Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 71
` Entered: December 28, 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.,
`Petitioner,
`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`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”). In support of its Petition,
`Petitioner proffered a Declaration of Dr. Thomas F. La Porta, who has been
`retained as an expert witness for the instant proceeding. Ex. 1002 ¶ 3. Focal
`IP, LLC (“Patent Owner”) filed a Preliminary Response (Paper 11, “Prelim.
`Resp.”) and a Declaration of Mr. Regis J. Bates, who has been retained as an
`expert witness for the instant proceeding (Ex. 2001 ¶¶ 1, 2). Petitioner
`additionally filed a Reply to Patent Owner’s Preliminary Response. Paper
`17 (“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 19
`(“Dec. on Inst.”).
`After institution, Patent Owner filed a Patent Owner Response (Paper
`30, “PO Resp.”), and a Motion to Amend (Paper 31, “Mot.”). In support of
`its Patent Owner Response and its Motion to Amend, Patent Owner
`proffered additional Declarations of Mr. Regis Bates. Ex. 2022 (supporting
`Patent Owner’s Response); Ex. 2040 (supporting Motion to Amend); Ex.
`2070 (supporting Reply to Opposition to Motion to Amend).1 Petitioner
`
`
`1 Patent Owner also submits declaration and deposition testimony from other
`proceedings, including that of declarants of other Petitioners from other inter
`
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`filed a Reply (Paper 34, “Pet. Reply”) and an Opposition to Patent Owner’s
`Motion to Amend (Paper 35, “Oppn.”). In support of its Reply and its
`Opposition to the Motion to Amend, Petitioner proffered additional
`Declarations of Dr. Thomas F. La Porta. Ex. 1065 (supporting Petitioner’s
`Reply); Ex. 1066 (supporting Opposition to Motion to Amend). Patent
`Owner filed a Reply to Petitioner’s Opposition to the Motion to Amend
`(Paper 43, “PO Reply”). Patent Owner filed a Listing of Improper Reply
`Arguments and Evidence, Paper 41 (“PO List”) and Petitioner filed a
`Response, Paper 42 (“Pet. Resp. PO List”). Additionally, each of Petitioner
`and Patent Owner filed a Motion to Exclude. Paper 47 (“PO Mot. to
`Exclude”); Paper 50 (“Pet. Mot. to Exclude”).
`On September 19, 2017, we held an oral hearing and a transcript of
`the hearing has been entered into the record as Paper 68 (“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 65. On October 31, 2017,
`Petitioner filed a supplemental brief in opposition to Patent Owner’s Motion
`to Amend. Paper 67 (“Supp. Br.”).
`
`
`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.
`2 The oral hearings in the following cases were consolidated: Cases
`IPR2016-01259, and IPR2016-01261 through -01263. Paper 53.
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`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 the subject of pending
`lawsuits in the Middle District of Florida, and these lawsuits include
`assertions against Bright House Networks, LLC, WideOpenWest Finance,
`LLC, YMax Corporation, Birch Communications, Inc., and T3
`Communications, Inc. Pet. 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) and two related patents:
`(1) U.S. Patent No. 7,764,777 B2 (Ex. 1006, “the ’777 Patent”), which
`issued from the parent of the ’113 Patent Application; and (2) U.S. Patent
`No. 8,155,298 B2 (Ex. 1007, “the ’298 Patent”), which issued from a
`continuation of a parent of the ’777 Patent Application. Petitioner’s
`Updated Notice, 1, 2.
`
`Instituted Grounds of Unpatentability
`C.
`We instituted on the following grounds of unpatentability (Dec. on
`Inst. 25):
`
`Challenged Claims
`
`Claims 1, 2, 8, 11, 15–19,
`94, 95, 102, 109–13, 128,
`163, 164, 166–168, 175,
`and 179–81
`
`
`
`Basis
`
`§ 103
`
`4
`
`Reference(s)
`
`U.S. Patent No. 6,683,870
`B1 (“Archer,” Ex. 1003)
`and the knowledge of a
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`Challenged Claims
`
`Claims 1, 2, 8, 11, 15–19,
`94, 95, 102, 109–13, 128,
`163, 164, 166–68, 175, and
`179–81
`
`
`
`Basis
`
`Reference(s)
`
`§ 103
`
`person of ordinary skill in
`the art
`Archer and U.S. Patent No.
`5,958,016 (“Chang,” Ex.
`1004)
`
`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
`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 1:34−36. 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).
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`Figure 1 illustrates a tandem access controller connected to an
`existing PSTN tandem switch.
`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,
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`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.
`
`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, 12:30–56.
