Trials@uspto.gov
`571-272-7822
`
` Paper No. 12
` Entered: May 13, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METASWITCH NETWORKS LTD. and
`METASWITCH NETWORKS CORPORATION,
`Petitioner,
`
`v.
`
`SONUS NETWORKS, INC.
`(d/b/a RIBBON COMMUNICATIONS OPERATING COMPANY),
`Patent Owner.
`____________
`
`Case IPR2019-00051
`Patent 6,775,269 B1
`____________
`
`
`
`Before GEORGIANNA W. BRADEN, DANIEL N. FISHMAN, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`I. INTRODUCTION
`
`Metaswitch Networks Ltd. and Metaswitch Networks Corporation
`
`(collectively, “Petitioner”) requests inter partes review of claims 1–18
`
`and 33–41 (the “challenged claims”) of U.S. Patent No. 6,775,269 B1 (“the
`
`’269 patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 2
`
`(“Petition” or “Pet.”). Sonus Networks, Inc. (d/b/a Ribbon Communications
`
`Operating Company) (“Patent Owner”) filed a Preliminary Response.
`
`Paper 8 (“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . 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.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Patent Owner’s Preliminary
`
`Response, we conclude the information presented shows there is a
`
`reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability of at least one challenged claim of the ’269 patent.
`
`Therefore, we institute review of all challenged claims and all asserted
`
`grounds.
`
`A. Real Parties-In-Interest and Related Matters
`
`Petitioner identifies DC Holdco SARL and Data Connection Second
`
`Employee Benefit Trust as additional real parties-in-interest. Pet. 77. Patent
`
`Owner avers that Sonus Networks, Inc., is wholly owned by Ribbon
`
`Communications Inc. and, thus, Ribbon Communications Inc. is an
`
`additional real party-in-interest. Paper 3, 1. Petitioner informs us that
`
`the ’269 patent is presently asserted against Petitioner in the litigation Sonus
`
`Networks, Inc. d/b/a Ribbon Communications Operating Company v.
`
`2
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`Metaswitch Networks Ltd. et al., Case No. 2:18-cv-000581 (E.D. TX).
`
`Pet. 77. Patent Owner indicates the ’269 patent is at issue in the litigation
`
`Sonus Networks, Inc. d/b/a Ribbon Communications Operating Company v.
`
`Metaswitch Networks Ltd. et al., Case No. 2:18-cv-00057 (E.D. TX) and in
`
`inter partes review Case IPR2019-00052. Paper 3, 1.
`
`B. The ’269 Patent
`
`The ’269 patent is directed generally to methods and systems for
`
`routing telephone calls between a public switched telephone network
`
`(“PSTN”) and an Internet protocol (“IP”) network. Ex. 1001, 1:14–16.
`
`According to the ’269 patent, switching telephone calls between a PSTN and
`
`an IP network traditionally involved complicated signaling gateways to
`
`convert signals between the two types of networks. Id. at 2:12–18. The
`
`’269 patent indicates that one problem with such conversion in gateways is
`
`that the conversion algorithms are complex and are, thus, cumbersome to
`
`modify for a particular customer or group of customers. Id. at 2:26–30.
`
`The ’269 patent purports to address this problem by providing table
`
`data structures used to determine routing for a call such that easily
`
`modifiable tables replace prior complex algorithms that were difficult to
`
`modify. See, e.g., id. at 3:16–28. Figure 1 of the ’269 patent is reproduced
`
`below.
`
`
`
`1 Our check of public records suggests that the ’269 patent is not at issue in
`Case 2:18-cv-00058 but is at issue between these parties in Case 2:18-cv-
`00057.
`
`3
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`
`
`Figure 1 above depicts communication network 10 including PSTN
`
`network 12 and IP network 14 coupled by call routing and signaling system
`
`16 (“Intelligent IP” or “INIP”) and media gateway 18. Id. at 4:59–65. INIP
`
`16 communicates with PSTN network 12 using Signaling System 7 (“SS7”)
`
`signaling protocols via path 20 and communicates with IP network 14 using
`
`Session Internet Protocol (“SIP”) via path 22. See id. at 5:52–64.
