partes review proceedings. See,
`e.g., Exs. 2026–2030. Patent Owner, however, must include a detailed
`explanation of the significance of the evidence including, for example, why
`it should be considered in the instant proceeding. 37 C.F.R. §§ 42.22, 42.23,
`42.120. To the extent appropriate, we address Patent Owner’s contentions
`herein.
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`filed a Reply (Paper 33, “Pet. Reply”) and an Opposition to Patent Owner’s
`Motion to Amend (Paper 32, “Oppn.”). In support of its Opposition to the
`Motion to Amend, Petitioner proffers a Declaration of Dr. Leonard J. Forys,
`who also has been retained by Petitioner as an expert witness for the instant
`proceeding. Ex. 1045 ¶ 2. Patent Owner filed a Reply to Petitioner’s
`Opposition to the Motion to Amend (Paper 38, “PO Reply”). Petitioner filed
`a Motion for Observation, Paper 45 (“Pet. Mot. Obs.”) and Patent Owner
`filed a Response to the Motion for Observation, Paper 46 (“PO Resp.”). A
`transcript of the hearing held on September 19, 2017 has been entered into
`the record as Paper 57 (“Tr.”).2
`Subsequent to oral hearing, Petitioner was authorized to file a
`supplemental brief in opposition to Patent Owner’s Motion to Amend in
`light of the Federal Circuit’s en banc decision in Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”). Paper 54. On October
`31, 2017, Petitioner filed a supplemental brief in opposition to Patent
`Owner’s Motion to Amend. Paper 56 (“Supp. Br.”).
`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 evidence that the challenged claims of the ’113 Patent
`are unpatentable. Additionally, we deny Patent Owner’s Motion to Amend.
`
`Related Proceedings
`B.
`The parties indicate that the ’113 Patent is involved in Patent Asset
`Licensing LLC v. YMAX Corporation, No. 3:15-cv-00744-J-32MCR (M.D.
`Fla.), and the parties also identify other related proceedings. Pet. 1–2;
`
`2 The oral hearings in the following cases were consolidated: Cases
`IPR2016-01256, IPR2016-01258, and IPR2016-01260. Paper 47.
`
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`Paper 4 (Patent Owner’s Mandatory Notices), 2–3. There are other petitions
`challenging the ’113 Patent (IPR2016-01254, IPR2016-01257, and
`IPR2016-01261) and two related patents: (1) U.S. Patent No. 7,764,777 B2
`(“the ’777 Patent”), which issued from the parent of the ’113 Patent
`Application; and (2) U.S. Patent No. 8,155,298 B2, which issued from a
`continuation of the parent of the ’777 Patent Application.
`
`Instituted Grounds of Unpatentability
`C.
`We instituted on the following grounds of unpatentability (Dec. on
`Inst. 32):
`
`Challenged Claims
`
`Basis
`
`Reference(s)
`
`1, 2, 8, 15, 18, and 19
`
`§ 102(b)
`
`International Published Application
`No. WO 99/14924 (“Shtivelman,”
`Ex. 1005)
`
`1, 2, 8, 18, and 19
`
`§ 102(e) U.S. Patent No. 6,463,145 B1
`(“O’Neal,” Ex. 1003)
`
`1, 11, and 15–17
`
`1, 2, 8, 11, and 15–19
`
`§ 103
`
`§ 103
`
`O’Neal
`
`Shtivelman and O’Neal
`
`
`
`The ’113 Patent
`D.
`The ’113 Patent relates to telephone services. Ex. 1001, 1:23. In the
`background section, the ’113 Patent explains that the Public Switched
`Telephone Network (PSTN) consists of a plurality of edge switches
`connected to telephones on one side and to a network of tandem switches on
`the other. Id. at 1:45−47. The tandem switch network allows connectivity
`
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`between all of the edge switches, and a signaling system is used by the
`PSTN to allow calling and to transmit both calling and called party identity.
`Id. at 1:48−51.
`According to the ’113 Patent, at the time of the invention, there were
`web-based companies managing third-party call control, via the toll-switch
`network, which allow users to enter call control information through a web
`portal. Id. at 1:34−37. Edge devices such as phones and PBXs that include
`voice mail, inter-active voice response, call forwarding, speed calling, etc.,
`have been used to provide additional call control. Id. at 2:41−44.
