Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 19
` Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioners,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01261
`Patent 8,457,113 B2
`_____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 19
` Entered: January 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BRIGHT HOUSE NETWORKS, LLC,
`WIDEOPENWEST FINANCE, LLC, KNOLOGY OF FLORIDA, INC.,
`and BIRCH COMMUNICATIONS, INC.,
`Petitioners,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`_____________
`
`Case IPR2016-01261
`Patent 8,457,113 B2
`_____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01261
`Patent 8,457,113 B2
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`I.
`
`INTRODUCTION
`
`Background
`A.
`Bright House Networks, LLC, WideOpenWest Finance, LLC,
`Knology of Florida, Inc., and Birch Communications, Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting that we institute
`inter partes review of claims 1, 2, 8, 11, 15–19, 94, 95, 102, 109–13, 128,
`163, 164, 166–68, 175, and 179–81 (“challenged claims”) of U.S. Patent
`No. 8,457,113 B2 (Ex. 1001, “the ’113 Patent”). Petitioner also proffers a
`Declaration of Dr. Thomas F. La Porta, who has been retained as an expert
`witness for the instant proceeding. Ex. 1002 ¶ 3. Petitioner additionally
`filed a Reply. Paper 17 (“Reply”).
`Focal IP, LLC (“Patent Owner”) filed a Preliminary Response (Paper
`11, “Prelim. Resp.”). Patent Owner also proffers a Declaration of Mr. Regis
`J. Bates, who has been retained as an expert witness for the instant
`proceeding. Ex. 2001 ¶¶ 1, 2.
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” For the reasons given below, on behalf of the
`Director (see 37 C.F.R. § 42.4(a)), we institute an inter partes review of the
`challenged claims of the ’113 Patent.
`
`Related Proceedings
`B.
`The parties state that the ’113 Patent is the subject of pending lawsuits
`in the Middle District of Florida, and these lawsuits include assertions
`against Bright House Networks, LLC, WideOpenWest Finance, LLC, YMax
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`Corporation, Birch Communications, Inc., and T3 Communications, Inc.
`Pet. 4; Paper 7 (Patent Owner’s Mandatory Notices), 2–3; Paper 9
`(Petitioner’s Updated Notice), 1. Additional petitions have been filed
`challenging claims of the ’113 Patent (i.e., IPR2016-01254, IPR2016-01257,
`and IPR2016-01260). Id. Further petitions have been filed challenging
`claims of related patents. Petitioner’s Updated Notice, 1, 2.
`
`Asserted Grounds of Unpatentability
`C.
`Petitioner asserts the following grounds of unpatentability (Pet. 14):
`
`Challenged Claims
`
`Claims 1, 2, 8, 11, 15–19,
`94, 95, 102, 109–13, 128,
`163, 164, 166–168, 175,
`179–81
`
`Claims 1, 2, 8, 11, 15–19,
`94, 95, 102, 109–13, 128,
`168
`
`
`
`Basis
`
`§ 103
`
`§ 103
`
`Reference(s)
`
`U.S. Patent No. 6,683,870
`B1 (“Archer,” Ex. 1003)
`and the knowledge of a
`person of ordinary skill in
`the art
`Archer and U.S. Patent No.
`5,958,016 (“Chang,” Ex.
`1004)
`
`The ’113 Patent
`D.
`The ʼ113 Patent is directed to a system for allowing a subscriber to
`select telephone service features. Ex. 1001, 1:23–26. Figure 1 of the ’113
`Patent is reproduced below.
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`Figure 1illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`Figure 1 illustrates tandem access controller 10 connected to
`conventional Public Switched Telephone Network (PSTN) tandem switch
`16. Id. at 4:43, 44. According to the ’113 Patent, “[d]etails of the operation
`of the existing phone network,” including directing of phone calls by
`“existing” PSTN tandem switch 16 to central offices 17, 18 are further
`described in a publication incorporated by reference, as well as “numerous
`books describing the PSTN.” Id. at 4:43–54.