`
`Specifically, according to the ’269 patent,
`
`Communication network 10 operates as follows: A
`service request, or call, originates at public switched telephone
`network 12. Signaling associated with the call, which in this
`embodiment is according to the SS7 protocol, travels to signaling
`gateway 16, as denoted by reference numeral 20. Call routing
`and signaling system 16 receives the SS7 signaling, converts the
`signaling into an internal format, processes the calls, and
`generates SIP signaling, as denoted by reference 22, for
`transmission to IP network 14. The content of the call travels
`over public switched telephone lines 24 through media gateway
`18 and over line 26, now according to Internet protocol for
`termination within Internal Protocol network 14.
` Calls
`originating from Internet Protocol network 14 are handled in a
`converse matter.
`
`Id. Figures 2A and 2B of the ’269 patent are reproduced below.
`
`4
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`Figures 2A and 2B depict an embodiment of INIP 16 including database 40
`
`used by INIP 16 to process and route calls between two networks using
`
`different signaling protocols. See id. at 5:65–6:47. Specifically,
`
`
`
`FIG. 2A is a block diagram of call routing and signaling
`system 16, which comprises a plurality of hardware and software
`forming various functional units. Call routing and signaling
`system 16 includes a resource manager 28, a signaling agent 30,
`a media gateway agent 32, a call control engine 34, a
`router/intelligence engine 36, and OAM & P GUI 38.
`
`5
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`Id. at 5:65–6:4. Figure 2B shows exemplary database 40 comprising a
`
`number of tables 44–62 used in processing a call originated in a first
`
`network and terminated in a second network. Id. at 6:34–40.
`
`Figure 4B is reproduced below.
`
`
`
`
`
`Figure 4B above shows “steps associated with the call control engine of
`
`Figure 2A processing a service request, or call from the public switched
`
`telephone network to the Internet Protocol network.” Id. at 3:57–60.
`
`Specifically, the disclosed steps use tables 42, 44, and 46 of database 40 in
`
`processing the call originating at PSTN 12 terminating in IP network 14.
`
`See id. at 9:17–10:27.
`
`C. Illustrative Claim
`
`Independent method claim 1, reproduced below, is illustrative of the
`
`challenged claims:
`
`1. A method for routing a telephone call originating at a
`first network that utilizes a first signaling protocol to a
`
`6
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`termination in a second network that uses a second signaling
`protocol comprising:
`
`receiving a service request associated with a calling party
`from the first network;
`
`translating the service request;
`
`determining a route for processing the service request over
`the second network;
`
`generating signaling specifying the determined route; and
`
`wherein determining the route for processing the request
`over the second network comprises:
`
`determining an address for the calling party;
`
`accessing a table associated with the address, the
`table comprising a plurality of pointers to a plurality of
`additional tables;
`
`accessing at least one of the additional tables
`specified by at least one of the pointers; and
`
`in response to accessing the at least one of the
`additional tables, determining the route for processing the
`request based on the at least one of the additional tables.
`
`Id. at 20:52–21:6.
`
`
`
`
`
`7
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`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`D. Asserted Grounds of Unpatentability and Evidence of Record
`
`Petitioner asserts the challenged claims are unpatentable based on the
`
`following grounds (Pet. 2):
`
`Reference(s)
`
`Christie2
`
`Christie and Hogan3
`Christie and Dalgic4
`Christie and Lakshmi5
`Howell6
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claim(s) challenged
`
`1, 2, 5, 7, 9–11, 14–18,
`33–36, 39, 41
`3, 4, 8, 13, 17, 37, 38
`6, 40
`12
`33, 34
`
`Petitioner relies on the testimony of Vishal Sharma, Ph.D. (“Dr. Sharma,”
`
`Ex. 1003) in support of its assertions.
`
`II. DISCUSSION
`
`A. Claim Construction
`
`As an initial step in our analysis for determining whether to institute a
`
`review, we determine the meaning of the claims for purposes of this
`
`decision. In an inter partes review for a petition filed before November 13,
`
`2018, our rules provide that:
`
`A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable
`construction in light of the specification of the patent in which it
`
`
`2 U.S. Patent No. 6,002,689 (“Christie,” Ex. 1004).