`The ’113 Patent discloses a system for allowing a subscriber to select
`telephone service features. Id. at 1:23–26. Figure 1 of the ’113 Patent is
`reproduced below (with annotations).
`
`Figure 1 illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
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`
`Annotated Figure 1 illustrates tandem access controller 10 connected
`to conventional Public Switched Telephone Network (PSTN) tandem switch
`16. Id. at 4:43–44. According to the ’113 Patent, “[d]etails of the operation
`of the existing phone network,” including directing of phone calls by
`“existing” PSTN tandem switch 16 to central offices 17, 18 are further
`described in a publication incorporated by reference, as well as “numerous
`books describing the PSTN.” Id. at 4:43–54.
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional 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,
`which places a second call, subject to third party control information, to
`subscriber 12. Id. at 4:55–58. The second call is placed “to the subscriber’s
`‘private’ phone number,” without terminating the first call. Id. at 4:58–60.
`When subscriber 12 answers the call, tandem access controller 10 connects
`the first call to the second call so as to connect calling party 20 to subscriber
`12. Id. at 4:62–65.
`Figure 1 also shows web server 23 within World Wide Web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies third-party call control features via web server 23 and these
`features are then relayed via World Wide Web 22 to tandem access
`controller 10. Id. at 5:17–25.
`
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`
`Illustrative Claim
`E.
`Claim 1 is the only independent claim challenged in this proceeding.
`Claims 2, 8, 11, and 15–19 depend directly from claim 1. Independent
`claim 1 is illustrative of the claimed subject matter and is reproduced below:
`1.
`A method performed by a web enabled processing system
`including one or more web servers coupled to a call processing
`system serving as an intelligent interconnection between at least
`one packet network and a second network coupled to a switching
`facility
`of
`a
`telecommunications
`network,
`the
`telecommunications network comprising edge switches for
`routing calls from and to subscribers within a local geographic
`area and switching facilities for routing calls to other edge
`switches or other switching facilities local or in other geographic
`areas, the method for enabling voice communication from a
`calling party to a called party across both the packet network and
`the second network, the method comprising the steps of:
`receiving call data which is associated with a call originated by
`the calling party via either the packet network or the
`second network, at the call processing system, the calling
`party using a communications device to originate the call
`for the purpose of initiating voice communication, the call
`processing system coupled to at least one switching
`facility of the telecommunications network via the second
`network, the call processing system processing the call
`across both the packet network and the second network to
`complete the call to the called party; and
`establishing the voice communication between the calling party
`and the called party after the call is completed, across both
`the packet network and the second network.
`Ex. 1001, 12:30–56.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under this standard, claim terms are presumed to have their ordinary and
`customary meaning, as understood by a person of ordinary skill in the art in
`the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`B. Decision on Institution
`In the Decision on Institution, we made determinations regarding the
`broadest reasonable interpretations of “web enabled,” “coupled to,”
`“switching facility,” and “tandem access controller.” These determinations
`are summarized in the table below.
`Claim Term
`Broadest Reasonable Interpretation Determination in
`Decision on Institution
`”[W]e determine that the broadest reasonable
`interpretation, in light of the Specification, of the term
`‘web enabled’ encompasses the examples set forth in
`the ’113 Patent Specification including (1) systems
`that allow users to enter information through ‘a web
`portal’ ([Ex. 1001,] 1:36–37, 41) and (2) ‘TAC 10 or
`other interface system’ (id. at 5:38–39) that allows a
`user to add or change features by accessing a ‘public
`internet portal’ (id. at 5:38–44) and/or ‘[a] user-
`friendly web page’ (id. at 5:44). We determine that no
`other express construction is necessary.” Dec. on Inst.
`8.
`“[W]e determine that the broadest reasonable
`interpretation of the term “coupled to” includes both a
`direct and an indirect connection.” Id. at 13.
`“[W]e determine that the broadest reasonable
`interpretation of the term is any switch in the
`telecommunication network.” Id. at 16.
`“[W]e determine that the asserted prior art discloses
`. . . the more limited example of a processor that does
`not connect to subscribers directly. Accordingly, on
`this record and at this juncture, we determine that no
`
`“web enabled”
`
`“coupled to”
`
`“switching
`facility”
`
`“tandem access
`controller”
`
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`express construction of the term ‘tandem access
`controller’ is necessary to resolve a controversy in this
`proceeding.” Id. at 18.