`The call flow in the network illustrated in Figure 1 with tandem access
`controller 10 remains the same as that in a conventional network, “except
`that additional 3rd-party features are applied to the call.” Id. at 4:43–47.
`More specifically, in the network illustrated in Figure 1, a call from calling
`party 20 to subscriber’s phone 14 is directed to tandem access controller 10,
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`which places a second call, subject to 3rd party control information to
`subscriber 12. Id. at 4:55–58. The second call is placed “to the subscriber’s
`‘private’ phone number,” without terminating the first call. Id. at 4:58–60.
`When subscriber 12 answers the call, tandem access controller 10 connects
`the first call to the second call so as to connect calling party 14 to subscriber
`12. Id. at 4:62–65.
`Figure 1 also shows web server 23 within world wide web 22, which
`is connected to tandem access controller 10. Id. at Fig. 1. Subscriber 12
`specifies 3rd-party call control features via web server 23 and these features
`are then relayed via world wide web 22 to tandem access controller 10. Id.
`at 5:17–25.
`
`Illustrative Claim
`E.
`Challenged claims 1, 94, and 163 are independent claims. Claims 2,
`8, 11, 15–19, 95, 102, 109–13, 128, 164, 166–168, 175, and 179–81 depend,
`directly or indirectly, from claim 1, 94, or 163. 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
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`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, 12:30–59.
`
`CLAIM CONSTRUCTION
`II.
`Legal Standard
`A.
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144‒45 (2016)
`(upholding the use of the broadest reasonable interpretation standard as the
`claim construction standard to be applied in an inter partes review
`proceeding). Consistent with the rule of broadest reasonable interpretation,
`claim terms are generally given their ordinary and customary meaning, as
`would be understood by a person of ordinary skill in the art in the context of
`the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`The Parties’ Contentions
`B.
`Petitioner does not provide contentions proposing a broadest
`reasonable interpretation of any term. Pet. 10. Petitioner, however,
`identifies examples in the ’113 Patent Specification corresponding to
`“tandem access controller” (Pet. 50), which we address in our analysis of
`claim 1. Patent Owner provides contentions regarding the broadest
`reasonable interpretation of “switching facility” and “coupled to.” Prelim.
`Resp. 34–43. Additionally, Patent Owner’s contentions regarding
`“switching facility” refer to the term “tandem switch,” which is recited in
`claim 94. Id. at 39. We address Patent Owner’s contentions below.
`
`“switching facility” and “tandem switch”
`C.
`Patent Owner contends “a ‘switching facility’ (1) is a switch for
`routing calls to edge switches or other ‘switching facilities’ local or in other
`geographic areas; and (2) is not an edge switch or edge device.” Id. at 34–
`35. Patent Owner acknowledges “[a]dmittedly, Applicants used the term
`‘switching facility’ in certain claims instead of ‘tandem switch,’ thereby
`indicating that the term ‘switching facility’ may have some broader scope
`than ‘tandem switch.’” Id. at 37. Patent Owner contends that its proposed
`construction “give[s] meaning to the term ‘switching facility’ as being
`broader than ‘tandem switch.’” Id. at 39.
`We begin with the plain language of the claims. Claim 1 is
`representative with respect to the term “switching facility” and claim 94 is
`representative with respect to the term “tandem switch.” Patent Owner
`points to the preamble of claim 1 and contends that it “recite[s] the
`functionality the ‘switching facility’ and ‘edge switch’ must have, and
`expressly distinguish[es] that a ‘switching facility’ is not an ‘edge switch.’”
`
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`Prelim. Resp. 35. On this record, the parties do not present, nor can we
`discern, a reason why the preambles should not be given patentable weight.
`In fact, the parties agree that the preambles are limiting. See, e.g., Pet. 17–
`30; Prelim. Resp. 35. For purposes of this decision, we proceed on the
`assumption that the preambles of claims 1 and 94 are limiting.