`
`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
`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 “coupled to,” “switching facility,”
`“tandem switch,” 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 of the term ‘coupled to’ includes both a
`direct and an indirect connection.” Id. at 14.
`
`“coupled to”
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`“switching
`facility”
`
`“[W]e determine that the broadest reasonable
`interpretation of the term is any switch in the circuit-
`switched network.” Id. at 12.
`“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.” Id. at 12.
`“We have considered both examples of the ‘tandem
`access controller’ in the ’113 Patent Specification and,
`based on the record before us, we determine that the
`asserted prior art teaches both of them, including the
`more limited example of a processor that does not
`connect to subscribers directly.” Id. at 23.
`
`“tandem switch”
`
`“tandem access
`controller”
`
`
`
`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. 30–38, 63; see also id. at 10–29 (arguing
`disclaimer reflected in terms “switching facility” and “coupled to.”)
`Petitioner agrees with our determinations. Pet. Reply 3, 18–27. We address
`the parties’ contentions regarding these disputed terms below.
`Claim 94 recites “tandem switches,” rather than “switching facilities,”
`as is recited in claim 1. Compare Ex. 1001, 19:55–20:17 with id. at 12:30–
`56. In the Decision on Institution, we declined to adopt a construction of
`“tandem switch” that prohibits performance of class 5 functions. Dec. on
`Inst. 12. Based on the evidence in the entire trial record, for the reasons
`discussed infra Section III.C.5 in this Decision, we determine that Petitioner
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`has demonstrated sufficiently that the asserted prior art teaches tandem
`switches on the basis that “tandem switch” means a class 4 switch in the
`PSTN (Ex. 1002 ¶¶ 53–55; Ex. 2022 ¶ 36).
`Patent Owner does not provide contentions regarding the broadest
`reasonable interpretation of the terms “tandem switch” and “tandem
`switches,” other than a brief mention in a footnote indicating that a tandem
`switch is “a switch in the PSTN that interconnects other PSTN tandem
`switches.” PO Resp. 34 n.4. Patent Owner’s claim construction contentions
`pertain to a purported “General Disclaimer” that Patent Owner contends
`“applies to all claims,” but discusses with respect to only the terms
`“switching facility” and “coupled to.” Id. at 1–38 (“Practically speaking, the
`disclaimer can be reflected in any or all of the claim terms ‘switching
`facility’ and ‘coupled to.’”); see also id. at 30–38 (providing contentions
`only for the terms “switching facility” and “coupled to). Patent Owner’s
`contentions regarding the purported disclaimer, as well as the construction of
`the terms “switching facility” and “coupled to” are discussed fully infra
`Section II.D. Patent Owner’s contention that a tandem switch is “a switch in
`the PSTN that interconnects other PSTN tandem switches” (PO Resp. 34
`n.4) is circular. Nonetheless, as discussed infra Section II.D, class 4
`switches in the PSTN perform this function.
`Because Petitioner’s showing is sufficient, we determine that no
`further determinations or analyses regarding the construction of “tandem
`switch” are needed for this proceeding. 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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`“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 the claim, i.e., the call
`processing system, may be “connected to an edge switch.” See, e.g., PO
`Resp. 30.
`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. 1010, 68−80.
`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 circuit-switched network.” Dec. on Inst. 12; Pet. 9–10;
`Ex. 1010, 87, 87 n.1 (Applicants defined a “switching facility” as “[a]ny
`point in the switching fabric of converging networks”);
`TELECOMMUNICATIONS: GLOSSARY OF TELECOMMUNICATION TERMS, THE
`FEDERAL STANDARD 1037C, S-35 (1996) (Ex. 3001, 391) (defining
`“switching center” and “switching facility” as synonyms that mean “a
`
`
`3 In this proceeding, the parties agree that the preamble should be given
`patentable weight. Pet. 17−30; Prelim. Resp. 35; PO Resp. 31. For
`purposes of this Decision, we proceed on the assumption that it is.
`
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`facility in which switches are used to interconnect communications circuits
`on a circuit-, message-, or packet-switching basis”); THE NEWTON’S
`TELECOM DICTIONARY, (15th ed. 1999) (Ex. 3002) (defining “switching
`centers” to refer to all five classes of switches in the PSTN)). We rejected
`Patent Owner’s proposed construction because it would improperly import
`limitations into the claim. Dec. on Inst. 7−12.
