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 IPR2019-00052
`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
`
`
`
`
`
`
`
`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`
`
`
`
`I. INTRODUCTION
`
`Metaswitch Networks Ltd. and Metaswitch Networks Corporation
`
`(collectively, “Petitioner”) requests inter partes review of claims 1–32
`
`and 35–41 (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. 72. 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
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`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`Metaswitch Networks Ltd. et al., Case No. 2:18-cv-000581 (E.D. TX).
`
`Pet. 72. 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
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`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
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`

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`IPR2019-00052
`Patent 6,775,269 B1
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`
`
`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
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`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
`
`

`

`IPR2019-00052
`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
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`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`Id. at 5:65–6:4. Figure 2B shows exemplary database 40 comprising a
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`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
`termination in a second network that uses a second signaling
`protocol comprising:
`
`6
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`

`IPR2019-00052
`Patent 6,775,269 B1
`
`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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`

`

`IPR2019-00052
`Patent 6,775,269 B1
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`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)
`
`Howell2
`
`Howell and Jang3
`Howell and Jones4
`Howell and Lakshmi5
`Christie6
`Christie and Tovander7
`Christie and Lakshmi
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claim(s) challenged
`
`1, 2, 5, 7, 9–11, 14–20,
`23–27, 29–32, 35, 36,
`39, 41
`3, 4, 8, 13, 37, 38
`6, 21, 22, 40
`12, 28
`19, 20, 23–27, 29–32
`21, 22
`28
`
`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:
`
`
`
`2 U.S. Patent No. 6,888,833 B1 (“Howell,” Ex. 1016).
`3 U.S. Patent No. 5,274,698 (“Jang,” Ex. 1017).
`4 U.S. Patent No. 5,033,076 (“Jones,” Ex. 1018).
`5 Ramanth A. Lakshmi-Ratan, THE LUCENT TECHNOLOGIES SOFTSWITCH—
`REALIZING THE PROMISE OF CONVERGENCE, 1999 (“Lakshmi,” Ex. 1008).
`6 U.S. Patent No. 6,002,689 (“Christie,” Ex. 1004).
`7 U.S. Patent No. 6,519,332 B1 (“Tovander,” Ex. 1007).
`
`8
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`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`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
`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).8 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. 4 (“[A]ll terms should be given their plain
`
`meaning, per BRI or Phillips.”). Without specifying which standard of
`
`
`
`8 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
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`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`claim construction is being applied, Petitioner offers constructions for a few
`
`terms that we discuss below. Pet. 4–5.
`
`Patent Owner argues the Phillips standard should be applied because
`
`the ’269 patent will expire “in March 2020.” Prelim. Resp. 13–14.9 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. Id. at 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 the 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
`
`
`
`9 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. 15; see Exs. 2002–2008.
`
`10
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`

`

`IPR2019-00052
`Patent 6,775,269 B1
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`of the petition,” was not timely under our rules effective at that time (id. at
`
`10:14–24).
`
`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.10 Id. at 12:14–14:19. Furthermore, we noted that the
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`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
`
`
`
`10 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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`

`

`IPR2019-00052
`Patent 6,775,269 B1
`
`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
`
`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. 4 (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. 16.
`
`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
`
`12
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`