`3 U.S. Patent No. 5,586,175 (“Hogan,” Ex. 1005).
`4 Ismail Dalgic et al., TRUE NUMBER PORTABILITY AND ADVANCED CALL
`SCREENING IN A SIP-BASED IP TELEPHONY SYSTEM, 1999 (“Dalgic,”
`Ex. 1006).
`5 Ramanth A. Lakshmi-Ratan, THE LUCENT TECHNOLOGIES SOFTSWITCH—
`REALIZING THE PROMISE OF CONVERGENCE, 1999 (“Lakshmi,” Ex. 1008).
`6 U.S. Patent No. 6,888,833 B1 (“Howell,” Ex. 1016).
`
`8
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`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`appears. A party may request a district court-type claim
`construction approach to be applied if a party certifies that the
`involved patent will expire within 18 months from the entry of
`the Notice of Filing Date Accorded to Petition. The request,
`accompanied by a party’s certification, must be made in the form
`of a motion under § 42.20, within 30 days from the filing of the
`petition.
`
`37 C.F.R. § 42.100(b) (2017).7 When applying “district court-type” claim
`
`construction, we adhere to the principles set forth in Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) (the “Phillips standard”).
`
`See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed.
`
`Cir. 2017) (under the Phillips standard, “words of a claim are generally
`
`given their ordinary and customary meaning”). Under the principles of
`
`Phillips, “[i]n determining the meaning of the disputed claim limitation, we
`
`look principally to the intrinsic evidence of record, examining the claim
`
`language itself, the written description, and the prosecution history, if in
`
`evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d
`
`1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).
`
`The Petition does not indicate whether it is applying the BRI standard
`
`or the Phillips standard. Pet. 6 (“[A]ll terms should be given their plain
`
`meaning, per BRI or Phillips.”). Without specifying which standard of
`
`claim construction is being applied, Petitioner proposes constructions for a
`
`few terms that we discuss below. Pet. 6–7.
`
`
`
`7 A different rule applies for petitions filed on or after November 13,
`2018. Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
`Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b)).
`
`9
`
`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`Patent Owner argues the Phillips standard should be applied because
`
`the ’269 patent will expire “in March 2020.” Prelim. Resp. 12–13.8 Patent
`
`Owner argues that Petitioner’s failure to specifically identify which claim
`
`construction standard should apply is a violation of our rule and, therefore, a
`
`reason we should deny institution. Prelim. Resp. 15 (citing 37 C.F.R.
`
`§ 42.104(b)(3)). We disagree. Petitioner has proposed construction of a few
`
`terms, as discussed below, and has, in essence, indicated that its proposed
`
`constructions would be the same under either claim construction standard.
`
`Thus, Petitioner has, for purposes of this Decision, complied with our rule
`
`by adequately construing claim terms it contends are necessary to determine
`
`whether to institute review for its challenges.
`
`In a conference call on April 15, 2019, with Judges Fishman and
`
`Hamann and counsel for the parties, Patent Owner requested authorization to
`
`file a motion under 37 C.F.R. § 42.100(c) (the earlier rule in effect at the
`
`time of filing of the Petition) requesting Phillips standard claim construction
`
`be applied in this Decision on Institution. See Ex. 2004, 5:19–7:12. In the
`
`conference call, Petitioner opposed authorization to file the motion because
`
`there is a possibility that the ’269 patent may not expire during this
`
`proceeding (id. at 9:16–10:13), and because Patent Owner’s proposed
`
`motion, required to be filed no more than 30 days after “the filing of the
`
`petition,” was not timely under our rules effective at that time (id. at 10:14–
`
`24).
`
`
`
`8 Patent Owner notes certain terms are at issue in the related litigation and,
`subsequent to filing of its Preliminary Response, filed in this record copies
`of the parties’ respective briefings in that litigation regarding claim
`construction as well as a transcript of a claim construction (“Markman”)
`hearing in that litigation. Prelim. Resp. 13; see Exs. 2002–2008.