`Starting with claim 1, the preamble recites “the telecommunication
`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” (emphasis added). The “receiving” step of claim 1 recites “the call
`processing system coupled to at least one switching facility” (emphasis
`added). Patent Owner contends that “[t]he preamble states” that “‘switching
`facilities’ are ‘for routing calls to other edge switches or other switching
`facilities local or in other geographic areas.” Prelim. Resp. 35 (emphasis in
`original).
`Patent Owner emphasizes only a subset of the recitation, and omits
`that claim 1 recites that the switching facilities route calls to “other edge
`switches” (emphasis added), as well as “other switching facilities local”
`(emphasis added). Patent Owner does not point us to any recitation
`requiring that every switching facility be the same or make up the same
`structural components. Thus, we disagree with Patent Owner (id.) that the
`language of the claim itself dictates that the plain meaning of every
`“switching facility” recited in the claim be treated the same to mean a switch
`for routing calls to edge switches or other “switching facilities” local or in
`other geographic areas; and (2) is not an edge switch or edge device.
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`Claim 94 is similar to claim 1, except claim 94 recites “tandem
`switches.” In particular, the preamble of claim 94 recites “the circuit-
`switched network comprising edge switches for routing calls from and to
`subscribers within a local geographic area and tandem switches for routing
`calls to other edge switches or other tandem switches local or in other
`geographic areas” (emphasis added). Like claim 1, claim 94 also requires
`coupling to a call processing system and, specifically, recites “the call
`processing system coupled to at least one tandem switch.” The language of
`the claim itself does not dictate that Patent Owner’s disclaimer applies to the
`term “tandem switch.”
`We next turn to the Specification of the ’113 Patent to discern the
`meaning of “switching facility.” Patent Owner provides contentions
`regarding connecting switching facilities and tandem switches. See id. at 24
`(“The specification is replete with commentary emphasizing the importance
`of connecting the controller to a tandem switch.”); see also id. at 25 (“The
`controller described in the ’113 Patent is always shown connected to a
`tandem switch, not an edge switch.”). As Patent Owner acknowledges, the
`term “switching facility” is not found anywhere in the Specification of the
`’113 Patent. Prelim. Resp. 36. The term was added during prosecution. Id.1
`Accordingly, there is not much, if anything intrinsically in the Specification
`of the ’113 Patent that explicitly defines or informs a person of ordinary skill
`in the art at the time of the invention the meaning of “switching facility.”
`Regarding “tandem switch,” Patent Owner’s contentions pertain to the
`term “coupled to” in the recitation “coupled to at least one tandem switch.”
`
`
`1 The ’113 Patent issued from a continuation of application no. 11/948,965
`that is now U.S. Patent No. 7,764,777. Ex. 1001 [60].
`
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`Prelim. Resp. 24–25. Neither party contends that the inventors acted as
`lexicographers or points us to a definition of “tandem switch” indicating an
`uncommon meaning for the term. See In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994) (explaining that an “uncommon definition” must be set
`forth in the specification “so as to give one of ordinary skill in the art notice
`of the change.”); see also Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243, 1249 (Fed. Cir. 1998) (“The patentee’s lexicography must,
`of course, appear ‘with reasonable clarity, deliberateness, and precision’
`before it can affect the claim.”) Indeed, the ’113 Patent Specification refers
`to “conventional PSTN tandem switch 16,” and “well-known, PSTN tandem
`switches.” Ex. 1001, 4:43–45.
`We also consider the prosecution history. Patent Owner contends that
`the prosecution history makes clear that switching facility cannot include an
`edge switch. Prelim. Resp. 34–39. The remarks made during prosecution,
`however, are equivocal, and do not persuade us of a disavowel or disclaimer
`of the term switching facility to exclude an edge switch. For example, the
`portion of the prosecution history that Patent Owner cites includes a footnote
`for the terminology of a switching facility as:
`Any point in the switching fabric of converging networks, also
`referred to in industry as a signal transfer point (STP), signal
`control point (SCP), session border controller (SBC), gateway,
`access tandem, class 4 switch , wire center, toll office, toll
`center, PSTN switching center, intercarrier connection point,
`trunk gateway, hybrid switch, etc.