`In its Response, Patent Owner maintains that “switching facility” is
`not an edge switch or edge device. PO Resp. 1−38. Patent Owner argues
`that the claim expressly distinguishes that a “switching facility” is not an
`“edge switch,” and that construing “switching facility” to include “edge
`switch” would render the claim terms superfluous. Id. at 30−35. In Patent
`Owner’s view, Applicants of the ’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 1−38. 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 1–2, 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, independent claim 94 recites “the call processing
`system coupled to at least one tandem switch,” and dependent claims 18, 19,
`
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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.
`37–38; PO Resp. 34–35.
`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
`¶¶ 53, 54; Ex. 2022 ¶ 36), whereas “switching facility” refers to all five
`classes of switches in the PSTN (Ex. 3002) or “a facility in which switches
`are used to interconnect communications circuits on a circuit-, message-, or
`packet-switching basis” (Ex. 3001, 391).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).
`
`
`112, and 113 recite “tandem access controller.” The parties’ claim
`construction contentions for those terms are discussed supra Section II.C
`and infra Section II.E, respectively.
`5 A “hybrid” switch has combined class 4 and class 5 switching features.
`Ex. 1037, 113, Fig. 4-5; 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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`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
`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”
`
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`would render the claim terms superfluous. PO Resp. 30−35; 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
`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
`¶¶ 53−56. The two terms, “edge switches” and “switching facilities,” are
`not mutually exclusive, but rather “switching facilities” encompasses all five
`classes of switches in the PSTN, including an edge switch. Ex. 3001, 391;
`Ex. 3002; Ex. 2005, 82, 82 n.1.
`Notably, an ordinarily skilled artisan would have recognized that an
`edge switch can route calls to other edge switches directly via a direct trunk
`group or indirectly through a tandem switch, and to other switching facilities
`(e.g., a tandem switch). Ex. 1002 ¶¶ 53−56; Ex. 1037, Figs. 4-3, 4-4. Dr. La
`Porta’s testimony regarding background information on the PSTN (Ex. 1002
`¶¶ 53−56) cites to Exhibit 1037, Figure 4-4, which is reproduced below
`(with highlighting added).
`
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`Annotated Figure 4-4 Illustrating the PSTN Switch
`Hierarchy
`As shown in highlighted Figure 4-4 above, an edge switch (a class 5
`switch) can route calls from and to users within local geographic area
`(highlighted in red). An edge switch also can route calls to a tandem switch
`and other edge switches directly using a direct trunk or indirectly through a
`tandem switch (highlighted in blue). Ex. 1002 ¶¶ 53−55; Ex. 1037, 90−92,
`106−113, 119−122, 137−138, Figs. 4-3, 4-4.
`The aforementioned functional claim elements map to the switches in
`the PSTN. The first claim element takes into account routing calls from and
`to users within a local geographic area. For the second claim element, the
`claim language “switching facilities for routing calls to other edge switches”
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`takes into account routing calls from an edge switch to other edge switches.
`The claim language “switching facility for routing calls . . . to other
`switching 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. 32−33; 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
`facilities within local geographic areas. Ex. 1002 ¶¶ 53−55; Ex. 1037,
`106−113, Figs. 4-3, 4-4.
`In light of the foregoing, Patent Owner’s arguments (PO Resp. 30−35)
`and Mr. Bates’ testimony (Ex. 2022 ¶¶ 61−65) that claim 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.
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`Third, we are not persuaded by Patent Owner’s argument or 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. 1−2, 9−20, 28−38. 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).
`Claim 1 and other of the challenged claims do not recite “tandem
`switch,” but rather “switching facility.”6 Our construction for “switching
`facility” is consistent with its plain and ordinary meaning, encompassing all
`five classes of switches in the PSTN, including edge switches. Ex. 3001,
`391; Ex. 3002; Ex. 1002 ¶¶ 53–55.
`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
`
`6 Independent claim 94 recites “the call processing system coupled to at least
`one tandem switch,” and dependent claims 18, 19, 112, and 113 recite
`“tandem access controller.” The parties’ claim construction contentions for
`those terms are discussed supra Section II.C and infra Section II.E,
`respectively.
`
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`Amendment to indicate that “switching facility” has broader scope than
`“tandem switch.” Prelim. Resp. 37–38; PO Resp. 34–35; 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. 14−16; Ex. 2022 ¶¶ 46–48. In any event, the
`Specification clearly states that connecting a controller at a tandem switch,7
`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. 10–38)
`depend not only on adoption of its proposed construction for “switching
`facility,” but also its proposed construction for “coupled to” in only the
`
`
`7 As discussed previously, Patent Owner refrains from arguing that the
`connection between the call processing system and the tandem is direct such
`that no other hardware is connected between these two components (PO
`Resp. 10–38) and, instead, agrees that such connection doesn’t have to be
`direct (Tr. 56:18–20).
`
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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 c