`IPR2019-00052
`Patent 6,775,269 B1
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`the term address as including a telephone number. Ex. 1003 ¶ 24. Patent
`
`Owner does not identify any passages in the prosecution history of record
`
`that refutes the 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. 4. 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. 16.
`
`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).
`
`13
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`IPR2019-00052
`Patent 6,775,269 B1
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`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
`
`(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. 15–16 (citing Ex. 2003, 3–9). Petitioner
`
`does not expressly construe these phrases in its Petition but identifies related
`
`disclosures in the references. See, e.g., Pet. 12–16, 28–30, 56, 58. 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. 16.
`
`14
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`IPR2019-00052
`Patent 6,775,269 B1
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`We discern no need to expressly construe these phrases for purposes
`
`of this decision.
`
`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.11 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.
`
`
`
`11 Neither party presents arguments or evidence of such secondary
`considerations in its respective papers. Therefore, at this preliminary stage,
`secondary considerations do not constitute part of our analysis.
`
`15
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`IPR2019-00052
`Patent 6,775,269 B1
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`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]
`
`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 ¶¶ 13–19).
`
`Patent Owner notes Petitioner’s argument but “does not take a position on
`
`the appropriate level of skill in this Preliminary Response.” Prelim.
`
`Resp. 11 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
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`Petitioner’s definition of the level of ordinary skill in the art and determine
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`that a person of ordinary skill in the art at the time of the invention of the
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`’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 Howell (Ground 3A)
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`Petitioner argues claims 1, 2, 5, 7, 9–11, 14–20, 23–27, 29–32, 35, 36,
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`39, and 41 are unpatentable under 35 U.S.C. § 103(a) as obvious over
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`Howell. Pet. 5–35.
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`1. Overview of Howell (Ex. 1016)
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`Howell discloses a telephony system that converts between protocols
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`to provide calls between devices on varying networks. See, e.g., Ex. 1016,
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`7:13–9:59. Howell’s Figure 1 is reproduced below.
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`Figure 1 depicts exemplary signaling system 102 of Howell.
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`
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`The signaling system 102 comprises a signal processing system
`104 that has a signaling point 106 and a signaling processor 108
`linked by a link [1]10. The signaling system 102 also has a
`controllable ATM matrix 112 that is linked to the call processor
`through a link 114. Access links 116 and 118 link the signaling
`point 106 to communication devices (not shown). An ATM
`connection 120 carries signaling, and in other embodiments user
`communications, to and from the ATM matrix 112.
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`Ex. 1016, 7:14–23. Call signaling is converted to any required form to allow
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`calls across different links 116 and 118. Id. at 8:10–18. Howell’s Figure 3
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`is reproduced below.
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`Figure 3 depicts exemplary signaling system 102B comprising call
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`processor 204 that uses data tables to process a call. Id. at 10:21–24.
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`
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`The call processor 204 generates and transmits control messages
`that identify the communication device, processing option,
`service, or resource that is to receive call signaling or that is be
`used for call connections or further call processing. The call
`processor 204 also selects virtual connections and circuit-based
`connections for routing of call signaling and connections for user
`communications and generates and transports control messages
`that identify the selected connections.
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`Id. at 10:28–36. First communication device 308 and second
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`communication device 310 are connected to the system through
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`connections 312 and 314, respectively. Id. at 11:36–39.
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`Howell further discloses using tables to process a call. See, e.g., id.
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`at 10:21–24. Figure 9 is reproduced below.
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`Figure 9 depicts exemplary data structures comprising a series of tables
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`pointing to one another. Id. at 25:40–48. In particular, called number
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`table 918 may point to routing table 92012 that contains information used for
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`routing a call. Id. at 27:24–36.
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`2. Independent Claims 1 and 35
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`Petitioner argues Howell discloses all elements of independent
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`apparatus claims 1 and 35. Pet. 7–15. Patent Owner disputes Petitioner’s
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`allegations as discussed below.
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`a. “Determining a Route for Processing the Service Request”
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`Petitioner argues Howell discloses this element (1.c and 35.c) because
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`its call processor receives a translated message from a signaling agent and
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`processes the call using data tables including selecting a connection (a route)