`
`Ex. 2005, 82, n.1.
`The above description does not explain that a switching facility does
`not include an edge switch. Indeed, “[a]ny point in the switching fabric of
`converging networks” appears broad.
`
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`Regarding the term “tandem switch,” the footnote above immediately
`follows the term “tandem switching facilities” in the Applicants’ remarks.
`Id. The footnote specifically refers to “access tandem” and “hybrid switch.”
`Id.
`
`Patent Owner provides “a general description of the public telephone
`network” that includes a hierarchy of “edge” (class 5) and “tandem” (class
`4) equipment. Prelim. Resp. 2–10. In reliance on the testimony of Mr.
`Bates,2 Patent Owner asserts that the hierarchy of the PSTN included a
`“class 4 level,” which “refers to both a ‘toll center’ and a ‘tandem switch.’”
`Prelim. Resp. 4 (citing Ex. 2001 ¶ 37). Patent Owner further contends that
`“tandem switches serve to interconnect Class 5 offices that contain edge
`switches.” Id. at 5–6 (citing Ex. 2001 ¶ 41).
`Consistent with the footnote in the prosecution history relied upon by
`Patent Owner, a dictionary relied upon by Patent Owner in its general
`description (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. Patent Owner contends
`that devices in the footnote above “are devices typically found ‘interior’ to
`‘edge switches’ (e.g., at a class 4 level or higher).” Prelim. Resp. 38. Patent
`Owner, however, fails to address “access tandem” and “hybrid switch”
`
`
`2 Patent Owner submits Mr. Bates’ Declaration (Ex. 2001) in support of its
`claim construction and disclaimer positions. See 37 C.F.R. § 42.108(c)
`(“The Board’s decision will take into account a patent owner preliminary
`response where such a response is filed, including any testimonial evidence,
`but a genuine issue of material fact created by such testimonial evidence will
`be viewed in the light most favorable to the petitioner solely for the purposes
`of deciding whether to institute an inter partes review.”).
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`specifically identified (Ex. 2005, 82), particularly in light of the dictionary
`definition above.
`We have considered all of the arguments and evidence regarding the
`term “switching facility.”3 At this juncture of the proceeding, we determine
`that the broadest reasonable interpretation of the term is any switch in the
`circuit-switched network.
`Regarding the term “tandem switch,” on this record, we decline to
`adopt a construction that prohibits performance of class 5 functions.
`Additionally, for the reasons discussed below, we determine, based on the
`record before us and at this juncture, Petitioner has shown sufficiently that
`asserted prior art and admitted prior art expressly disclose “tandem”
`switches (see, e.g., Ex. 1001, 1:45–50; Ex. 1004, 8:2–5) and Petitioner
`provides sufficiently persuasive contentions that it would have been obvious
`to connect a tandem switch in the manner claimed. Pet. 20–26, 29–39.
`Accordingly, we determine that no express construction of the term “tandem
`switch” is needed to resolve a controversy in this proceeding.
`
`
`3 We also considered the evidence submitted in IPR2016-01260, including
`the definitions set forth in the Federal Standard 1037C (Ex. 3001) and the
`Newton’s Telecom Dictionary (Ex. 3002). Ex. 3001, S35 (defining
`“switching center” and “switching facility” as synonyms that mean “a
`facility in which switches are used to interconnect communications circuits
`on a circuit-, message-, or packet switching basis”); Ex. 3002 (defining
`“switching centers” to refer to all five classes of switches in the PSTN).
`Patent Owner does not dispute reliance on dictionary definitions, and relies
`on dictionaries as well (see, e,g., Prelim. Resp. 4–5), including a later
`version of one of the dictionaries above, i.e., Newton’s Telecom Dictionary
`(Ex. 2006).
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`“coupled to”
`D.
`Although Patent Owner does not dispute that the plain and ordinary
`meaning of the term “coupled to” does not require a direct connection,
`Patent Owner contends “[a] proper BRI construction of ‘coupled to’ must
`reflect that ‘the call processing system’ cannot be ‘coupled to’ a ‘switching
`facility’ / ‘tandem switch’ through an ‘edge switch.’” Prelim. Resp. 41.