`
`10
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`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`In the conference call, we noted that the ’269 patent, filed March 29,
`
`2000, with no patent term adjustment allowed, would expire no later than
`
`March 29, 2020—several weeks before the probable date for issuance of any
`
`final written decision.9 Id. at 12:14–14:19. Furthermore, we noted that the
`
`Petition, in essence, asserts there would be no difference in the outcome of
`
`this case regardless of which claim construction standard is applied. Id. at
`
`14:18–15:7. For the above reasons, in the conference call, we ordered that
`
`the Phillips standard for claim construction should be applied in this case
`
`because it is likely the ’269 patent will expire before we would issue a final
`
`written decision. Id. at 16:23–18:18.
`
`Regardless of the claim construction standard applied, “a claim
`
`construction analysis must begin and remain centered on the claim language
`
`itself . . . .” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`
`381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though understanding the claim
`
`language may be aided by the explanations contained in the written
`
`description, it is important not to import into a claim limitations that are not
`
`a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
`
`870, 875 (Fed. Cir. 2004). Furthermore, “we need only construe terms ‘that
`
`
`
`9 We note that the ’269 patent appears to claim priority under 35 U.S.C.
`§ 120 to a provisional patent application having a filing date of March 30,
`1999. Ex. 1001, 1:7–10; Ex. 1002, 55, 167–68. The ’269 patent also claims
`priority under 35 U.S.C. § 119 to the same provisional patent application.
`Ex. 1002, 182. We need not address which, if any, of these priority claims is
`valid and would establish an earlier expiration date. At the latest, the ’269
`patent will expire in March of 2020—weeks before any final written
`decision is likely to issue. To clarify the situation, at our request, Patent
`Owner filed a certification that the ’269 patent would expire on March 29,
`2020. Paper 10.
`
`11
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`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`are in controversy, and only to the extent necessary to resolve the
`
`controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`Other than the terms discussed below, we discern no reason on this
`
`preliminary record and for this decision to expressly construe any other
`
`claim terms.
`
`1. “Address” Related Limitations
`
`All challenged claims refer to the “address for” a calling and/or called
`
`party of a service request (i.e., the parties in a telephone call). Petitioner
`
`argues the address encompasses the number or telephone digits of the calling
`
`or called party in a telephone call. Pet. 6 (citing Ex. 1001, 7:42–45, 10:48–
`
`54, 17:1–4, Table 4). Patent Owner does not offer any alternative
`
`construction or oppose Petitioner’s proposed construction. Prelim. Resp. 15.
`
`For purposes of this decision, we find Petitioner’s construction
`
`reasonable, in accord with the Specification, and in accord with the plain
`
`meaning of the term in the context of telephony technology. The cited
`
`portions of the ’269 patent Specification indicate that an address “may be
`
`alphanumeric, may be in URL or e-mail format, or may be digits in E.164 or
`
`NPA-NXX-XX format.” Ex. 1001, 7:42–45, 10:48–54, 17:1–4; Ex. 1003
`
`¶ 24. The claims of the ’269 patent do not limit the scope of address other
`
`than that an address is a value that is “determined” and is used to access an
`
`associated table. See, e.g., Ex. 1001, 20:64–67. Dr. Sharma testifies that
`
`Petitioner’s proposed construction is consistent with the plain meaning of
`
`the term address as including a telephone number. Ex. 1003 ¶ 24. Patent
`
`Owner does not identify any passage in the prosecution history of record that
`
`12
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`

`

`IPR2019-00051
`Patent 6,775,269 B1
`
`refutes the Petitioner’s proposed interpretation or expressly defines address
`
`in the context of the ’269 patent.
`
`Therefore, for purposes of this decision, we construe an address in
`
`limitations of the challenged claims as encompassing the calling/called
`
`number or telephone digits of the calling party/called party.
`
`2. “Assessing” Related Limitations
`
`Independent claims of the challenged claims refer to a step or process
`
`of accessing a table and several dependent claims then refer to the step or
`
`process of assessing a table. Petitioner correctly notes that there is no proper
`
`antecedent basis for assessing a table and argues the term should be
`
`interpreted as accessing. Pet. 6–7. Patent Owner does not offer any
`
`alternative construction for assessing or oppose Petitioner’s proposed
`
`construction that understands assessing in various dependent claims to mean
`
`accessing. Prelim. Resp. 15.