`
`Regarding Petitioner’s contentions for the phrase “a call processing
`system serving as an intelligent interconnection between at least one packet
`network and a second network coupled to a switching facility of a
`telecommunications network, the telecommunications network comprising
`edge switches for routing calls from and to subscribers within a local
`geographic area and switching facilities for routing calls to other edge
`switches or other switching facilities local or in other geographic areas” (Pet.
`23–27, 28–29) we determined that no express construction of the phrase was
`needed other than the determinations set forth above. Dec. on Inst. 8–13.
`
`The Parties’ Contentions
`C.
`Patent Owner disputes the broadest reasonable interpretations in the
`Decision on Institution of “switching facility,” “coupled to,” and “tandem
`access controller.” PO Resp. 30–39, 65; see also id. at 10–29 (arguing
`disclaimer reflected in terms “switching facility” and “coupled to.”)
`Petitioner agrees with our determinations. Pet. Reply 13–18. We address
`the parties’ contentions regarding these disputed terms below.
`Regarding other terms, for example, “web-enabled,” our
`determinations are not disputed by Patent Owner (PO Resp. 30–39, 65).
`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). Accordingly, we
`determine that no express construction of these terms is necessary.
`
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`
`“switching facility”
`D.
`We turn to the parties’ contentions regarding the term “switching
`facility” recited in independent claim 1. The dispute between the parties
`pertains to whether another device recited in claim, i.e., a call processing
`system may be “connected to an edge switch.” See, e.g., PO Resp. 31
`(emphasis added).
`The preamble of claim 1 recites “the telecommunications network
`comprising edge switches for routing calls from and to subscribers within a
`local geographic area and switching facilities for routing calls to other edge
`switches or other switching facilities local or in other geographic areas.”3
`Ex. 1001, 12:35–39 (emphasis added). Apart from the claims, the term
`“switching facility” does not appear in the Specification. The term was
`introduced into the claims by amendment during prosecution of the ’777
`Patent Application. Ex. 1007, 75−87.
`At institution, we adopted Petitioner’s proposed construction for
`“switching facility,” as it is consistent with the intrinsic evidence and the
`term’s plain and ordinary meaning, construing “switching facility” as “any
`switch in the telecommunication network.” Dec. 15−16; Pet. 21; Ex. 1007,
`94, 94 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. 1008, 391) (defining “switching center” and
`“switching facility” as synonyms that mean “a facility in which switches are
`
`
`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 it is.
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`used to interconnect communications circuits on a circuit-, message-, or
`packet-switching basis”); THE NEWTON’S TELECOM DICTIONARY, (15th ed.
`1999) (Ex. 1009) (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. 15−16.
`In its Response, Patent Owner maintains that “switching facility” is
`not an edge switch or edge device. PO Resp. 1−36. 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 31−36. In Patent
`Owner’s view, Applicants of the ’113 Patent “unequivocally disclaimed
`controllers that applied call control features through an edge switch, or
`controllers that were themselves an edge device, from the scope of their
`inventions.” Id. at 1−35. 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. 1001, 2:1–3, 3:29–
`30, 3:66–4:3. Significantly, neither “Tandem Access Controller” nor
`“tandem switch” appears in most of the challenged claims, including
`independent claim 1.4 In fact, Patent Owner admits that Applicants used
`
`
`4 Of the challenged claims, only dependent claims 18 and 19 recite “tandem
`access controller.” The parties’ claim construction contentions for that term
`are discussed infra Section II.F.
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`“switching facility” in the claim instead of “tandem switch” to indicate that
`“switching facility” has broader scope than “tandem switch.” Prelim. Resp.
`38; PO Resp. 35–36.
`A person of ordinary skill in the art would have understood that these
`two terms have different meanings. In the context of telecommunication and
`network communication, the plain and ordinary meanings of these terms are
`clear—“tandem switch” refers to class 4 switches in the PSTN (Ex. 1002
`¶ 40; Ex. 2022 ¶ 36), whereas “switching facility” refers to all five classes of
`switches in the PSTN (Ex. 1009) or “a facility in which switches are used to
`interconnect communications circuits on a circuit-, message-, or
`packet-switching basis” (Ex. 1008, 391).5 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, 82 n.1. Moreover, “the general
`assumption is that different terms have different meanings.” Symantec
`Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008).
`Importantly, even if we were to interpret “switching facility” as a
`“tandem switch,” it would not affect our analysis below because the
`language of claim 1 does not require a direct connection between a
`
`
`5 A “hybrid” switch has combined class 4 and class 5 switching features.