`Patent Owner refers to its contentions regarding disclaimer. Id. (“See
`Section VI.A.”)
`We now turn to Patent Owner’s contentions regarding disavowing
`statements in the ’113 Patent Specification. Prelim. Resp. 20–26. Patent
`Owner contends that “[t]he specification is replete with commentary
`emphasizing the importance of connecting the controller to a tandem
`switch.” Prelim. Resp. 24–25 (citing Ex. 1001, 2:1–3, 3:37–40, 3:19–27,
`3:65–4:3). Patent Owner, however, points to only one sentence that
`mentions a direct connection. Id.
`Patent Owner also contends “[t]he controller described in the ’113
`Patent is always shown connected to a tandem switch, not an edge switch.”
`Prelim. Resp. 24 (citing Ex. 1001, Figs. 1, 2, 7, 8; Ex. 2001 ¶ 56). Contrary
`to Patent Owner’s contention that the controller is always connected to a
`tandem switch, each of Figures 1 and 2, relied upon by Patent Owner, shows
`that tandem access controller 10 is connected to web 22, which connects to
`personal computer 26 and phone 21, respectively, of a subscriber. Ex. 1001,
`Figs. 1, 2. Figures 7 and 8 illustrate systems that allow “cell phones 28” and
`“fax and modem calls” to “obtain the same provisioning options” as shown
`in Figures 1 and 2. Id. at 6:21–29. Furthermore, in addition to the
`provisioning options presented to the user by web 22 (id. at 5:38–42), the
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`’113 Patent Specification describes a subscriber making “an outbound call
`via the web” (id. at 6:21–23), and provides a flow chart showing the call
`flow “via web.” Id. at Fig. 6. Figure 2 illustrates “a system similar to Fig. 1”
`but “also showing how the subscriber may . . . make calls using Voice Over
`IP.” Id. at 4:4–8. Accordingly, on this record, and for the purposes of this
`Decision, we determine the statements in the ’113 Patent Specification do
`not give rise to a disclaimer.
`Patent Owner also provides contentions regarding disavowing
`statements in the prosecution history. Prelim. Resp. 27–33. However, the
`portion of the prosecution history cited by Patent Owner for support (id. at
`32 (citing Ex. 2005, 66)) is ambiguous, at best. The Amendment adds
`“coupled to a switching facility for routing calls to edge switches or other
`switching facilities in local or other geographic areas,” and is silent as to
`whether “coupled to” requires a direct connection between elements. Ex.
`2005, 66. We discuss these contentions further above with respect to the
`broadest reasonable interpretation of the term “switching facilities,” and we
`are not persuaded by these contentions.
`Accordingly, on this record and for the purposes of determining
`whether to institute an inter partes review, we decline to adopt Patent
`Owner’s disclaimer or a construction of “coupled to.” After considering all
`the arguments and evidence, we determine that the broadest reasonable
`interpretation of the term “coupled to” includes both a direct and an indirect
`connection.
`
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`III. ANALYSIS
`Principles of Law
`A.
`The question of obviousness, under 35 U.S.C. § 103(a), is resolved on
`the basis of underlying factual determinations, including: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in the art; and
`(4) objective evidence of nonobviousness, i.e., secondary considerations.
`See Graham v. John Deere Co., 383 U.S. 1, 17‒18 (1966). In that regard, an
`obviousness analysis “can take account of the inferences and creative steps
`that a person of ordinary skill in the art would employ.” See KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007). The level of ordinary skill in the
`art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001).
`
`B. Obviousness over Archer in Combination with Knowledge of a
`Person of Ordinary Skill in the Art or Chang
`Petitioner asserts that the challenged claims are unpatentable, under
`35 U.S.C. § 103, as obvious over Archer in combination with the knowledge
`of a person of ordinary skill in the art or Chang. Pet. 14.
`
`Archer
`1.