`
`We agree with Petitioner and interpret the term assessing in various
`
`claims is merely a typographic error that was intended to recite accessing. A
`
`district court may “correct an error in a patent by interpretation of the patent
`
`where no certificate of correction has been issued . . . only if (1) the
`
`correction is not subject to reasonable debate based on consideration of the
`
`claim language and the specification and (2) the prosecution history does not
`
`suggest a different interpretation of the claims.” Novo Indus., LP v. Micro
`
`Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); see also CBT Flint
`
`Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011)
`
`(holding obvious errors in a claim may be corrected in construing the claim).
`
`We have applied this same standard in our proceedings. E.g., Research
`
`Prods. Corp. v. Honeywell Int’l Inc., Case IPR2018-00976, slip op. at 13
`
`13
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`

`IPR2019-00051
`Patent 6,775,269 B1
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`(PTAB Nov. 7, 2018) (Paper 6) (applying Novo Industries and holding “one
`
`of more programmable characters” was obvious error; corrected to “one or
`
`more programmable characters”); Apple Inc. v. Achates Reference Publ’g,
`
`Inc., Case IPR2013-00080, slip op. at 10–12 (PTAB June 3, 2013) (Paper
`
`22) (applying Novo Industries and holding “authorization code” was
`
`correctable to “authentication code”). But “courts may not redraft claims,
`
`whether to make them operable or to sustain their validity.” Chef Am., Inc.
`
`v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004). The burden is
`
`on Petitioner to show that a claim contains the kind of error that is
`
`considered a drafting error. 37 C.F.R. § 42.20(c).
`
`Thus, as suggested by Petitioner, at this stage of the proceeding, we
`
`interpret assessing in the dependent claims to be the same as accessing.
`
`3. Claim Construction in Related Litigation
`
`Patent Owner notes that, in the related litigation, Petitioner proposed
`
`an interpretation of the phrase “in response to accessing the at least one of
`
`the tables” and of the phrase “table associated with” in various of the
`
`challenged claims. Prelim. Resp. 14–15 (citing Ex. 2003, 3–9). Petitioner
`
`does not expressly construe these phrases in its Petition but identifies related
`
`disclosures in the references. See Pet. 21–22, 73–74. Patent Owner does not
`
`indicate agreement or disagreement with any claim term interpretations
`
`proposed by Petitioner in the related litigation and “does not propose
`
`competing constructions for the terms construed by Petitioner.” Prelim.
`
`Resp. 15.
`
`We discern no need to expressly construe these phrases for purposes
`
`of this decision.
`
`14
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`IPR2019-00051
`Patent 6,775,269 B1
`
`B.
`
`Obviousness Challenges
`
`1.
`
`Obviousness General Principles
`
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`
`differences between the claimed subject matter and the prior art are “such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved based on 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 skill in the art; and (4) objective evidence of nonobviousness, i.e.,
`
`secondary considerations.10 Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966).
`
`“A reference must be considered for everything it teaches by way of
`
`technology and is not limited to the particular invention it is describing and
`
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`
`907 (Fed. Cir. 1985). Additionally, “the question under 35 USC § 103 is not
`
`merely what the references expressly teach but what they would have
`
`suggested to one of ordinary skill in the art at the time the invention was
`
`made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed.
`
`Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
`
`“Every patent application and reference relies to some extent upon
`
`knowledge of persons skilled in the art to complement that [which is]
`
`
`
`10 Neither party presents arguments or evidence of such secondary
`considerations in its respective papers. Therefore, at this stage, secondary
`considerations do not constitute part of our analysis.
`
`15
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`IPR2019-00051
`Patent 6,775,269 B1
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`disclosed . . . .” In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
`
`Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons “must be
`
`presumed to know something” about the art “apart from what the references
`
`disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
`
`2.