`Ex. 1002 ¶ 41; Ex. 2002, 159 (cited in Ex. 2022 ¶ 38). As noted in our claim
`construction discussion in our Decision on Institution, a reference relied
`upon by Patent Owner (Prelim. Resp. 5 (Ex. 2003, 474)) indicates “[i]n a
`contemporary PSTN, a tandem switch commonly is a hybrid Class 4/5,
`functioning as both a tandem and a CO (Class 5)” (Ex. 2003, 474–75). This
`reference is extrinsic evidence offered by Patent Owner. Nonetheless, this
`evidence is not necessary for us to arrive at our determinations herein, but
`adds contextual background that further supports our analyses.
`
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`controller and a switching facility. Indeed, claim 1 recites “the call
`processing system coupled to at least one switching facility.” Ex. 1001,
`12:48–49 (emphases added). We discuss the broadest reasonable
`interpretation of “coupled to” infra Section II.E.
`We decline to construe “switching facility” as not an edge switch or
`edge device, as urged by Patent Owner. As our reviewing court has
`explained, “each claim does not necessarily cover every feature disclosed in
`the specification,” and “it is improper to limit the claim to other, unclaimed
`features.” Ventana Med. Sys., Inc. v. BioGenex Labs., Inc., 473 F.3d 1173,
`1181 (Fed. Cir. 2006). Furthermore, the court “has repeatedly cautioned
`against limiting the claimed invention to preferred embodiments or specific
`examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d
`1339, 1346–47 (Fed. Cir. 2015); SuperGuide Corp. v. DirecTV Enterprises,
`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (noting that “it is important not to
`import into a claim limitations that are not a part of the claim.”) “[I]t is the
`claims, not the written description, which define the scope of the patent
`right.” Williamson, 792 F.3d at 1346–47; see also Phillips v. AWH Corp.,
`415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (noting that “[i]t is a
`bedrock principle of patent law that the claims of a patent define the
`invention to which the patentee is entitled the right to exclude.”)
`Second, we are not persuaded by Patent Owner’s arguments that the
`claims expressly distinguish that a “switching facility” is not an “edge
`switch,” and that construing “switching facility” to include “edge switch”
`would render the claim terms superfluous. PO Resp. 31−36; Ex. 2022
`¶¶ 61−65. Patent Owner’s arguments fail to appreciate that claim 1 sets
`forth two separate functional requirements: (1) “edge switches for routing
`
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`calls from and to subscribers within a local geographic area”; and
`(2) “switching facilities for routing calls to other edge switches or other
`switching facilities local or in other geographic areas.” Ex. 1001, 12:35–39
`(emphases added). The evidence before us shows that edge switches can
`perform the function recited in the first claim element, as well as “routing
`calls to other edge switches or other switching facilities local or in other
`geographic areas,” as recited in the second claim element. Ex. 1002
`¶¶ 38−42. 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. 1008, 391;
`Ex. 1009; Ex. 2005, 82, 82 n.1.
`Notably, an ordinarily skilled artisan would have recognized that an
`edge switch can route calls to other edge switches directly via a direct trunk
`group or indirectly through a tandem switch, and to other switching facilities
`(e.g., other tandem switches). Ex. 1002 ¶¶ 38−42. Dr. Lavian’s testimony
`regarding background information on the PSTN (Ex. 1002 ¶¶ 38−42) cites to
`a figure, which is reproduced below (with highlighting added).
`
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`
`Annotated Figure Illustrating the PSTN Switch
`Hierarchy (Ex. 1002 ¶ 40)
`As shown in the highlighted figure above, an edge switch (a class 5
`switch) can route calls from and to users within local geographic area
`(highlighted in red). An edge switch also can route calls to a tandem switch
`and other edge switches directly using a direct trunk or indirectly through a
`tandem switch (highlighted in blue). Ex. 1002 ¶¶ 38−42; see also Ex. 2003,
`102 (“[A] CO traditionally houses one or more voice-optimized circuit
`switches to interconnect subscriber lines within a local area known as the
`carrier serving area (CSA) and to connect subscriber local loops to network
`trunks.”); Ex. 2002, 159–161 (“Class 5 offices are the local exchange offices,
`or Central Offices (COs), which serve end users through local loop
`connections. . . Should significant volumes of traffic be exchanged directly
`
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`between COs, they may be directly interconnected. More commonly, they
`are interconnected through tandem switches.”)6
`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”
`takes into account routing calls from an edge switch to other edge switches.