`Archer is directed to transmitting simultaneously call notifications to
`communication devices, such as a telephone, pager, and computer. Ex. 1003
`Abstract. Figure 2 of Archer is reproduced below.
`
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`Figure 2 is a communication system.
`As shown in Figure 2 above, telephone 114 is connected to circuit-
`switched network 118. Id. at 4:66–67. Circuit-switched network 118 is
`coupled to converter 126, which converts telephone signals into packets. Id.
`at 5:32–34. The packets are formatted in accordance with IP and routed
`through packet-switched network 130. Id. at 5:41–46. Packet-switched
`network 130 is the Internet. Id. at 6:3–11. Converters 132a and 132b are
`coupled to packet-switched network 130 to convert digital packets into
`signals which can be transmitted across circuit-switched network 136. Id. at
`8:18–21. In the preferred embodiment, converters 126 and 132 are
`interchangeable depending on which device 114, 120, or 134 initiates the
`call and where the call is routed. Id. at 8:23–26.
`Server processor 128 queries database 138 using the number
`generated at telephone 114 to look up the forwarding phone numbers
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`assigned to the user. Id. at 6:33–37. Server processor 128 will then transmit
`the packets simultaneously to each of destinations 132, 134. Id. at 7:3–4.
`
`Chang
`2.
`Chang discloses a system that has a web browser interface for
`allowing subscribers to control call features. Ex. 1004, Abstract, 4:45–58,
`7:9–16. Figure 1 of Chang is reproduced below.
`
`
`
`Figure 1 shows a telephone network.
`Figure 1 of Chang illustrates a telephone network that includes one or
`more tandem switching offices (11T) that provide connections between end
`offices and/or between other tandem offices. Id. at 8:2–5. Secure access
`platform 25 allows the subscribers to control their call features using a Web
`browser through the Internet, and provides user control selections to the
`tandem switches (11T) through Service Control Point (SCP) 19 and
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`Signaling Transfer Point (STP) 15 using Signaling System 7 (SS7)
`signaling. Id. at Abstract, 8:48–9:7, 11:9–12:17, 12:64–13:27.
`
`Claims 1, 2, 8, 11, 15–19, 94, 95, 102, 109–13, 128, 163,
`3.
`164, 166–68, 175, and 179–81
`We turn to the element-by-element analysis in the Petition with
`respect to particular elements of claim 1 of the ’113 Patent (Pet. 17–40), as
`well as the Patent Owner’s contentions regarding Petitioner’s analysis
`(Prelim. Resp. 47–63).
`We start with Petitioner’s contentions regarding “a web-enabled
`processing system including one or more web servers coupled to a call
`processing system,” recited in claim 1. Petitioner points to Archer’s server
`processor and database as corresponding to the web processing system. See,
`e.g., Pet. 18–20 (citing Ex. 1003, 4:17–4:42, 6:1–9, 6:30–32, 6:47–7:28,
`7:44–7:60, 8:8–10, 8:43–9:9, Figs. 2, 4, 5; Ex. 1002 ¶¶ 100–01, 110–15).
`Relying on the testimony of Dr. La Porta, Petitioner additionally presents
`alternative grounds that a web server of a web-enabled processing system is
`obvious based on the knowledge of one of ordinary skill in the art or Chang.
`Id. at 20–26 (citing e.g., Ex. 1002 ¶¶ 116–30). Petitioner also contends
`Archer’s server processor and database system are coupled directly to
`gateways/converters (126/132), and indirectly to tandem switches and SCP
`switching facilities of the PSTN through packet-switched network and the
`converters/gateways. Id. at 26–28 (citing Ex. 1003, 5:23–67, 6:31–56, 8:18–
`34, 8:43–9:61, 10:56–11:43, Figs. 2, 4; Ex. 1002 ¶¶ 132–41).
`Patent Owner disputes this limitation on the basis that Archer’s
`“arrangement has been disclaimed (see Section V) and thus is not within the
`scope of any of the claims of the ’113 Patent.” Prelim. Resp. 50. For the
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`reasons given above discussed in connection with claim construction, we
`decline to adopt Patent Owner’s construction or disclaimer for the purposes
`of this Decision.