`
`Level of Ordinary Skill in the Art
`
`Petitioner argues a person of ordinary skill in the art would have a
`
`Bachelor’s degree or a Master’s degree in “computer science, computer
`
`engineering, electrical engineering, or the industry equivalent thereof, would
`
`have an understanding of software and three to five years’ experience with
`
`telecommunications systems, including circuit-switched and packet-
`
`switched networks, or equivalent qualifications through some combination
`
`of education, training, and experience.” Pet. 3 (citing Ex. 1003 ¶¶ 18–19).
`
`Patent Owner notes Petitioner’s argument but “does not take a position on
`
`the appropriate level of skill in this Preliminary Response.” Prelim.
`
`Resp. 10 n.1.
`
`Based on our review of the ’269 patent, the types of problems and
`
`solutions described in the ’269 patent and cited prior art, and the testimony
`
`of Dr. Sharma, on this record and for purposes of this decision, we adopt
`
`Petitioner’s definition of the level of ordinary skill in the art and determine
`
`that a person of ordinary skill in the art at the time of the invention of the
`
`’269 patent would have had a Bachelor’s degree or a Master’s degree in
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`computer science, computer engineering, electrical engineering, or the
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`industry equivalent thereof, would have an understanding of software and
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`three to five years’ experience with telecommunications systems, including
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`circuit-switched and packet-switched networks, or equivalent qualifications
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`through some combination of education, training, and experience.
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`C. Alleged Obviousness Over Christie (Ground 1A)
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`Petitioner argues claims 1, 2, 5, 7, 9–11, 14–18, 33–36, 39, and 41 are
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`unpatentable under 35 U.S.C. § 103(a) as obvious over Christie. Pet. 7–43.
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`1. Overview of Christie (Ex. 1004)
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`Christie is directed to “[a] system to interworking a call between a
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`plurality of networks having different formats.” Ex. 1004, [57]. Figure 1 of
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`Christie is reproduced below.
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`Figure 1 of Christie, above, shows local services architecture (“LSA”) 102
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`comprising local network 104 and asynchronous transfer mode (“ATM”)
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`network 106, coupled to one another via interface system 110 and
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`application 108. Id. at 9:41–44.
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`The interface system 110 is linked to the local network 104 by a
`link 112, to the ATM network 106 by a link 114, and to the
`application 108 by a link 116. The interface system 110 is
`connected to the local network 104 by a connection 118, to the
`ATM network 106 by a connection 120, and to the application
`108 by a connection 122.
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`Id. at 9:44–50. Links 112 and 114 are used to transport call signaling and
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`control messages using, for example, out-of-band signaling on each of
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`networks 104 and 106. Id. at 9:51–59. Connections 118, 120, and 122 are
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`used to transport user communications among the various components of
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`LSA 102. Id. at 10:1–10. Local network 104 and ATM network 106 each
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`have one or more communication device that can originate or terminate a
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`call. Id. at 10:11–20. Application 108 “processes calls or converts
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`transmission protocols so that calls can be transferred to another local
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`network, to another ATM network, or to an interexchange network.” Id.
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`at 10:21–24.
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`Interface system 110 interworks calls between networks 104 and 106
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`by converting signaling protocols from one network into signaling protocols
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`suitable for a second network. Id. at 10:32–46. Interface system 110
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`controls, inter alia, call routing through the networks. Id. at 10:57–62.
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`Interface system 110 may include signaling processor 202. Id. at 11:17–18.
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`The signaling processor 202 is a signaling platform that
`can receive and process signaling. Based on the processed
`signaling, the signaling processor 202 selects processing options
`for the user communications and generates and transmits control
`messages that identify the communication device, processing
`option, service, or resource that is to be used. The signaling
`processor 202 also selects virtual connections and circuit-based
`connections for call routing and generates and transports control
`messages that identify the selected connection. The signaling
`processor 202 can process various forms of signaling, including
`ISDN, SS7, and C7.
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`Id. at 11:24–33. Signaling processor 202 determines routing and processing
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`requirements for a call and determines whether application processor 108
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`needs to further process the call. Id. at 12:6–13.