`The claim language “switching facility for routing calls . . . to other
`switching facilities” takes into account routing calls from an edge switch to a
`tandem switch, as well as from a tandem switch to other switches, including
`edge switches, in the network. Therefore, construing “switching facility” to
`include “edge switch” would not render the claim terms superfluous.
`Patent Owner also attempts to show that an edge switch is not capable
`of performing the recited functions in the second claim element, arguing that
`“an edge switch cannot ‘interconnect end office switches to other geographic
`areas that are not local to an end office switch.’” PO Resp. 31−33; Ex. 2022
`¶¶ 61−65 (emphasis added). However, that argument is not commensurate
`with the scope of the claims. For instance, claim 1 does not require every
`switching facility to perform that function. In fact, that 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. 1001, 12:37−39 (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
`
`6 Exhibits 2002 and 2003 are relied upon by Patent Owner. See, e.g., Ex.
`2022 ¶ 38
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`facilities within local geographic areas. Ex. 1002 ¶¶ 38−42; Ex. 2003, 102;
`Ex. 2002, 159–161.
`In light of the foregoing, Patent Owner’s arguments (PO Resp. 31−36)
`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that claim 1 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’s testimony that the Specification sets forth an unmistakable
`disclaimer that “switching facility” is not an edge switch or edge device. PO
`Resp. 1−3, 9−20, 29−39. There is a presumption that a claim term carries its
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002). To overcome this presumption, the
`patentee must “clearly set forth” and “clearly redefine” a claim term away
`from its ordinary meaning. Bell Atlantic Network Servs., Inc. v. Covad
`Commc’ns Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). The disavowal
`must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber,
`674 F.3d 1315, 1322 (Fed. Cir. 2012).
`The challenged claims do not recite “tandem switch,” but rather
`“switching facility.”7 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. 1008, 391; Ex. 1009;
`Ex. 1002 ¶ 60.
`
`
`7 Only dependent claims 18 and 19 recite “tandem access controller,” and
`that term is discussed infra Section II.F.
`
`
`
`17
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`Patent 8,457,113 B2
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`
`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. 38; PO Resp. 35–36; Ex. 2005, 82, 82 n.1.
`We note that Patent Owner’s arguments and Mr. Bates’ testimony rely
`on the discussions in the Specification regarding both edge switches and
`edge devices (Ex. 1001, 1:37–40, 1:59−67, 2:40−54), to support their
`assertion that Applicants disparage the application of call control features at
`an edge switch. PO Resp. 14−15; Ex. 2022 ¶¶ 46, 47. In any event, the
`Specification clearly states that connecting a controller at a tandem switch,
`rather than an edge switch—to eliminate the problems regarding the
`provision of call features through the local service telephone company
`(telco) business office—is a preferred embodiment. Ex. 1001, 2:1–3 (“A
`preferred embodiment of the inventive system described herein connects at
`the tandem, thereby eliminating these problems.”), 3:28−29 (“In one
`embodiment, the system includes a processor, referred to herein as a tandem
`access controller.”), 3:66–4:1 (“FIG. 1 illustrates the tandem access
`controller (TAC) in one embodiment of the present invention connected to
`the existing PSTN tandem switch.”).
`Additionally, again Patent Owner’s contentions (PO Resp. 10–39)
`depend not only on adoption of its proposed construction for “switching
`facility,” but also its proposed construction for “coupled to” in only the
`
`
`
`18
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`Patent 8,457,113 B2
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`recitation of “coupled to at least one switching facility.” We discuss Patent
`Owner’s contentions regarding “coupled to” infra Section II.E.
`Furthermore, the ’113 Patent Specification describes other
`embodiments. For instance, the Specification explains that in one
`embodiment the web-enhanced services “coexist with and overlay the local
`phone service at the local level.” Id. at 3:41−57. 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. 1001, 1:34−37, 2:37−51. Therefore, if there is a disclaimer,
`such a disclaimer, at most, is limited to those prior art edge devices
`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
`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).
`
`
`
`19
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`Patent 8,457,113 B2
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`
`Here, claim 1 is directed to a web-enabled processing system
`including one or more web servers coupled to a call processing system 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, 3:41−57. 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. LLC, 669 F.3d 1362, 1366 (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 Pat