`Patent Owner also contends that Petitioner’s reliance on Chang’s
`secure access platform 25 is unsubstantiated because Chang’s secure access
`platform 25 does not receive call data and process the call across both the
`packet network and the second network to complete the call to the called
`party. Prelim. Resp. 59–60. Patent Owner’s contentions are based on
`Chang’s description of an embodiment that employs standardized SS7
`signaling (id.), which is the same method described in an embodiment of the
`’113 Patent Specification (Ex. 1001, 7:60–65). Patent Owner’s contentions
`are based on its narrow interpretation of “coupled to” (Prelim. Resp. 58–60),
`which, on this record and at this juncture, we decline to adopt for the reasons
`given above.
`Claim 1 also recites “the telecommunications network comprising
`edge switches . . . and switching facilities for routing calls to other edge
`switches or other switching facilities.” Petitioner contends the PSTN
`included tandem switches and edge switches, and provides supporting
`evidence, including Chang and the testimony of Dr. La Porta. Pet. 28–29
`(citing e.g., Ex. 1001, 1:45–50; Ex. 1004, Fig. 1, 7:43–8:24, 18:66–19:12;
`Ex. 1037, 64–69, 11–92, 106–13, 139–45; Ex. 1010, 87; Ex. 1002 ¶¶ 136–
`39). Consistent with Petitioner’s contentions (id.), Archer teaches “public
`switched telephone network (PSTN) is the preferred circuit-switched
`communication network 118” (Ex. 1003, 5:23–24) and illustrates PSTN 136
`in Figure 6 (id. at Fig. 6). The ’113 Patent Specification acknowledges that
`the prior art “Public Switched Telephone Network (PSTN) consists of a
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`plurality of edge switches connected to telephones on one side and to a
`network of tandem switches on the other.” Ex. 1001, 1:45–47; Cf. Ex.
`2001 ¶¶ 37–41 (illustrating hierarchical arrangement of PSTN equipment
`including “Tandem Switch” and “Class 5,” which “contain edge switches.”)
`Patent Owner does not dispute these contentions.
`Claim 1 additionally recites “the call processing system coupled to at
`least one switching facility of the telecommunications network.” Petitioner
`contends that Archer teaches a server processor receiving calls from and
`placing calls through converters 126/132 and, therefore, it would have been
`obvious to a person of ordinary skill in the art to couple Archer’s web-
`enabled processing system to a switching facility in the PSTN. Pet. 33–36.
`Petitioner also contends it would have been obvious to a person of ordinary
`skill in the art to combine Archer’s web-enabled processing and call
`processing system with Chang’s switching facility. Id. at 36–39. On this
`record, Petitioner’s contentions are consistent with the evidence cited
`therein.
`Patent Owner’s contentions for this limitation are premised on its
`proposed narrow interpretation of “switching facility” and “coupled to.”
`Prelim. Resp. 52–58. At this juncture of the proceeding, and for reasons
`provided above, we decline to adopt Patent Owner’s proposed
`interpretations and disclaimer.
`With respect to the remaining recitations in claim 1 and reasons to
`combine Archer, Chang, and other of Petitioner’s evidence (e.g., Ex. 1001,
`1:45–50), on this record, we are persuaded by Petitioner’s contentions and
`evidence (Pet. 30–40). At this juncture, Patent Owner does not further
`dispute these contentions, except Patent Owner contends that Petitioner did
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`not articulate a reason as to why a person of ordinary skill in the art would
`combine the teachings of Archer and Chang (Prelim. Resp. 61). Patent
`Owner, more specifically, contends that a person of ordinary skill in the art
`would not have combined the teachings of Archer and Chang because
`“Chang’s web server” and “the call processing system of Archer” have
`“vastly different functionality.” Id. at 62. On this record, we disagree, and
`are instead persuaded that Petitioner has shown sufficiently, for ex
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