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`An application processor (i.e., Application processor 708 of Figure 7)
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`“operates in general accord with the Basic Call Model” (“BCM”) to process
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`a call. Id. at 25:55–56. In operation, such an application processor uses a
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`data structure comprising a series of tables that point to one another. Id.
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`at 27:10–13. Figure 8 is reproduced below.
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`
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`Figure 8 shows a data structure used by application processor 708 to process
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`a call in accordance with the BCM. Id. The data structure comprises a
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`series of tables that point to one another through “next function” and “next
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`index” pointers where the next function pointer points to a next table to be
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`accessed in call processing and the next index pointer points to an entry or
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`range of entries in the identified next table to be accessed in processing the
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`call. Id. at 27:11–16. As an example, ANI table 808 points to called number
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`table 810 that, in turn, points to routing table 812. Id. at 27:42–52. Routing
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`table 812 “has information relating to the routing of the call for the various
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`connections” on which user communications are to be transported. Id. at
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`27:53–54.
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`2. Independent Claims 1 and 33–35
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`Petitioner argues Christie discloses all elements of independent
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`method claims 1 and 35. Pet. 13–22. Similarly, Petitioner argues Christie
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`discloses all elements of independent system claims 33 and 34. Pet. 34–43.
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`Patent Owner disputes Petitioner’s allegations as discussed below.
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`a. “The Determined Route”
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`In particular, regarding claim 1, Petitioner argues Christie discloses
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`the method step of “determining a route for processing the service request”
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`(steps 1.c and 35.c) because “Christie describes that the signaling processor
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`‘receives and processes telecommunications call signaling and control
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`messages to select connections that establish communication paths for calls’
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`and it ‘can control routing and select the actual connections.’” Pet. 16–17
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`(citing Ex. 1004, 24:30–33, 41–47; Ex. 1003 ¶ 46). More precisely,
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`Petitioner argues Christie discloses migrating through a “series of tables that
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`point to one another” to select a terminating connection for a requested call.
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`Pet. 17 (citing Ex. 1004, 27:10–19, 20:35–50, 16:66–17:16, 24:30–31:20
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`27:10–19). Regarding the subsequent step of “generating signaling
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`specifying the determined route” (steps 1.d and 35.d), Petitioner argues
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`Christie discloses this step in that its signaling processor generates control
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`messages that identify the device, options, service, or resource to be used for
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`a requested call. Pet. 17 (citing Ex. 1004, 11:24–35, 10:57–62, 25:48–52,
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`Fig. 2; Ex. 1003 ¶ 47).
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`Patent Owner argues steps 1.d and 35.d require generating signals
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`specifying the determined route—i.e., the route determined by the prior step
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`1.c and 35.c that provides the antecedent basis for “the determined route.”
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`Prelim. Resp. 17. Patent Owner further argues “Petitioner discusses
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`Christie’s ‘control messages’ but offers no explanation of how those ‘control
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`messages’ are signals specifying the route in Christie that it relies on for
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`elements 1[c] and 35[c].” Id.
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`On this record and for this decision, we find Petitioner’s argument
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`more persuasive. Christie discloses determining a route, as in steps 1.c and
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`35.c, by its application processor 708 migrating through a series of linked
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`tables to thereby determine a “terminating connection.” See Ex. 1004,
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`27:10–19, 27:66–28:2; see also Pet. 16–17 (citing Ex. 1004, 24:30–33, 41–
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`47, 27:10–19, 20:35–50, 16:66–17:16, 24:30–31:20, 27:10–19). Christie
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`further discloses signaling processor 202 generates control messages “that
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`identify the communication device, processing option, service, or resource
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`that is to be used.” Ex. 1004, 11:27–30. Christie further discloses
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`application platform 708 generates signaling information that may include a
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`call control block (“CCB”) “that can be used for tracking and billing the
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`call.” Id. at 25:48–54; see Pet. 17. Thus, Christie discloses “generating
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`signaling” as in steps 1.d and 35.d.
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`As to whether the generated signaling is “specifying the determined
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`route” (the route determined by steps 1.c and 35.c), Christie further
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`discloses, “[t]he interface system 110 determines the processing or transport
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`needs of a call, and it provides routing instructions or processing instructions
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`to the communic