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`
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`12 We note the typographic error at Ex. 1016, 27:27 using reference number
`910 rather than 920 to refer to the routing table.
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`for the call. Pet. 10–11 (citing Ex. 1016, 10:21–36, 13:48–54, 15:47–53,
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`21:46–65, 23:58–24:9, 25:59–26:4; Ex. 1003 ¶ 138).
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`Patent Owner argues, “Petitioner does not explain how Howell’s ‘data
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`tables’ constitute a route that allows for the termination of a call. Petitioner
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`also does not identify any disclosure indicating that ‘connections for user
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`communications . . .’ constitute a route over the second network that allows
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`for the completion of a call.” Prelim. Resp. 18.
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`We are not persuaded by Patent Owner’s argument. We are
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`persuaded by the Petition that Howell discloses using its data tables to
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`determine a route. Howell discloses that call processor 204 selects a
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`connection over which a call will be transmitted from a first network to a
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`second network. See Ex. 1016, 13:48–54; Pet. 10–11. The call processor
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`uses data tables to process the calls. See Ex. 1016, 10:22–24; Pet. 10–11.
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`Based on the processed call signaling, call processor 204 determines
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`destinations for a call. See Ex. 1016, 10:24–28; Pet. 10–11. Howell
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`discloses details of the structure and use of various tables, including routing
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`table 920 for determining a route. See Ex. 1016, 25:28–28:32; Pet. 10–11.
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`On this record and for purposes of this decision, we are persuaded Howell
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`discloses the function of determining a route as recited in claims 1 and 35.
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`b. “The Determined Route”
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`Petitioner argues Howell discloses step of “generating signaling
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`specifying the determined route” (steps 1.d and 35.d) because it generates
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`and transmits control messages identifying “the communication device,
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`processing option, service, or resource that is to be used.” Pet. 11 (quoting
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`Ex. 1016, 7:52–64; citing Ex. 1003 ¶ 139). Petitioner further argues Howell
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`discloses this step as generating control messages “that identify the selected
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`connections.” Id. (citing Ex. 1016, 8:48–60, 9:36–45, 10:20–36 13:58–65,
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`21:46–56, 21:57–65, 22:35–45, 23:13–21, 23:23–50, 23:58–24:9, Figs. 1–3).
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`Furthermore, Petitioner argues Howell teaches the step of, “in
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`response to accessing . . . additional tables, determining the route” (steps 1.h
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`and 35.h) in its disclosure of navigating through the tables, including routing
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`table 920, to determine a terminating connection for a call. Pet. 14–15
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`(citing Ex. 1016, 24:10–22, 25:33–34, 40–49, 25:59–26:4, 27:32–36; Ex.
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`1003 ¶¶ 147–148). Petitioner further explains that Howell’s determination
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`of the route is in response to accessing the additional tables by accessing the
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`pointers in Howell’s tables linking one table to another (via the next function
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`and next label pointer fields in the tables). Pet. 15. In particular, Petitioner
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`argues the route (terminating connection) may be determined in Howell
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`“after accessing ‘routing table 920’ directly from ‘ANI table 914,’ for
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`example, or by accessing ‘called number screening table 916’ from ‘ANI
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`table 914,’ followed by ‘called number table 918,’ ‘routing table 812,’ etc.,
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`or another sequence of tables as dictated by the pointers.”13 Id. (citing Ex.
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`1003 ¶¶ 147–148).
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`Patent Owner argues claim elements 1.d, 35.d, 1.h, and 35.h refer to
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`the determined route—i.e., the route determined by the prior element 1.c and
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`35.c that provides the antecedent basis for the determined route. Prelim.
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`
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`13 Petitioner occasionally, erroneously refers to “routing table 812” in
`Howell. See, e.g., Pet 15. There is no “routing table 812” in Howell.
`Reference number 812 in Howell refers to “MTP 2” in Figure 8—part of
`signaling processor 802. Christie refers to its routing table by reference
`number 812 but Howell refers to its routing table by reference number 920.
`We deem the apparent typographic error to be harmless and refer to
`Howell’s routing table by its correct reference number 920.
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`Resp. 20–22. Patent Owner further argues that, because Petitioner failed to
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`identify determining a route in the prior element (1.c and 35.c), the Petition
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`also fails to identify disclosure of generating signals specifying the route
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`previously determined (steps